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 Claims
Responsive to the amendment filed 8 July 2026 claims 1-2 are amended. Claims 1-20 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 8 July 2026 new grounds of rejection are presented.
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) 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 20220324063 A1 (hereinafter “Choudhury”).
Regarding claim 1 Choudhury teaches a lead free solder alloy (see abstract, [0006] or claim 1). Choudhury teaches an overlapping composition (See [0006]-[0031] or claim 1). Choudhury teaches Examples of the solder alloy (see EXAMPLES and Table 1 and Table 2). The composition of the solder alloy of Choudhury is compared with the claimed alloy in the Table below (values in % by mass).
Element
Claim 1
Choudhury
Ag
Cu
Bi
Sb
Fe
Co
Sn
3.0-3.8
0.1-1.0
1.1-1.4
1.0-7.9
0.020-0.040
0.001-0.008
balance
2.5-5
0.01-2
0.01-5
1-7
Up to 0.5
Up to 0.5
balance
The broad composition of the alloy of Choudhury overlaps the claimed composition. It would have been an obvious matter to one of ordinary skill in the art at time of filing to have selected a composition in the ranges as claimed because Choudhury teaches the same utility over overlapping ranges. Applicant is further directed to MPEP 2144.05.
Regarding claim 2, the difference from claim 1 is the inclusion of one or more Ge, Ga, As, Pd, Mn, In, Zn, Zr, and Mg at 0.1% or less total.
Choudhury teaches to add Ge to the alloy in an amount Up to 0.5 (see claim 1). It would have been an obvious matter to the skilled artisan to have added Ge in a range claimed because Choudhury teaches to add As in an overlapping range. Applicant is directed to MPEP 2144.05.
Regarding claims 3 and 14, Choudhury does not teach the claimed relations (1) and (2). However, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75. In the absence of evidence to the contrary, the selection of the proportions of elements would appear to require no more than routine investigation by those of ordinary skill in the art. In re Austin, et al., 149 USPQ 685, 688.
Regarding claim 4, 5, 15, and 16, Choudhury does not teach the claimed relation (3). However, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75. In the absence of evidence to the contrary, the selection of the proportions of elements would appear to require no more than routine investigation by those of ordinary skill in the art. In re Austin, et al., 149 USPQ 685, 688.
Regarding claims 6 and 17, Choudhury teaches a paste (see [0103], claim 26, claim 28).
Regarding claims 7-8 and 18-19, Choudhury teaches a solder ball and preform (see [0103], claim 26).
Regarding claims 9-13 and 20, Choudhury teaches a solder joint, and a circuit board (see [0103], claim 26, claim 28). Although Choudhury does not describe a vehicle mounted ECU, or other ECU, Choudhury describes that the skilled artisan uses such solders to create control units (see [0004]). It wo9uyld have been an obvious matter to the skilled artisan to have used the solder of Choudhury in a control module where Choudhury teaches that the same is known in the prior art as a need for soldering. The combination of known elements in the art to achieve predictable results is considered prima facie obvious. The limitat8ion vehicle mounted ECU is considered a statement of intended use for the control unit, which does not impart any structure further than what is required elsewhere in the claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/410205 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because With exception of Co, the copending claims describe a solder alloy which overlaps the claimed compositional ranges. The claims differ from the instant claims in the ranges expressed, but all of the ranges are overlapping. It would have been an obvious matter to the skilled artisan to have selected compositions in the claimed ranges because the prior art teaches the same utility over overlapping ranges. Regarding the Co content, applicant’s copending claim 1 differs from instant claim 1 in that the alloy includes 1more than 0.008 and 0.020 or less Co, instead of 0.001 to 0.008% of Co. Regarding the cobalt content, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In this case it is not clear why the alloy with 0.008% Co would have been meaningfully different from the alloy having more than 0.008% Co. Applicant’s copending claims further teach a paste, preform, ball join, ECU, etc. (copending claims 3-10). Regarding the Relations (1), (2), and (3), it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75. In the absence of evidence to the contrary, the selection of the proportions of elements would appear to require no more than routine investigation by those of ordinary skill in the art. In re Austin, et al., 149 USPQ 685, 688.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 8 July 2026 have been fully considered. Applicant argues that the prior art Yoshikawa does no teach or fairly suggest the claimed invention as amended. In response no rejection is made over Yoshikawa. New grounds of rejection are presented. Regarding the provisional rejection under the doctrine of obviousness type double patenting, applicant argues that the amended claim distinguishes over the copending application with regard to the amount of cobalt. The invention is considered obvious over the copending claims for the reasons stated above.
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 CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
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