DETAILED ACTION/EXAMINER’S COMMENT
This Office action responds to the amendments filed on 05/04/2026.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for a rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Amendment Status
Applicant’s response filed on 05/04/2026 in reply to the non-final rejection mailed on 02/09/2026, has been entered. The present Office action is made with all previously suggested amendments being fully considered. Claim(s) 1-6 & 10-20 is/are canceled. Claims 21-29 are added. Accordingly, pending in this Office action are claim(s) 7-9 & 21-29.
Claim Rejections - 35 USC § 102 & 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Birlem (DE 102017104921).
Regarding Claim 7, Birlem (see, e.g., fig. 1) shows a method for connecting two components by way of a plurality of nanowires, comprising:
A) providing a plurality of nanowires 4 (see, e.g., para.0071) with a coating (see, e.g., para.0053) on at least one of the components 2 (see, e.g., para.0071),
B) bringing the components 2 together, so that the components are connected to one another by way of the nanowires (see, e.g., para.0046, para.0071)
wherein the coating is removed in places or in full by the bringing together of the two components or by a subsequent method step (the step of heating partially removes the coating, see, e.g., para.0058-0059).
Claims 8, 9, 21, 24, 25, 28, & 29 are rejected under 35 U.S.C. 103 as being unpatentable over Birlem (DE 102017104921) in view of Gui-Shi Liu, ACS Applied Material & Interfaces 2018 Publication hereinafter referred to as “Liu”.
Regarding Claim 8, Birlem shows the method according to Claim 7
wherein the coating is obtained in step A) by a method comprising:
a) treating the nanowires with a reducing substance (see, e.g., para.0063)
Birlem, however, fails to show
b) immersing the nanowires in a protective substance,
c) drying the nanowires, so that the coating is obtained from the protective substance.
Liu, in a similar method to, in view of Birlem, teaches
b) immersing the nanowires in a protective substance (MBI, see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 9-13),
c) drying the nanowires, so that the coating is obtained from the protective substance (drying with a nitrogen gun, see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 13-14).
Liu teaches that said limitations would provide better resistance to corrosion and stability in high temperature and humidity environments.
It would have been obvious at the time of filing the invention to one of ordinary skill in the art to use said limitations of Liu in the method of Haba, in view of Birlem, to provide better resistance to corrosion and stability in high temperature and humidity environments.
Regarding Claim 9, Birlem (see, e.g., para.0058-0059), in view of Liu, shows the according to Claim 8, also comprising:
C) at least partially removing the coating of the nanowires by heating (the subsequent method step as mentioned in Claim 7, see, e.g., para.0058-0059).
Regarding Claim 21, Birlem, in view of Liu (see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 9-13), shows the method according to Claim 8,
wherein the protective substance comprises an organic substance (MBI, see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 9-13).
Regarding Claim 24, Birlem, in view of Liu (see, e.g., pg. 6, Results & Discussion, col. 1, ll. 1-8), shows the method according to Claim 8,
wherein the protective substance is chosen in consideration of a material of the nanowires such that in step b) the protective substance is at least partially deposited on the nanowires by physisorption (see, e.g., pg. 6, Results & Discussion, col. 1, ll. 1-8).
Regarding Claim 25, Birlem, in view of Liu (see, e.g., pg. 6, Results & Discussion, col. 1, ll. 1-8), shows the method according to Claim 9,
wherein the protective substance is chosen in consideration of a material of the nanowires such that in step b) the protective substance is at least partially deposited on the nanowires by physisorption (see, e.g., pg. 6, Results & Discussion, col. 1, ll. 1-8).
Regarding Claim 28, Birlem, in view of Liu (see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 13-14), shows the method according to Claim 8,
wherein the component is rinsed with a rinsing fluid between steps a) and b) and/or between steps b) and c) (rinsed by ethanol during nitrogen gun drying, see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 13-14).
Regarding Claim 29, Birlem, in view of Liu (see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 13-14), shows the method according to Claim 9,
wherein the component is rinsed with a rinsing fluid between steps a) and b) and/or between steps b) and c) (rinsed by ethanol during nitrogen gun drying, see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 13-14).
Claims 22 & 23 are rejected under 35 U.S.C. 103 as being unpatentable over Birlem (DE 102017104921) in view of Liu and further in view of Chaji (US 20190148321).
Regarding Claim 22, Birlem, in view of Liu, shows the method according to Claim 8,
Birlem, in view of Liu, however, fails to show
wherein the protective substance comprises a metal.
Chaji (see, e.g., fig. 14, para.0133), in a similar method to Birlem, in view of Liu, teaches that metal particles combined with self-assembled monolayers of thiol groups would enhance interface protection and improve conduction.
It would have been obvious at the time of filing the invention to one of ordinary skill in the art to use the metal particles of Chaji in the method of Birlem, in view of Liu, to enhance interface protection and improve conduction.
Regarding Claim 23, Birlem, in view of Liu, shows the method according to Claim 9,
Birlem, in view of Liu, however, fails to show
wherein the protective substance comprises a metal.
Chaji (see, e.g., fig. 14, para.0133), in a similar method to Birlem, in view of Liu, teaches that metal particles combined with self-assembled monolayers of thiol groups would enhance interface protection and improve conduction.
It would have been obvious at the time of filing the invention to one of ordinary skill in the art to use the metal particles of Chaji in the method of Birlem, in view of Liu, to enhance interface protection and improve conduction.
Claims 26 & 27 are rejected under 35 U.S.C. 103 as being unpatentable over Birlem (DE 102017104921) in view of Liu and further in view of Hyunhyub Ko, Nano Letters 2009 Publication hereinafter referred to as “Ko”.
Regarding Claim 26, Birlem, in view of Liu, shows the method according to Claim 8,
Birlem, in view of Liu, however, fails to show
wherein the coating on the nanowires formed by steps a) to c) has an average thickness of at most 20 molecular layers.
However, ranges of coating thickness will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation” In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Ko (see, e.g., pg. 2, col. 1, ll. 1-2), in a similar method to Birlem, in view of Liu, shows a coating thickness of 10 nm, approximately 10-20 molecular layers of MBI (2-mercaptobenzimidazole), would be and obvious and suitable range for the nanowires coating’s average thickness. Since the applicant has not established the criticality of the claimed coating thickness range, and similar ranges have been used in the art, it would have been obvious to one of ordinary skill in the art to use the coating thickness range of Ko in the method of Birlem, in view of Liu, as an obvious and suitable range.
Criticality
The specification contains no disclosure of either the critical nature of the claimed temperature and pressure ranges or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding Claim 27, Birlem, in view of Liu, shows the method according to Claim 9,
Birlem, in view of Liu, however, fails to show
wherein the coating on the nanowires formed by steps a) to c) has an average thickness of at most 20 molecular layers.
However, ranges of coating thickness will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation” In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Ko (see, e.g., pg. 2, col. 1, ll. 1-2), in a similar method to Birlem, in view of Liu, shows a coating thickness of 10 nm, approximately 10-20 molecular layers of MBI (2-mercaptobenzimidazole), would be and obvious and suitable range for the nanowires coating’s average thickness. Since the applicant has not established the criticality of the claimed coating thickness range, and similar ranges have been used in the art, it would have been obvious to one of ordinary skill in the art to use the coating thickness range of Ko in the method of Birlem, in view of Liu, as an obvious and suitable range. See paragraph 33 above for criticality statement.
Response to Arguments
Applicant’s arguments, see page 4, filed 05/04/2026, with respect to the claim objections and the claim rejections under 35 U.S.C. 112(d) have been fully considered and are persuasive. The claim objections and claim rejections of claims 14 & 19 has been withdrawn.
Applicant's arguments, see have been fully considered but they are not persuasive. The amendments do not overcome the prior art of record (Birlem, Liu, Ko, & Chaji) as shown in paragraphs 3-37 above and for the following reasons:
Regarding the amended limitation of Claim 7, “wherein the coating is removed in places or in full by the bringing together of the two components or by a subsequent method step,” Examiner agrees Birlem (see, e.g., para.0052) teaches a step of where the coating is “partially removed” prior to the components are connected, but this does not entirely remove the coating. The coating is still present for a subsequent method step of heating the coating (see, e.g., para.0058-0059) to form an adhesive bond wherein the remaining portion of the coating can be partially removed.
Regarding the dependent Claims 26 & 27, there is no empirical data provided to support the value of an average thickness of at most 20 molecular layers is critical to the invention and does not test values outside of this range to prove otherwise.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FERNANDO JOSE RAMOS-DIAZ whose telephone number is (571) 270-5855. The examiner can normally be reached Mon-Fri 8am-5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Loke can be reached on 571-272-1657. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FERNANDO JOSE RAMOS-DIAZ/Examiner, Art Unit 2818
/STEVEN H LOKE/Supervisory Patent Examiner, Art Unit 2818
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