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 .
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 7-12, and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rogojina et al. (US 2015/0364615 – previously cited).
Considering claim 1, 11 and 14, Rogojina teaches a paste composition comprising Al and Sn dispersed in an organic medium (abstract). Examples are disclosed in Table 1 including Example 1 of 70 wt.% Sn and 18 wt.% Al (Paragraph 100) and the Al content is about 25.7 parts by mass per 100 parts Sn using these values (from 18/70). This falls within and anticipates the instantly claimed range. See MPEP 2131.03. The recitation of “for forming a germanium compound layer…the germanium compound layer comprises germanium and tin” is considered an intended use of the paste. See MPEP 2111.02 (II). As Rogojina teaches a substantially identical paste as that which is claimed the paste of Rogojina is considered capable of performing said intended use, absent an objective showing.
Considering claim 2, Example 3 of Rogojina teaches 44 wt.% Al and 40 wt.% Sn (Table 1) with a ratio of 110 parts by mass Al per 100 parts Sn (from 44/40). See MPEP 2131.03.
Considering claims 3-4, Rogojina teaches examples of ethyl cellulose with terpineol (e.g. a resin) and Example 3 has 0.6 wt.% of the ethyl cellulose to 40 wt.% Sn and 44 wt.% Al corresponding to about 0.7 parts by mass of the ethyl cellulose to the total Al and Sn content (from 0.6/88). See MPEP 2131.03.
Considering claims 7-9, the recitation of “wherein the germanium compound comprises/is…” is considered an intended use of the claimed paste and is considered to be met by Rogojina due to the teachings of a substantially identical paste as outlined above, absent an objective showing. See MPEP 2111.02 (II).
Considering claims 10 and 12, Rogojina teaches where the paste further comprises 1-10 wt.% Si (Paragraph 21).
Considering claim 15, the recitation of “wherein the germanium compound is free of aluminum” is considered an intended use of the claimed paste and is considered to be met by Rogojina due to the teachings of a substantially identical paste as outlined above, absent an objective showing. See 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 7-17 are rejected under 35 U.S.C. 103 as being unpatentable over Jee et al. (US 2013/0104973).
Considering claim 1, Jee teaches a conductive paste for forming an electrode (abstract). The paste comprises a conductive powder, metallic glass, inorganic additive, and organic vehicle (Paragraph 11). The conductive powder may comprise Al, Ag, etc. (Paragraph 36) in an amount of about 30-99 wt.% (Paragraph 37) and the inorganic additive may comprise Sn, etc. (Paragraph 14) in an amount of 0.1-35 wt.% (Paragraph 16).
While not expressly teaching a singular example of the claimed paste composition this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Jee as this is considered a conventionally known combination of powders known to form a conductive paste and one would have had a reasonable expectation of success. The amounts of Al and Sn disclosed by Jee gives a ratio Al/Sn ranging from about 0.85-990 overlapping the claimed parts by mass and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05. The recitation of “for forming a germanium compound layer…the germanium compound layer comprises germanium and tin” is considered an intended use of the paste. See MPEP 2111.02 (II). As Jee teaches a substantially identical paste as that which is claimed the paste of Jee is considered capable of performing said intended use, absent an objective showing.
Considering claim 2, Jee teaches a ratio Al/Sn ranging from about 0.85-990 as outlined above overlapping the claimed parts by mass. See MPEP 2144.05.
Considering claims 3-4, Jee teaches where the organic vehicle comprises resin (Paragraphs 67-68) in an amount of about 0.1-20 wt.% and where the inorganic additive may comprise Sn, etc. (Paragraph 14) in an amount of 0.1-35 wt.% (Paragraph 16) which encompasses a ratio of resin/Sn of about 0.0028-200 overlapping the claimed range. See MPEP 2144.05.
Considering claims 7-9, the recitation of “wherein the germanium compound comprises/is…” is considered an intended use of the claimed paste and is considered to be met by Jee due to the teachings of a substantially identical paste as outlined above, absent an objective showing. See MPEP 2111.02 (II).
Considering claim 10, Jee teaches where the metallic glass may comprise Si (Paragraphs 41 and 47).
Considering claim 11, Jee teaches where the conductive powder may comprise Al, Ag, etc. (Paragraph 36).
Considering claim 12, Jee teaches where the conductive powder may comprise Al, Ag, etc. (Paragraph 36) and where the metallic glass may comprise Si, etc. (Paragraphs 41 and 47).
Considering claim 13, Jee teaches where the conductive powder may comprise Ag, etc. (Paragraph 36) and where the metallic glass may comprise Si, etc. (Paragraphs 41 and 47) encompassing an embodiment not containing Al.
Considering claim 14, Jee teaches where the conductive powder may comprise Al, etc. (Paragraph 36) and where the metallic glass may comprise Sb, etc. (Paragraphs 41 and 47) encompassing an embodiment not containing Si.
Considering claim 15, the recitation of “wherein the germanium compound is free of aluminum” is considered an intended use of the claimed paste and is considered to be met by Jee due to the teachings of a substantially identical paste as outlined above, absent an objective showing. See MPEP 2111.02 (II).
Considering claim 16, Jee teaches where the aluminum may be an Al-alloy (Paragraph 36).
Considering claim 17, and the metallic glass may comprise Si, etc. (Paragraphs 41 and 47) and is an alloy (Paragraph 38).
Response to Arguments
Applicant's arguments filed 01 July 2026 regarding art rejections of claims 1-4 under 35 USC 102(a)(1) in view of Rogojina have been fully considered but they are not persuasive. Applicant argues that Rogojina makes no reference to a germanium compound or its use as a substrate on which paste can be applied and the paste of Rogojina is limited to electrode formation and therefore modification of Rogojina would be impermissible as it would change its mode of operation (remarks p.5, last two paragraphs). This is not persuasive as the instant rejection is under 35 USC 102(a)(1) and the exemplar of Rogojina discloses a paste of materials substantially identical in amounts substantially identical to that which is claimed and no modification is required for said paste. The instant claims are directed to a paste composition capable of forming a germanium compound as indicated by applicant (instant specification Paragraph 10) and the paste of Rogojina is therefore expected to meet the claimed intended use as substantially identical materials are expected to possess substantially identical properties, absent an objective showing. See MPEP 2112.
Applicant argues that a passivation film is present on the back side (remarks p.6, 1st full paragraph) and where the instant paste composition is formulated to achieve an epitaxial Ge compound layer (remarks p.6, 2nd full paragraph). This is not persuasive as these are not a claimed features. See MPEP 2145 (VI).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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