Detailed Office Action
Notice of Pre-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
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 2 and 7 – 8 are objected to because of the following informalities: Appropriate correction is required.
Regarding claim 2, a comma is placed between the end of “µm” and “;”
Regarding claims 7 – 8, there is an erroneous period mark (“.”) in front of “wherein”.
Restriction/Election
Applicant's election with traverse of Group I, Claims 1 – 13 in the reply filed on 11/14/2025 is acknowledged. The traversal is on the ground(s) that the office has not articulated why there is a search burden. This is not found persuasive because as noted in the restriction requirement the groups have acquired a separate status in the art and moreover, the inventions would require different fields of searches and/or search queries. As such, a serious search/examination burden exists.
The requirement is still deemed proper and is therefore made FINAL.
Claim 14 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/14/2025.
Claim Rejections – U.S.C. §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 11 – 13 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 claim 11, the phrase “lead-free type” is indefinite. The phrase is indefinite because the use of “type” makes it unclear whether the flux paste is actually lead-free or what scope is actually covered by “type”. For purposes of examination, the phrase is interpreted as “lead free”.
Claims 12 – 13 are rejected by virtue of dependency
Claim Rejections – U.S.C. §102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) or (a)(2) as being anticipated by Uesugi (WO2017104562, using espacenet translation)
Regarding claim 1, Uesugi teaches a three-layer core-shell structured spherical powder [Fig 2] in which the core is copper, the intermediate layer is nickel, and the outer layer is tin [page 6 of translation]. Uesugi teaches an example in which the particle size is 29.4 µm, which falls within the claimed range [Table 1, Example 23]
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
Regarding claims 2 – 3 and 5, Uesugi teaches the invention as applied in claim 1. Uesugi teaches that the example [Table 1, Example 23; Page 22 of translation] has a copper core diameter of 25.96 µm (12.98 * 2), which falls within the claimed range of 2 and 3. The tin outer layer thickness is 1.6 µm, which falls within the claimed range of 2 and 5. The nickel layer thickness is 0.52 µm, which falls within the claimed range of claim of 2.
Claims 1 – 3 and 5 – 9 are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Uesugi (WO2017104562, using espacenet translation)
Regarding claim 1, Uesugi teaches a three-layer core-shell structured spherical powder [Fig 2] in which the core is copper, the intermediate layer is nickel, and the outer layer is tin [page 6 of translation]. Uesugi teaches an example in which the particle size is ~40.3 µm, which falls within the claimed range [Table 4, Example 45]
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
Regarding claims 2 – 3 and 5, Uesugi teaches the invention as applied in claim 1. Uesugi teaches that the example [Table 4, Example 45; Page 22 of translation] has a copper core diameter of ~35.72 µm (17.86 * 2), which falls within the claimed range of 2 and 3. The tin outer layer thickness is 1.43 µm, which falls within the claimed range of 2 and 5. The nickel layer thickness is 0.72 µm, which falls within the claimed range of claim of 2.
Regarding claims 6 – 9, Uesugi teaches the invention as applied in claim 1. Uesugi teaches that the example [Table 4, Example 45; Page 22 of translation] has a copper content of 75.3 mass%, which falls within the claimed ranges of claims 6 and 7. While Uesugi does not explicitly teach the content of nickel and tin in the example, based on the radius/thicknesses disclosed and an approximating a sphere; the volume of nickel is ~8% and the tin is ~19.5%. Therefore, the mass percentage would be ~8.3 mass% Ni and ~16.5% Sn, based on a density of 8.9 g/cm3 Ni and 7.29 g/cm3 Sn (with ~75.2% copper left over). The nickel content meets the claimed ranges of claims 6 and 8, and the tin content falls within the claimed ranges of claim 6 and 9.
Claim Rejections – U.S.C. §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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Uesugi (WO2017104562, using espacenet translation), as applied to claim 1 above.
Regarding claim 4, Uesugi teaches the invention as applied in claim 1. Uesugi teaches that the nickel layer can have a thickness ranging from a 0.05 – 0.2 ratio relative to the radius of the copper core [page 13 of translation]. Based on Example 23 [Table 1] in which the copper core radius is 12.98 µm, the nickel layer thickness could be 0.65 – 2.6 µm, which overlaps with the claimed range.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Claims 10 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Uesugi (WO2017104562, using espacenet translation), as applied to claim 1 above, in further view of He (CN105033496, using espacenet translation).
Regarding claim 10, Uesugi teaches the invention as applied in claim 1. Uesugi teaches that the powder can be used in a solder paste with the composite powder being 12 wt% of the paste [page 25, top], which meets the claimed limitation and falls within the claimed range. Uesugi teaches that a flux is included along with the solder paste [page 25 of translation],meeting the claimed limitation.
Uesugi does not teach the presence of an Sn-Bi alloy.
He teaches that a composite lead-free solder composition that includes a solder alloy, a copper alloy, and a flux [0019]. He teaches that the copper alloy component (a high melting point metal particle) is combined with a low-melting point component such that the low-melting point powder can penetrate into the gaps of the copper core through capillary action to form dense and defect-free solder joints [0017]. The low-melting point powder is consumed and combined with the copper alloy to improve the strength of the joint and high temperature resistance [0017]. In particular, He teaches that the low-melting point powder should be present in an amount 2 – 20 times the weight of the copper alloy powder, which overlaps with the claimed range [0025], and that the low-melting point alloy can be a Sn-Bi alloy [0020].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the solder paste of Uesugi and modified it to include a low-melting Sn-Bi alloy in amount of 2 – 20 times the copper alloy powder, as taught by He. Uesugi and He are directed to solder/solder paste and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings. Moreover, He teaches that the inclusion of the Sn-Bi powder results in melting that penetrates the gaps of the copper alloy powder to form dense and defect-free solder joint, thus providing an ordinarily skilled artisan motivation to combine the teachings.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Regarding claim 11, Uesugi in view of He teaches the invention as applied in claim 10. Uesugi teaches that the flux contains a gum rosin [page 15 of translation]. The natural gum rosin meeting the claimed limitation of lead free rosin in the flux paste.
Regarding claim 12, Uesugi in view of He teaches the invention as applied in claim 11. He teaches low melting points alloy has a size of, for example, 25 – 45 µm [0040], which falls within the claimed range, and that the Sn-Bi alloy can be eutectic or hypereutectic alloy [0021].
Regarding claim 13, Uesugi in view of He teaches the invention as applied in claim 11. He teaches the low-melting point alloy is SnBi58 [0022]. Wherein said alloy has a melting point of approximately 138°C and as such, the melting and peak temperature would be expected to be around 138°C, which meets/overlaps with the claimed range.
Moreover, given that Uesugi in view of He teaches the same combination of metal powders (i.e. SnBi58 and the composite metal powder of claim 1) and does not specify a temperature for thee claimed thermal conductivity range, there is a reasonable expectation to a person of ordinary skill in the art that Uesugi in view of He would meet/overlap the claimed thermal conductivity range. The USPTO does not possess the capability to test samples of the prior art to determine the properties as claimed. As such, given the substantially similarities in composition, the burden is shifted to applicant to demonstrate that the prior art does not possess such feature(s) (In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980))
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2019/0376161 – Copper ball with nickel layer and solder layer of Sn-Bi
US 10,322,472 – Copper ball with diffusion prevention layer and solder layer of Sn-Bi
US2014/0332116 – Combining tin alloy powder and copper/silver powder
JP2019214760 – Copper ball with metal layer and solder layer of Sn-Bi
CN109175772 – Copper alloy with nickel plating and tin plating
CN104985350 – Combining Cu-X alloy powder and Sn-Bi alloy powder for composite material
JP2010099736 – Cu core ball and nickel plating layer and solder alloy
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738