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 .
Status of the Claims
Claims 1-14 are under examination wherein claims 1-14 have been preliminarily amended.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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.
Regarding claims 4-11, the term "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention or not a part of the claimed invention. See MPEP § 2173.05(d).
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 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka (JP 10-029087).
In regard to claims 1-2, Tanaka (JP ‘087) discloses a silver based alloy having 19.5 weight percent copper, 19.5 weight percent zinc, 19 weight percent indium and 2 weight percent nickel (Alloy 1, Table 1). The implied content of silver is 40 weight percent and the ranges are within those specified in claim 1 and therefore Alloy 1 would anticipate the claim.
Still regarding claim 1 and in regard to claims 3 and 5, Tanaka (JP ‘087) discloses a silver based alloy having 22 weight percent copper, 17 weight percent zinc and 5 weight percent tin (Alloy BAg-7). The implied content of silver is 56 weight percent and all the ranges are within those specified in claim 1 and therefore Alloy Bag-7 would anticipate the claim.
With respect to the recitation “solder alloy” in claim 1, the Examiner notes that this is a recitation of intended use that would not further limit the structure of the alloy. MPEP 2111.02 II.
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 1-5 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kempf et al. (EP 1078711 B1).
In regard to claim 1, Kempf et al. (EP ‘711) discloses silver based solder alloys having compositions relative to that of the instant invention as set forth below (abstract and [0009]).
Element
Instant Claim
(mass percent)
Kempf et al. (EP ‘711)
(weight percent)
Overlap
Ag
35 – 62
45 – 75
45 – 62
Cu
10 – 30
10 – 30
10 – 30
Zn
10 – 26
1 – 25
10 – 25
Sn, Ga, Mn, Ni, In
present
0.1 – 8 Mn
0.1 – 8 Mn
The Examiner notes that the amounts of silver, copper, zinc and manganese disclosed by Kempf et al. (EP ‘711) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of silver, copper, zinc and manganese from the amounts disclosed by Kempf et al. (EP ‘711) because Kempf et al. (EP ‘711) discloses the same utility throughout the disclosed ranges.
In regard to claim 2, Kempf et al. (EP ‘711) discloses 45 to 75 weight percent silver and 10 to 30 weight percent copper (abstract and [0009]).
In regard to claims 3 and 5, Kempf et al. (EP ‘711) discloses up to 6 weight percent tin, which overlap the range of the instant invention (abstract and [0009]).
In regard to claim 4, Kempf et al. (EP ‘711) discloses up to 6 weight percent indium, which overlap the range of the instant invention (abstract and [0009]).
In regard to claim 8, Kempf et al. (EP ‘711) discloses 1 to 25 weight percent zinc and up to 6 weight percent tin, which overlaps the range of the instant invention (abstract and [0009]. MPEP 2144.05 I.
In regard to claim 9, Kempf et al. (EP ‘711) discloses up to 6 weight percent indium, which overlap the range of the instant invention (abstract and [0009]). MPEP 2144.05 I.
In regard to claim 10, Kempf et al. (EP ‘711) discloses 0.1 to 8 weight percent manganese, which is within the range of the instant invention (abstract and [0009]). MPEP 2144.05 I.
In regard to claim 11, Kempf et al. (EP ‘711) discloses up to 5 weight percent nickel, which encompasses the range of the instant invention [0010].
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kembaiyan (GB 2 409 209).
In regard to claim 1, Kembaiyan (GB ‘209) discloses silver based alloys having compositions relative to that of the instant invention as set forth below (abstract and page 18).
Element
Instant Claim
(mass percent)
Kembaiyan (GB ‘209)
(weight percent)
Overlap
Ag
35 – 62
40 – 60
40 – 62
Cu
10 – 30
10 – 40
10 – 30
Zn
10 – 26
6 – 30
10 – 26
Sn, Ga, Mn, Ni, In
present
0.5 – 10 Ga
0.5 – 10 Ga
The Examiner notes that the amounts of silver, copper, zinc and gallium disclosed by Kembaiyan (GB ‘209) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of silver, copper, zinc and gallium from the amounts disclosed by Kembaiyan (GB ‘209) because Kembaiyan (GB ‘209) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “solder alloy” in claim 1, the Examiner notes that this is a recitation of intended use that would not further limit the structure of the alloy. MPEP 2111.02 II.
In regard to claim 2, Kembaiyan (GB ‘209) discloses 0.5 to 10 weight percent indium, which overlaps the range of the instant invention (abstract and page 18). MPEP 2144.05 I.
In regard to claim 3, Kembaiyan (GB ‘209) discloses 2 to 10 weight percent tin, which overlaps the range of the instant invention (abstract and page 18). MPEP 2144.05 I.
In regard to claim 4, Kembaiyan (GB ‘209) discloses 0.5 to 10 weight percent indium, which is within the range of the instant invention (abstract and page 18). MPEP 2144.05 I.
In regard to claim 5, Kembaiyan (GB ‘209) discloses 2 to 10 weight percent tin, which overlaps the range of the instant invention (abstract and page 18). MPEP 2144.05 I.
In regard to claim 6, Kembaiyan (GB ‘209) discloses 10 to 40 weight percent copper and 2 to 10 weight percent tin, which overlaps the scope of the instant invention (abstract and page 18). MPEP 2144.05 I.
In regard to claim 7, Kembaiyan (GB ‘209) discloses 2 to 10 weight percent tin and 0.5 to 10 indium, which overlaps the scope of the instant invention (abstract and page 18). MPEP 2144.05 I.
In regard to claim 8, Kembaiyan (GB ‘209) discloses 6 to 30 weight percent zinc, 2 to 10 weight percent tin, and 0.5 to 10 weight percent indium which overlaps the scope of the instant invention (abstract and page 18). MPEP 2144.05 I.
In regard to claim 9, Kembaiyan (GB ‘209) discloses 0.5 to 10 weight percent indium, which overlaps the range of the instant invention (abstract and page 18). MPEP 2144.05 I.
Claims 1-5, 8, 10 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable Wiehl et al. (WO 2015/014968).
In regard to claim 1, Wiehl et al. (WO ‘968) discloses silver based solder alloys having compositions relative to that of the instant invention as set forth below (abstract and page 3).
Element
Instant Claim
(mass percent)
Wiehl et al. (WO ‘968)
(weight percent)
Overlap
Ag
35 – 62
15.5 – 49
35 – 49
Cu
10 – 30
Balance (>0 – 68.4)
10 – 30
Zn
10 – 26
10 – 35
10 – 26
Sn, Ga, Mn, Ni, In
present
0.1 – 5 In,Ga,Sn, 6-19 Mn
0.1 – 5 In, Ga, Sn, 6-19 Mn
The Examiner notes that the amounts of silver, copper, zinc, gallium, tin and indium disclosed by Wiehl et al. (WO ‘968) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of silver, copper, zinc, gallium, tin and indium from the amounts disclosed by Wiehl et al. (WO ‘968) because Wiehl et al. (WO ‘968) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “solder alloy” in claim 1, the Examiner notes that this is a recitation of intended use that would not further limit the structure of the alloy. MPEP 2111.02 II.
In regard to claim 2, Wiehl et al. (WO ‘968) discloses 15.5 to 49 weight percent silver and implies greater than 0 to about 68.4 weight percent copper, which overlaps the range of the instant invention (abstract and page 3). MPEP 2144.05 I.
In regard to claims 3 and 5, Wiehl et al. (WO ‘968) discloses 0.1 to 5 weight percent tin, which overlaps the range of the instant invention (abstract and page 3). MPEP 2144.05 I.
In regard to claim 4, Wiehl et al. (WO ‘968) discloses 0.1 to 5 weight percent indium, which is within the range of the instant invention (abstract and page 3). MPEP 2144.05 I.
In regard to claim 8, Wiehl et al. (WO ‘968) discloses 10 to 35 weight percent zinc and 0.1 to 5 weight percent tin, which would overlap the claimed range of zinc and be close enough to “greater than 5%” tin to establish prima facie obviousness. MPEP 2144.05 I.
In regard to claim 10, Wiehl et al. (WO ‘968) discloses 6 to 19 weight percent manganese, which overlaps the claimed range of manganese (abstract and page 3). MPEP 2144.05 I.
In regard to claim 13, Wiehl et al. (WO ‘968) discloses wherein the alloy would form a paste (page 35).
In regard to claim 14, Wiehl et al. (WO ‘968) discloses wherein the alloy would form a ribbon or a trifoil (page 35).
Allowable Subject Matter
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In regard to claim 12, neither Tanaka (JP ‘087), Kempf et al. (EP ‘711), Kembaiyan (GB ‘209), Wiehl et al. (WO ‘968) nor the remainder of the prior art disclose or adequately suggest a solder alloy comprising 35 to 62 weight mass percent silver, 10 to 30 mass percent copper, 10 to 26 mass percent zinc, 3 to 5 mass percent manganese, 7 to 13 mass percent indium and 3.5 to 5.5 mass percent nickel.
Conclusion
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/JESSEE R ROE/Primary Examiner, Art Unit 1759