DETAILED ACTION
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 15 July 2026 has been entered.
Status of Claims
Responsive to the amendment filed 15 July 2026, claim 1 is amended. Claims 11-12 are cancelled. Claims 1-10 and 13-20 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 15 July 2026 new grounds of rejection are presented.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 8-10, 13-14, and 16-20 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 20120048426 A1 (hereinafter “Ishizaki”).
Regarding claim 1, Ishizaki teaches a paste comprising coated metal nanoparticles (See title or SUMMARY OF THE INVENTION). Ishizaki teaches that the particles include an organic coating that is easily pyrolyzed ([0009]). Ishizaki teaches that to achieve this effect, a metal salt is reduced in the presence of a small amount of an aliphatic amine and a fatty acid (see [0010]). Ishizaki teaches that the resultant metal nanoparticles have a low amount of an amine in a coating (see [0010]).
Ishizaki teaches specific examples of metal nanoparticles such as Example 1 (see TABLE 1), and examples of pastes (see [0148]-[0151] and Table 7). Ishizaki teaches that copper carbonate, oleic acid and oleylamine are added to the solvent ethylene glycol (Example 1). The copper nanoparticles are recovered by drying and centrifuging.
Ishizaki measures the properties of the particles in a XPS device (see [0117]-[0119]). Ishizaki teaches that the particles are measured by chloroform extraction and gas chromatography in order to measure the amine present ([0119]-[0136]). Ishizaki teaches that a ratio of the amine to the acid in the coating film is 0.002/1 by mole (Table 6).
Ishizaki teaches that ricinoleic acid is added to form a paste (See [0148]-[0151] and Table 7).
Thus the paste of Ishizaki has a first copper particle (20.8 nm average size), coated in an amine compound (oleylamine), and a carboxylic acid (Table 1 and Table 7). The limitation wherein the total content of the amine is less than 1% of total paste is considered met because Ishizaki teaches that a ratio of amine to the acid in the coating is 0.002/1 molar (see Table 6). Thus the amount of amine cannot be close to as high as 1% by weight due to the similar chain lengths of the acid (C18) and amine (C18) which coat the copper particles according to Table 6.
Further, the same article claimed of a solder paste, made in the same way by coating metal particles with a combination of carboxylic acid and amines, for the same purpose of bonding electrodes, using the same ingredient materials as applicant (copper particles, organic carboxylic acid and amines) and with the same goal of reducing amines (see [0010]) would have had the same properties inherently. Applicant is directed to MPEP 2112.
Similarly Ishizaki teaches Example 6, using the same procedures but with octylamine and octanoic acid (See Example 6 and Table 1). Ishizaki teaches 71.5 nm copper particles coated are made into a paste (Table 7). Although Ishizaki does not measure a value of the ratio of amine to the acid for the coating obtained in Example 6, it is believed that the results would have been similarly low due to every single example in Table 6 having a very low ratio (Table 6). Because every single example has similarly low amounts of amine, these low amounts are inherent in the invention of Ishizaki, as the same procedure to make Example 6, merely substituting the C18 acid and amine with C8 acid and amine, would have led to similar properties in the coatings as measured in Examples 1, 8, 9, 11, 16, 19, and 20 (Table 6). For this reason the Example 6 paste of Ishizaki (see Table 7) would have had the claimed property inherently.
Ishizaki does not teach what is a “mass coverage” of the copper particles. However this is considered to be an inherent property of the copper material. The same material (copper particles) would have had the same properties inherently. MPEP 2112.01.
Further Ishizaki teaches that a mass loss of the organic material within the coating film when the material is pyrolyzed at high temperatures in inert gas is greater than 90% (see [0145]-[0148]). Ishizaki demonstrates examples of TG/DTA analysis in which between 1 and 10% of the total mass of the particles is lost (Figs 21-23). This is believed to be the equivalent of less than 10% of “mass coverage.” Ishizaki teaches Examples such as Example 1 and 6 which have values that are believed to fall in the claimed range.
Regarding wherein the paste is separated by centrifugation and analyzed by gas chromatography, the claim limitation is a statement of intended use for the paste composition. The method of centrifugal separation does not imply or require any structure to be present in the paste further than what is already described elsewhere.
In addition to this, Ishizaki teaches centrifugation (Example 1) and then gas chromatography for analysis ([0120]-[0138]), which meets the limitation of the claim by performing the same actions.
Regarding claim 2, Ishizaki teaches Example 6 has size of 71.5 nm on average (Table 1), falling in the range as claimed and anticipating the range. Although the average is not the same as the median, Ishizaki teaches nanoparticles, and not broadly distributed particles. Therefore it is believed that this average meets the limitation in lieu of the median, absent evidence to the contrary. Although Ishizaki does not teach a crystallite size of the copper nanoparticles, Ishizaki teaches the same particles are used with the same coating claimed, and placed in the same paste for joining electronics as claimed. The claimed properties not disclosed by the prior art would have been inherent in the paste of Example 6 of Ishizaki.
Regarding claim 3, Ishizaki does not teach an oxidation degree of the paste. Although Ishizaki does not teach oxidation degree of the copper nanoparticles, Ishizaki teaches the same particles are used with the same coating claimed, and placed in the same paste for joining electronics as claimed. The claimed properties not disclosed by the prior art would have been inherent in the paste of Example 6 of Ishizaki.
Regarding claims 8-10 Ishizaki teaches that the paste is used to replace lead-containing solder pastes when joining semiconductor devices (see [0004]-[0009]). Thus Ishizaki clearly envisions electronics joined by using the paste.
Regarding claim 13, Ishizaki teaches that the paste is made using 10 parts of copper particle to 12 parts of ricinoleic acid or alpha-terpineol (see [0149]). Thus the content of the particles is 100/(100+12) = 89.3%.
Regarding claim 14, the claim is a product-by-process claim. Applicant is directed to MPEP 2113. In this case Ishizaki teaches a paste in which the copper is covered in a acid and amine, wherein the ratio of amine to acid is 0.002/1 molar (Table 6). The structure required by the claim is met by Ishizaki.
Regarding claim 16, it is noted that the claim does not positively require the carboxylic acid amine salt (b) to be present in the paste, but limits the alternatives. The amine compound of Ishizaki reads on what is now claimed.
Regarding claim 17, Ishizaki teaches Example 6 has size of 71.5 nm on average (Table 1), falling in the range as claimed and anticipating the range. Although the average is not the same as the median, Ishizaki teaches nanoparticles, and not broadly distributed particles. Therefore it is believed that this average meets the limitation in lieu of the median, absent evidence to the contrary. Although Ishizaki does not teach a crystallite size of the copper nanoparticles, Ishizaki teaches the same particles are used with the same coating claimed, and placed in the same paste for joining electronics as claimed. The claimed properties not disclosed by the prior art would have been inherent in the paste of Example 6 of Ishizaki.
Regarding claim 18, Ishizaki does not teach an oxidation degree of the paste. Although Ishizaki does not teach oxidation degree of the copper nanoparticles, Ishizaki teaches the same particles are used with the same coating claimed, and placed in the same paste for joining electronics as claimed. The claimed properties not disclosed by the prior art would have been inherent in the paste of Example 6 of Ishizaki.
Regarding claim 19, Ishizaki does not etch a total amount of the amine compound and the alt in the paste. Ishizaki teaches that the material is pyrolyzed (See SUMMARY and [0145]-[0148]). Ishizaki teaches that 90% or more of the organic material is removed from the particles (SUMMARY OF THE INVENTION). Ishizaki teaches further that a more complete pyrolysis yields approximately 0.3% additional mass loss (see Fig 23 and [0145]-[0147]). The properties not disclosed would have been inherently present in the prior art.
Regarding claim 20, the claim is a product-by-process claim. Applicant is directed to MPEP 2113. In this case Ishizaki teaches a paste in which the copper is covered in an acid and amine, wherein the ratio of amine to acid is 0.002/1 molar (Table 6). The structure required by the claim is met by Ishizaki.
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.
Claim(s) 4 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishizaki as applied to claim 1 above, and further in view of US 20200075528 A1 (hereinafter “Kawana”).
Regarding claims 4 and 15, Ishizaki does not teach to add any second copper particles having a size as claimed to the solder paste.
Kawana teaches a solder composition and solder paste (See title, [0015]-[0016]). Kawana teaches that the paste has submicron copper particles ([0016] and claim 1). Kawana teaches that the paste further includes flake shaped micro particles of copper of 2-50 microns (see [0018] and claim 4). Kawana teaches that the addition of these copper particles reduces a volume contraction during a sintering (see [0018]). The particle size of the second copper particles overlaps the claimed range, establishing a prima facie case of obviousness for the range.
It would have been an obvious matter to the skilled artisan at time of filing to have altered the invention of Ishizaki as by adding a second copper particle as taught by Kawana (see [0018] and claim 4), because Kawana teaches that the addition of these copper particles reduces a volume contraction during a sintering (see [0018]).
The prior art does not teach what is a crystallite size of the copper particles. The claimed properties not disclosed by the prior art would have been inherent in the particles, being the same composition claimed, the same size claimed, used for the same purpose as claimed of joining electronics.
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishizaki as applied to claim 1 above, and further in view of US 20020046627 A1 (hereinafter “Amita”).
Regarding claim 5, Ishizaki does not teach to add any phosphoric acid ester to the solder paste.
Amita teaches a solder composition and solder paste (See title, [0019]). Amita teaches that the solder paste has excellent storage stability (see [0003]). Amita teaches that the paste includes flux with an organic acid ester and an ester decomposer catalyst (see [0075]- [0077] or claims 4-7). Amita teaches that the flux includes a phosphoric acid ester (See claim 10 or [0025]-[0030]).
It would have been an obvious matter to one of ordinary skill in the art at time of filing to have altered the invention of Ishizaki as by adding a phosphoric acid ester as taught by Amita (See claim 10 or [0025]-[0030]), because Amita teaches that this functions as a reducing compound ([0027] or claims 7-10) in a solder paste with good stability (see [0003]).
Regarding claims 6-7, Amita does not teach an acid value or an amine value of the phosphoric acid ester. The same material as claimed, used in the same field of solder pastes as claimed would have inherently had the same properties as claimed.
Response to Arguments
Applicant's arguments filed 15 July 2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art Ishizaki does not teach wherein the mass coverage of the first copper particles is 0.05% to 10%. Applicant argues that the thermogravimetric analysis of the prior art is not the same as a measurement used in the instant application. Specifically applicant argues that the TG-DTA may include losses from organics, solvents, moisture etc.
The examiner thanks applicant for the well expressed technical arguments. However the examiner disagrees. Applicant discloses that the mass coverage is the difference when the particles are heated as by UV lamp. This is considered to be analogous with the TG analysis which measures losses from heating. Further, as was stated, the properties not disclosed by the prior art are considered inherent. For these reasons the claims are rejected over Ishizaki.
Applicant further argues that the Centrifugal separation and gas chromatography is not taught by Ishizaki. Applicant argues that the limitation is not an intended use. The examiner disagrees. First, Ishizaki envisions the steps of centrifugation and gas chromatography as cited. Second, this is absolutely an intended use. What is claimed is a paste, rather than a liquid separated from a solid. If applicant wished to claim liquid separated from solid, this would not be a “paste” and further applicant would be claiming both of an intermediate and a final product. Such a claim structure would raise serious issues under 35 USC 101 and 35 USC 112. Luckily, the claim limitation is clearly an intended use as for analysis of the paste. Applicant further argues that Ishizaki’s gas chromatography is directed to the film formed rather than to the paste. The examiner again must disagree, as the organic and liquid component is the only portion which would be theoretically possible to analyze with a GC approach. That is, the solid copper particles when centrifuged cannot be passed through a GC column. Indeed, applicant discloses the carboxylics and amines are analyzed, which is exactly the same thing that Ishizaki states are analyzed by GC. For this reason the applicant’s arguments are not persuasive.
When all of the evidence is considered as a whole, evidence of anticipation outweighs evidence of patentability.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
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