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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/21/2023 and 03/20/2025 are being considered by the examiner.
Election/Restrictions
Examiner finds a typographical error in the previous “Requirement of Restriction/Election” dated 03/19/2026, therefore the corrected “Requirement of Restriction/Election” has been associated with this office action for the clarity of the record.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I: Claims 1-6, 9-12 and 15-16 drawn to a photosensitive conductive paste, classified B22F 2007/047.
II. Group II: Claims 7-8 and 13-14, drawn to method of producing a multilayer electronic component using a photosensitive conductive paste, classified in H01F 17/0013.
The inventions Group I and Group II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product photosensitive conductive paste as claimed in Group I can be used for soldering an electric circuit board, which is a materially different process of making a multilayer electronic component using a photosensitive conductive paste using the product without stacking or sintering as the process of Group II claimed.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) separate classifications:
each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search
(b) a different field of search:
it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different main groups/sub-groups or electronic resources, or employing different search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Applicant’s election of Group I: Claim 1-6, 9-12 drawn to a photosensitive conductive paste, in the reply filed on 04/28/2026 is acknowledged. As because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse as per (MPEP § 818.01(a)).
Claim 7-8 and 13-14 are withdrawn as these claims belong to non-elected group.
Therefore, claims 1-6, 9-12 and 15-16 are currently under examination on the merits.
Claim Rejections - 35 USC § 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.
Claim 9 and 16 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.
Claim 10, and 16 recites the limitation “the glass” in claim 10 (lines 2 and 3) and claim 16 (lines 2 and 3). There is insufficient antecedent basis for this limitation in the claim. For claim 10, there are two distinct glass components, i.e., the borosilicate glass set forth in claim 9, line 2, and the glass coating that covers the conductive powder set forth in claim 1, line 8. Likewise, for claim 16, there are two distinct glass components, i.e., the borosilicate glass set forth in claim 15, line 2, and the glass coating that covers the conductive powder set forth in claim 1, line 8. Therefore, it is not clear whether “the glass” is the borosilicate glass or “the glass” covers the conductive powder.
It appears as though both claim 10 and 16 intend to limit the borosilicate glass, as such, Examiner would suggest that the term “the glass” in lines 2 and 3 be amended to read “the borosilicate glass” (See MPEP 2173.05(e), particularly the citation to In re Packard that sets forth in-part “…if two different levers are recited earlier in the claim, the recitation of ‘said lever’ in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended”).
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1-4, 9-11 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo Kenta, et.al. [US10192650B2] (US version of WO2016076024A1, provided in the IDS) (Kenta hereafter) and in view of Joe Chou, et.al. [US20140035995A1] (Chou hereafter).
Regarding claim 1, and 3, Kenta discloses a photosensitive conductive paste (photosensitive conductive paste includes, see Kenta’s Claim 1) comprising:
a conductive powder ((a) a conductive powder, see Kenta’s Claim 1 );
an alkali-soluble polymer;
a photosensitive monomer;
a photopolymerization initiator; and a solvent ((b) a photosensitive resin composition containing an alkali-soluble polymer, a photosensitive monomer, a photopolymerization initiator, and a solvent·, see Kenta’s Claim 1);
a dispersant (Dispersant (additive 1), see Kenta’s Col. 7, line 20-25, and Additive 1 of examples of TABLE 3A));
and a glass frit having a glass softening point of 657°C to 790°C ((c) a glass frit, having a softening point is 657°C. or higher, see Kenta’s Claim 1, and examples of TABLE 3A).
Kenta’s glass softening point temperature is incorporated within the as recited in the claim 1 and 3.
But Kenta is silent “about the conductive powder is covered with a glass”.
However, Chou discloses photosensitive conductive paste comprising glass coated conductive metal particle (UV-curable ink, see Chou’s [0003], printable inks containing coated ( e.g., glass-coated) metal particles for the printing and patterning of conductive materials to form circuits, conductive lines and/or features on organic and inorganic substrates, like printing display and other electronics component, see Chou’s [0008], [0012]). Chou teaches being the most conductive metal, glass-coated silver is the most preferred glasscoated metal particle (see Chou’s [0132]), and discloses such example of a conductive glass coated metal ink having glass-coated silver particles(see Chou’s TABLE 12, [0319], [320] and [0321]) which has good storage stability and chemical shelf life at room temperature and elevated temperature as indicated by the lack of substantial sediment generation (see Chou’s [0331]).
Chou is analogous with both Kenta as well as with instant claim, as Chou is in the field of photosensitive conductive paste.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Chou’s teaching of glass-coated metal particle to modify Kenta for having a photosensitive conductive paste to have good storage stability and chemical shelf life at room temperature and elevated temperature.
Regarding claim 2 and 4, all the discussions above claim 1 are applicable for claims 2 and 4, in addition, Kenta teaches the glass has a refractive index of 0.10 or less (With the use of a glass frit in which refractive index between the photosensitive refractive index resin composition and the glass frit is 0.10 or less performing patterning by photolithography, it is possible to reduce the scattering or light at the interface between the photosensitive resin composition and the glass frit and achieve a high resolution, see Kenta’s Col.2, line 46-52).
Kenta’s glass having a refractive index value is incorporated within the as recited in the claim 2 and 4.
Regarding claim 9 and 15, all the discussions above claim 1 and 2 are applicable for claims 9 and 15 respectively, in addition, Kenta teaches a multilayer electronic component (a multilayer printed circuit chip (multilayer electronic component) using the photosensitive conductive paste and the photosensitive glass paste, see Kenta’s Col.7, line 52-57, FIGS. 1 and 2.) comprising:
a body including borosilicate glass and an inorganic filler (a photosensitive glass paste for forming an insulation layer is prepared by mixing and kneading the following materials (a) to (h), wherein (a) is an inorganic filler (Ceramic aggregate (alumina powder) and (h) is borosilicate glass (Glass frit (Si-B-K based glass, see Kenta’s TABLE2, Kenta’s glass contains silica and boron trioxide), the photosensitive glass paste is applied on a PET film (support film) by screen printing, dried, and exposed to light without a photomask, and process is repeated several times to form a glass layer (insulation layer) which will become an outer layer 11 (11a), (a body) as refer to FIG. 1, see Kenta’s Col.7, line 30-65, FIG. 1, TABLE2)),
Kenta discloses an inner electrode disposed in the body, the inner electrode being a sintered body of the photosensitive conductive paste (further as shown in FIG. 1, the glass layer (insulation layer) which will become the outer layer 11 (11a), i.e. the body, and the photosensitive conductive paste is applied, by screen printing, dried, and thereafter selectively exposed to light and developed, such that a first conductor layer (coil pattern) 12 (12a), i.e. an inner electrode, is formed, (see Kenta’s Col.7, line 65-67, Col.8, line 1-5, FIG. 1). Kenta further teaches the use of a glass frit having a softening point higher than the temperature at which sintering of Ag starts reduced the shrinkage of the photosensitive conductive paste when sintered and thus the difference in shrinkage between the insulation layer (that is, the photosensitive glass paste for forming an insulation layer) and the photosensitive conductive paste decreased (see Kenta’s Col.11, line 30-36).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, to have Kenta’s teaching in view of Chou, to have a sintered multilayer electronic component by reducing the shrinkage between the insulation layer and conductive paste layer for reducing the shrinkage defects.
Regarding claim 10 and 16, all the discussions above claim 1 and 2 are applicable for claims 9 and 15 respectively, wherein Kenta already teaches the multilayer electronic component, in addition, Kenta further teaches the inner electrode encloses the glass (as shown in the FIG.1, the photosensitive glass paste layer (insulation layer) 13 (13a) is selectively exposed to light and developed, such that a via hole 14 (14a) is formed at a predetermined position. In this way, a multilayer structure 30, which includes therein a coil 20 constituted by the coil patterns (conductor layers) 12 on different layers which are connected together through the via holes 14, is obtained, therefore, Kenta’s spiral inner coil electrode encloses an insulation glass layer 13 (13a) inside the coil i.e. electrode (see Kenta’s Col.8, line 12-42, FIG. 1).
Kenta further teaches a glass frit comprising a composition [Section 0026] and the corresponding as recited value of instant claim 10 and 16 are being presented in the following table,
Element
Claim 10 and 16 (mass%)
Kenta's teachings Glass frit B [TABLE 2]
Within/Overlapping Range
SiO2
15 to 90
46.7
Within the range
B2O3
10 to 50
14.0
Within the range
Al2O3
3 to 15
14.0
Within the range
KF:
10 to 30
13.3
Within the range
Kenta’s glass frit composition is incorporating within the as recited in the instant claim.
Kenta teaches using a glass frit having a softening point higher than the temperature at which sintering of the conductive powder starts, the glass frit, which does not melt when the sintering of the conductive powder starts, serves to reduce the firing shrinkage of the conductive powder, thereby reducing the firing shrinkage of the electrodes. As a result, for example, even when producing a multilayer electronic component including an inner electrode that is effective (see Keta’s Col. 2, line 40-42 and Col. 3, line 27-35). Kenta further teaches glass frit containing 15 to 80 mass % of SiO2, 10 to 20 mass % of B2O3, and 15 mass % or less of Al2O3 it is possible to unfailingly obtain a photosensitive conductive paste containing a glass frit having a softening point that is higher than the temperature at which sintering of the conductive powder starts, and, more preferably, a glass frit having a softening point of 560° C. or higher (see Keta’s Col. 3, line 41-49).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Kenta’s disclosed glass frit to obtain a photosensitive conductive paste containing a glass frit having a softening point that is higher than the temperature at which sintering of the conductive powder starts, to reduce the firing shrinkage of the conductive powder, thereby reducing the firing shrinkage of the electrodes.
Claims 5-6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo Kenta, et.al. [US10192650B2] (US version of WO2016076024A1, provided in the IDS) (Kenta hereafter) and in view of Joe Chou, et.al. [US20140035995A1] (Chou hereafter). An evidentiary reference, Toshiaki Ogiwara, [US8767378B2] (Toshiaki hereafter).
Regarding claim 5-6 and 12, all the discussions above claim 1 and 2 are applicable for claims 5-6 and 12 respectively, in addition, Kenta teaches examples of the conductive powders are, Ag powder (Ag powder I) having an average particle size of 4.0 µm and an Ag powder (Ag powder II) having an average particle size of 2.0 µm, see Kenta’s Col.4, line 32-34).
Kenta’s both Ag powder have a particle diameter incorporated within the as recited in the instant claim.
Although, Kenta is silent about the Ag powder is atomized or not, claim recites “atomized Ag powder” as an intended use without defining any structure implied by the atomized Ag powder and/or any specific atomization process. As Kenta teaches an Ag powder having a claimed diameter for conductive paste, therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, Kenta’s Ag powder would have expected to be used for the conductive paste, which is further supported by an evidentiary reference Toshiaki teaches an electrically conductive paste composition comprises a silver powders and binder resins (see Toshiaki’s Col.2, line 5-7) and a typical spherical or granular silver powders, obtained by liquid-phase reduction or atomization and the like (see Toshiaki’s Col.3, line 33-36).
Toshiaki is directed to a conductive paste using Ag powder, and therefore analogous to Kenta as well as to the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Toshiaki’s teaching of a typical spherical or granular silver powders atomization can be used for conductive paste to combine with Kenta for having a conductive paste using atomized Ag silver powder as available for an intended application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM-7:00PM (EST).
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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)2726297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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