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
Response to Amendments
The amendment filed on 04/30/26 has been entered. Claim 3 has been canceled. Claims 1 – 2 and 4 – 14 remain pending. Claim 14 remains withdrawn. Claims 1 – 2 and 4 – 13 are under examination.
The amendments to claims 2 and 7 – 8 have overcome the previous objections
The amendments to claims 11 – 13 have overcome the previous rejections under 112(b)
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 – 2 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, cited with the previous OA on 02/24/26)
Regarding claims 1 – 2 and 5, 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]
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. 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.
"[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 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.
Claims 1 – 2 and 4 – 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki (US2017/0246711)
Regarding claims 1 – 2 and 4 – 5, Kawasaki teaches a three-layer core-shell structured spherical powder [Fig 1] which contains a core of copper [0050], a plating layer of nickel [0053], and a solder layer of Sn or Sn alloy [0052], meeting the claimed limitations.
The core has a diameter of 1 – 300 µm [0051], which overlaps with the claimed range of claim 1. The plating layer has a thickness of 0.1 – 20µm [0053], which overlaps with the claimed range of claims 2 and 4. The solder layer has a thickness of less than 100 µm, which overlaps with the claimed range of claims 2 and 5.
With regards to the overlapping ranges taught, “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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Claims 10 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki (US2017/0246711), as applied to claim 1 above, in further view of Shearer (US2010/0252616)
Regarding claims 10 – 11, Kawasaki teaches the invention as applied in claim 1. Kawasaki teaches that the powder can be used with a solder paste [0035] and a rosin flux [0059], the natural rosin flux meeting the claimed limitation of lead free rosin flux.
Kawasaki does not teach using a Sn-Bi alloy powder in the solder paste.
Shearer teaches that a composite lead-free conductive solder composition [0014] that includes a low temperature alloy [0018, 0022], a copper alloy [0018, 0019], and a flux [0029]. Shearer teaches that the copper alloy component (a high melting point metal particle) is combined with a low-melting point component such that the components react and forms an intermetallic compound [0030]. Shearer formed intermetallic compounds have thermal and mechanical stability [0088, 0090]. In particular, Shearer states that the low temperature alloy powder should be present in an amount of 10 – 60 mass% and the copper alloy powder should be 30 – 70 mass%, which overlaps with the claimed range [0058, 0059]. Shearer also states that the low temperature alloy can be a Sn-Bi alloy [0072, 0073] and the copper powder can be particle coated with additive or other metals [0083]
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Kawasaki and Shearer to use a multi component solder paste with the copper powder as taught by Kawasaki. Kawasaki and Shearer are directed to solder/solder pastes for electrical components including semiconductors [0009, Kawasaki; 0090, Shearer] and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings to achieve a solder paste for semiconductors. Moreover, Shearer teaches that the multi component solder paste achieves thermal and mechanical stability by intermetallic compound formation and Kawasaki teaches that the copper powder is ideal semiconductor compositions.
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 12, Kawasaki in view of Shearer teaches the invention as applied in claim 11. Shearer teaches that the size of metal particle components is not limited but can be 1 – 20 µm, which overlaps with the claimed range [0084]. “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 13, Kawasaki in view of Shearer teaches the invention as applied in claim 11. Shearer teaches the low-melting point alloy is an Sn-Bi alloy with about 42% Sn (i.e., SnBi58) [0073]. Moreover, Shearer shows an example in which the eutectic Sn-Bi alloy is used and has an endothermic peak at 143°C [Fig 1, 0097]. Shearer teaches that the Sn-Bi alloys have a melting point of 135 – 200°C [0080], which overlaps with the claimed starting melting point and peak temperature.
Lastly, the claim does not specify a temperature for the claimed thermal conductivity range, therefore, there is a reasonable expectation to a person of ordinary skill in the art that Kawasaki in view of Shearer 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))
Response to Arguments
Applicant's amendments have overcome the previous rejections of
Claims 1 – 3 and 5 under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Uesugi (WO2017104562, specifically Example 23, Table 1)
Claims 10 – 13 under 35 U.S.C. 103 as being unpatentable over Uesugi (WO2017104562,), as applied to claim 1 above, in further view of He (CN105033496).
However, the rejection of claims 1 – 2 and 5 – 9 under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Uesugi (WO2017104562, specifically Ex 45) has been maintained.
Moreover, upon further consideration a new rejection is made of:
Claims 1 – 2 and 4 – 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki (US2017/0246711)
Claims 10 – 13 under 35 U.S.C. 103 as being unpatentable over Kawasaki (US2017/0246711), as applied to claim 1, in further view of Shearer (US2010/0252616)
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. However, for clarity of the record the applicant argues the Uesugi and He teach away from the claims because Uesugi requires a higher melting point soldering alloy and thus, claim 1 is allowable. This not persuasive because claim 1 does not state, imply, or otherwise require a soldering alloy or a soldering alloy with a specific melting point. Claim 1 is directed to a composite metal material (whereas claim 11 is directed to a solder alloy with the composite material). Therefore, these arguments directed towards claim 1 are not persuasive because they are not commensurate with the scope of claim 1.
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (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
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