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, 3-11 and 13-20 are pending wherein claims 1, 3-11 and 13-20 are currently under examination and claims 2 and 12 have been canceled. Applicant’s election of claims 1, 3-11 and 13-20 was made with traverse in the Response filed on July 20, 2026. Applicant traverses on the ground that the amendment canceling claims 2 and 12 renders the restriction moot. The Examiner acknowledges Applicant’s election with traverse.
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 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Choudhury et al. (US 2022/0324063).
In regard to claim 1, Choudhury et al. (‘063) discloses lead-free solder alloys having compositions relative to that of the instant invention as set forth below (abstract and [0006-0033]).
Element
Instant Claim
(mass percent)
Choudhury et al. (‘063)
(weight percent)
Overlap
Ag
3 – 3.8
2.5 – 5
3 – 3.8
Cu
0.1 – 1.0
0.01 – 2
0.1 – 1
Bi
more than 0 – 0.9
0.01 – 5
0.01 – 0.9
Sb
1 – 7.9
1 – 7
1 – 7
Fe
0.02 – 0.04
0 – 0.5
0.02 – 0.04
Co
0.008 – 0.02
0 – 0.5
0.008 – 0.02
Sn
Balance
Balance
Balance
The Examiner notes that the amounts of silver, copper, bismuth, antimony, iron and cobalt for the tin based alloys disclosed by Choudhury et al. (‘063) 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, bismuth, antimony, iron and cobalt for tin based alloys from those disclosed by Choudhury et al. (‘063) because Choudhury et al. (‘063) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “consisting of”, Choudhury et al. (‘063) does not require the presence of additional elements and therefore reads on the claim.
With respect to the recitation “wherein the alloy satisfies the following relation (1) to (3): 0.00018 ≤ Ag x Cu x Sb x Fe x Co ≤ 0.00203 Relation (1)
0.08 ≤ Ag x Cu x Bi ≤ 1.85 Relation (2)
0 < Sb x Fe x Co ≤ 0.00139 Relation (3)
in claim 3, Choudhury et al. (‘063) discloses alloys such as one having 3 weight percent silver, 0.3 weight percent copper, 3 weight percent antimony, 0.04 weight percent iron, 0.01 weight percent cobalt and 0.1 weight percent bismuth and the balance tin with Relation (1) being 0.00108, Relation (2) being 0.09 and Relation (3) being 0.0012.
In regard to claim 4, Choudhury et al. (‘063) discloses wherein a solid paste would comprise the solder powder [0103].
In regard to claim 5, Choudhury et al. (‘063) discloses wherein there would be solder spheres for use in ball grid array joints [0103].
In regard to claim 6, Choudhury et al. (‘063) discloses a preform of the solder alloy or a preformed solder piece [0103].
In regard to claim 7, Choudhury et al. (‘063) discloses wherein the solder alloy would be in the form of a solidified solder joint [0103].
Claims 1, 3-11 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Odonari et al. (Study of Mount Technology on Alumina Multilayer Substrate for Automatic Transmission ECU) in view of Choudhury et al. (US 2022/0324063).
In regard to claims 1, 8-11 and 17-20, Odonari et al. discloses using high temperature Sn-3.5Ag-0.75Cu solder alloys for ECU’s that are mounted on the engine body or the transmission of commercial vehicles in Japan in multi-layered circuits (page 314 and page 315, left column).
Odonari et al. discloses using Sn-3.5Ag-0.75 solder alloys as set forth above, but Odonari et al. does not specify wherein more than 0 to less than 1.5 mass percent bismuth, 1.0 to 7.9 mass percent antimony, 0.02 to 0.04 mass percent iron, and more than 0.008 to 0.02 mass percent cobalt would be included in the alloy.
Choudhury et al. (‘063) discloses lead-free solder alloys having compositions relative to that of the instant invention as set forth below (abstract and [0006-0033]).
Element
Instant Claim
(mass percent)
Choudhury et al. (‘063)
(weight percent)
Overlap
Ag
3 – 3.8
2.5 – 5
3 – 3.8
Cu
0.1 – 1.0
0.01 – 2
0.1 – 1
Bi
more than 0 – 0.9
0.01 – 5
0.01 – 0.9
Sb
1 – 7.9
1 – 7
1 – 7
Fe
0.02 – 0.04
0 – 0.5
0.02 – 0.04
Co
0.008 – 0.02
0 – 0.5
0.008 – 0.02
Sn
Balance
Balance
Balance
Choudhury et al. (‘063) discloses adding 0.01 to 5 weight percent bismuth to substantially similar tin-based alloys in order to improve the mechanical properties of the solder alloy [0044]. Choudhury et al. (‘063) discloses adding 1 to 7 weight percent antimony to substantially similar tin-based alloys in order to improve the mechanical properties through solid solution strengthening [0045]. Choudhury et al. (‘063) discloses adding up to 0.5 weight percent iron to improve the strength [0055]. Choudhury et al. (‘063) discloses adding up to 0.5 weight percent cobalt to improve the strength [0052].
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to add 0.01 to 5 weight percent bismuth, 1 to 7 weight percent antimony, up to 0.5 weight percent iron and up to 0.5 weight percent cobalt, as disclosed by Choudhury et al. (‘063), to the Sn-3.5Ag-0.75 solder alloys, as disclosed by Odonari et al. in order to improve the overall strength and mechanical properties, as disclosed by Choudhury et al. (‘063) ([0044-0045], [0052] and [0055]).
The Examiner notes that the amounts of silver, copper, bismuth, antimony, iron and cobalt for the tin based alloys disclosed by Odonari et al. in view of Choudhury et al. (‘063) 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, bismuth, antimony, iron and cobalt for tin based alloys from those disclosed by Odonari et al. in view of Choudhury et al. (‘063) because Odonari et al. in view of Choudhury et al. (‘063) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “consisting of”, Odonari et al. in view of Choudhury et al. (‘063) does not require the presence of additional elements and therefore reads on the claim.
With respect to the recitation “wherein the alloy satisfies the following relation (1) to (3): 0.00018 ≤ Ag x Cu x Sb x Fe x Co ≤ 0.00203 Relation (1)
0.08 ≤ Ag x Cu x Bi ≤ 1.85 Relation (2)
0 < Sb x Fe x Co ≤ 0.00139 Relation (3)
in claim 3, Choudhury et al. (‘063) discloses alloys such as one having 3 weight percent silver, 0.3 weight percent copper, 3 weight percent antimony, 0.04 weight percent iron, 0.01 weight percent cobalt and 0.1 weight percent bismuth and the balance tin with Relation (1) being 0.00108, Relation (2) being 0.09 and Relation (3) being 0.0012.
In regard to claims 4 and 13, Choudhury et al. (‘063) discloses wherein a solid paste would comprise the solder powder [0103].
In regard to claims 5 and 14, Choudhury et al. (‘063) discloses wherein there would be solder spheres for use in ball grid array joints [0103].
In regard to claims 6 and 15, Choudhury et al. (‘063) discloses a preform of the solder alloy or a preformed solder piece [0103].
In regard to claims 7 and 16, Choudhury et al. (‘063) discloses wherein the solder alloy would be in the form of a solidified solder joint [0103].
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, 3-11 and 13-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-10 of copending Application No. 18/410,205 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ranges of elements that are required are the same except for the bismuth content which in the instant application is narrower (upper limit 0.9%) relative to that of copending Application No. 18/410,205 and the optional elements and amounts are the same. MPEP 2144.05 I. The instant application introduces compositional relationships in instant claim 3, that would also be present in copending Application No. 18/410,205. The other dependent claims are otherwise the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Examiner is not aware of additional references that would e pertinent to the disclosure of the instant invention.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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