DETAILED ACTION
This Office action responds to the application filed on 08/30/2023.
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.
Claim Objections
Applicant is advised that should claims 3 & 4 be found allowable, claims 14 & 19, respectively, will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14 & 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 14 &19 recite the same limitations as claims 3 & 4, which they respectively depend on, and do not provide any additional structural or functional limitations. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 7 & 9 are 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).
Regarding Claim 9, Birlem (see, e.g., para.0058-0059) shows the according to Claim 7, also comprising:
C) at least partially removing the coating of the nanowires by heating (see, e.g., para.0058-0059).
Claim Rejections - 35 USC § 103
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.
Claims 1, 2, 4, 6, 8, 11, & 13 are rejected under 35 U.S.C. 103 as being unpatentable over Haba (US 20200279821) in view of Birlem (DE 102017104921) and further in view of Gui-Shi Liu, ACS Applied Material & Interfaces 2018 Publication hereinafter referred to as “Liu”.
Regarding Claim 1, Haba (see, e.g., fig. 2) shows a method for applying a coating to a plurality of nanowires 100 (see, e.g., para.0031) on a component 108 & CHIP (see, e.g., para.0026, para.0030), the method comprising:
Haba (see, e.g., para.0033) states the nanowires are cleaned prior to bonding, but is silent with respect to parameters of the cleaning process.
Haba, fails to show
a) treating the nanowires with a reducing substance,
Birlem (see, e.g., para.0063), in a similar method to Haba, teaches that treating the nanowires with a reducing substance, an acid, would prevent the degradation of the nanowires’ mechanical and thermal properties.
It would have been obvious at the time of filing the invention to one of ordinary skill in the art to use the reducing substance of Birlem in the method of Haba to prevent the degradation of the nanowires’ mechanical and thermal properties.
Haba, in view of 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 2, Haba, in view of Birlem and further in view of Liu (see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 9-13), shows the method according to Claim 1,
wherein the protective substance comprises an organic substance (MBI, see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 9-13).
Regarding Claim 4, Haba, in view of Birlem and further in view of Liu (see, e.g., pg. 6, Results & Discussion, col. 1, ll. 1-8), shows the method according to Claim 1,
wherein the protective substance is chosen in consideration of the 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 6, Haba, in view of Birlem and further in view of Liu (see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 13-14), shows the method according to Claim 1,
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 8, Haba (see, e.g., fig. 1), in view of Birlem and further in view of Liu (see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 9-13), shows
a method for connecting two components CHIPS (Upper & Lower, see, e.g., para.0026) by way of a plurality of nanowires (see, e.g., para.0030), comprising:
A) providing a plurality of nanowires 100 (see, e.g., para.0030) with a coating (MBI, see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 9-13) on at least one of the components 106 (see, e.g., para.0030, para.0031),
B) bringing the components together, so that the components are connected to one another by way of the nanowires (see, e.g., fig. 1, para.0033),
wherein the coating is obtained in step A) by a method according to Claim 1.
Regarding Claim 11, Haba, in view of Birlem and further in view of Liu (see, e.g., pg. 6, Results & Discussion, col. 1, ll. 1-8), shows the method according to Claim 2,
wherein the protective substance is chosen in consideration of the 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 13, in view of Birlem and further in view of Liu (see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 13-14) shows the method according to Claim 2,
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 3, 10, 15, 17, & 18 are rejected under 35 U.S.C. 103 as being unpatentable over Haba (US 20200279821) in view of Birlem (DE 102017104921) & Liu, and further in view of Chaji (US 20190148321).
Regarding Claim 3, Haba, in view of Birlem & Liu, shows the method according to Claim 1,
Haba, in view of Birlem & 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 Haba, in view of Birlem & 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 Haba, in view of Birlem & Liu, to enhance interface protection and improve conduction.
Regarding Claim 10, Haba, in view of Birlem & Liu, shows the method according to Claim 2,
Haba, in view of Birlem & 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 Haba, in view of Birlem & 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 Haba, in view of Birlem & Liu, to enhance interface protection and improve conduction.
Regarding Claim 15, Haba, in view of Birlem & Liu (see, e.g., pg. 6, Results & Discussion, col. 1, ll. 1-8), and further in view of Chaji, shows the method according to Claim 3,
wherein the protective substance is chosen in consideration of the 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 17, Haba, in view of Birlem & Liu (see, e.g., pg. 2, Experimental Section, paragraph 2, ll. 13-14), and further in view of Chaji, shows the method according to Claim 3,
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 18, Haba, in view of Birlem & Liu, shows the method according to Claim 4,
Haba, in view of Birlem & 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 Haba, in view of Birlem & 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 Haba, in view of Birlem & Liu, to enhance interface protection and improve conduction.
Claims 5, 12, & 20 are rejected under 35 U.S.C. 103 as being unpatentable over Haba (US 20200279821) in view of Birlem (DE 102017104921) & Liu, and further in view of Hyunhyub Ko, Nano Letters 2009 Publication hereinafter referred to as “Ko”.
Regarding Claim 5, Haba, in view of Birlem & Liu, shows the method according Claim 1,
Haba, in view of Birlem & 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 Haba, in view of Birlem & 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 Haba, in view of Birlem & 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 12, Haba, in view of Birlem & Liu, shows the method according Claim 2,
Haba, in view of Birlem & 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.
The same criticality rejection of Claim 5 is applied to Claim 12, see paragraphs 44-47. Thus, Haba, in view of Birlem & Liu, and further in view of Ko, renders the claim obvious.
Regarding Claim 20, Haba, in view of Birlem & Liu, shows the method according Claim 4,
Haba, in view of Birlem & 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.
The same criticality rejection of Claim 5 is applied to Claim 20, see paragraphs 44-47. Thus, Haba, in view of Birlem & Liu, and further in view of Ko, renders the claim obvious.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Haba (US 20200279821) in view of Birlem (DE 102017104921), Liu, Chaji (US 20190148321), and further in view of Ko.
Regarding Claim 16, Haba, in view of Birlem, Liu, & Chaji, shows the method according to Claim 3,
Haba, in view of Birlem, Liu, & Chaji, 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.
The same criticality rejection of Claim 5 is applied to Claim 16, see paragraphs 44-47. Thus, Haba, in view of Birlem, Liu, Chaji, and further in view of Ko, renders the claim obvious.
Conclusion
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, Wael Fahmy can be reached on 571-272-1705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/F.R.D./ Examiner, Art Unit 2814
Examiner, Art Unit 2814
/WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814