DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/18/25 has been entered.
Response to Amendment
The Amendment filed 11/18/25 has been entered. Claims 1-7, 9-11, and 13-16 remain pending in the application. Claim(s) 1-4 have been withdrawn. Claim(s) 8, 12, and 17-19 have been canceled.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 16 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). See MPEP § 2173.05(q). Here, the claim reads “using the metal particle in a photovoltaic cell and/or a semiconductor conductive adhesive,” which is indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 103
Claims 5-7, 9-11, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Giang et al. (CN 105436517 B), as machine translated, previously cited.
Regarding claims 5-7, 9-11, and 13-15, Giang is directed to a method for producing metal powder. The prior art method includes first adding a prepared dispersant solution to a reactor (see para [0012] of the translation of Giang). This dispersant solution includes one or more of polyvinyl pyrrolidone (PVP) or Tween 40 (an ester), and a glycol such as polyethylene glycol or glycerol (see para [0015] of the translation), and thus Giang suggests use of a “polyol mixed solution” as recited in claim 5 as amended. A substance containing a metal compound is added, resulting in formation of nano-metal particles, equivalent to the claimed “nano-metal seed crystals”. An oxidant solution and a reductant solution are added simultaneously, stabilizing the newly generated nano-metal particles. The oxidant solution contains a metal nitrate (i.e. a “metal salt”); see para [0008] of the translation. After reaction is completed, the solution is discharged into a flocculation kettle and flocculant is added; see para [0013] of the translation. The mixture is allowed to settle and obtain metal spherical and quasi-spherical powders, i.e. “performing precipitation and separation to obtain the metal particle”. The metal salt can be silver nitrate, the seed crystals can be nano-metal silver particles, and the final powders are silver powders (see para [0037], [0039] and [0040] of the translation) and therefore the metal salt and the metal particle comprise the same metal as the seed crystals, in accord with claim 5 as amended. Giang teaches that the dispersant in the prior art may include polyvinyl pyrrolidone (PVP); see para [0015] of the translation.
Giang teaches that “in a preferred embodiment of the present invention, the nanocrystal seeds in step (3) of preparing the dispersant solution can be the nano-metal particles generated by the reduction of one or more metal salts or metal oxides in the dispersant solution added in advance during the initial stage of the reaction as described in claim 1 in step (5)” (paragraph [0016]; nanocrystal seeds used can be those obtained in step (5) [of a prior batch]). Giang teaches that in step (5) “after the reaction is complete, various spherical and near-spherical metal powders are obtained by flocculation and sedimentation separation” (paragraph [0019]; particles generated in step (5) are spherical and near-spherical). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention, reading Giang, would understand that Giang uses spherical and near-spherical nanocrystal seeds.
With respect to claim 6, para [0021] of the translation indicates silver, copper and nickel are preferred in the prior art. With respect to claim 7, claim 6 of the translation indicates the particle size of the seeds is 1-800 nm, which includes the entirety of the presently claimed range. With respect to claim 9, the polyol in the dispersion may be polyethylene glycol or glycerol. With respect to claim 11, the reducing solution in the prior art may comprise hydrazine or an amine; see para [0014] of the translation. With respect to claims 13 and 14, the dispersant in the prior art may include polyvinyl pyrrolidone (PVP); see para [0015] of the translation. With respect to claim 15, the flocculent in the prior art includes oleic acid; see para [0011] of the translation.
Giang does not specify the numerical limitations recited in claim 5 as amended or in claim 10. However:
Giang teaches that “one or more dispersants, such as polyvinylpyrrolidone (PVP), polyethylene glycol 400, Tween 40, or glycerol, are added to deionized water at a volume of 0.5 to 2 times that of the aforementioned reducing agent solution” (paragraph [0015]). Giang teaches that “the total mass of the dispersants in the deionized water is 0.1 to 2 times the mass of the metal nitrates or sulfates in the aforementioned oxidizing agent solution” (paragraph [0015]). The broad teaching of Giang is that the total of the dispersants matters more than the relative ratios. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to start with a 50/50 mixture of dispersants with a reasonable expectation of success.
Additionally, with regard to the numerical limitations, the mere recitation of such limitations in an otherwise known process will not generally result in patentability of a claim directed to that process, absent evidence of criticality of the numerical limitation(s). In the present case, the numerical limitations do not appear to be critical to the invention. The ranges of the relative amounts of polyol and dispersant or surfactant in claim 5 cannot be said to be critical to the invention, at least for the reason that in the application as filed, only the broad range of polyol in the polyol mixed solution ranges from 15% by volume to 95% by volume is claimed, and even that recitation is only in a dependent claim. Claim 10 (which is also a dependent claim) recites a range in which the low end and high end of the range differ by 2 orders of magnitude, and nothing in the record would indicate any particular relevance of a content of seed crystals being in that broad of a range.
Thus the disclosure of CN 105436517 B is held to create a prima facie case of obviousness of a method as presently claimed.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over CN 105436517 (and its translation), as above, in view of any of Zeira (US 2003/0102024), Parce et al. (US 2012/0031486) or Adachi et al. (US 2011/0180139).
Giang discussed supra, does not disclose using particles obtained via the prior art method in a specific device as recited in the instant claim. Each of Zeira, Parce and Adachi indicates it was well-known in the art, at the time of filing of the present invention, to employ metal particles such as silver particles in a photovoltaic cell; see, for instance, Zeira para [0020], Parce para [0075] or Adachi para [0063]. Based on the disclosures of Zeira, Parce et al. or Adachi et al., once one has produced silver particles as done in Giang, it would have been an obvious expedient to use those particles in a manner as presently claimed.
Response to Arguments
Applicant's arguments filed 11/18 have been fully considered but they are not persuasive. Applicant argues that CN 105436517 does not teach or suggest "spherical nano-metal seed crystals" and "15% to 50% by volume of a first dispersant" of claim 5 (remarks, page 7). This is not found convincing because Giang teaches that “in a preferred embodiment of the present invention, the nanocrystal seeds in step (3) of preparing the dispersant solution can be the nano-metal particles generated by the reduction of one or more metal salts or metal oxides in the dispersant solution added in advance during the initial stage of the reaction as described in claim 1 in step (5)” (paragraph [0016]; nanocrystal seeds used can be those obtained in step (5) [of a prior batch]). Giang teaches that in step (5) “after the reaction is complete, various spherical and near-spherical metal powders are obtained by flocculation and sedimentation separation” (paragraph [0019]; particles generated in step (5) are spherical and near-spherical). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention, reading Giang, would understand that Giang uses spherical and near-spherical nanocrystal seeds. Additionally, with regard to the numerical limitations, the mere recitation of such limitations in an otherwise known process will not generally result in patentability of a claim directed to that process, absent evidence of criticality of the numerical limitation(s). In the present case, the numerical limitations do not appear to be critical to the invention.
Applicant argues that the above recited elements lead to superior and unexpected results (remarks, page 7). Applicant argues that the above recited elements lead to superior and unexpected results (remarks, page 10). This is not found convincing because Applicant's arguments are not commensurate in scope with the claimed invention. The alleged unexpected results presented at pages 7-9 of the response are not reflected in the claimed invention. Furthermore, applicant points to "Comparative Example 3" as relating to Example 1 from CN '517 ( presumably as outlined at page 21 of applicant's specification). However, this example does not appear to reflect the closest prior art teachings of CN' 517, as this particular example does not utilize a 1st dispersant, nor does it utilize PVP as either dispersant, as taught by CN' 517. Because of these significant differences in the example compositions, a comparison between applicant's invention and this single example from CN'517 does not represent a reasonable correlation to the teachings of the reference. Therefore such differences of properties between the product of Example 1 and applicant's example(s) would not be unexpected based on this selective difference in components utilized. Finally, regarding the subsequent use of the silver particle powders to produce silver sheets, etc. as outlined at page 9 of the response, this is not commensurate in scope with the claimed invention. Furthermore, applicant has not explained from where "Fig A" and "Fig B" are derived in their original application, as no correlation or explanation is provided.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA JANSSEN whose telephone number is (571)272-5434. The examiner can normally be reached on Mon-Thurs 10-7 and alternating Fri 10-6.
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/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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