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
Claims 1-15 are examined in the office action.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains phrases which can be implied (See line 1) and has more than one paragraph (sentence is separated by paragraph markers).. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities: The tilde, "~", on page 3 of the specification should be replaced with "-" or "to" as tilde represents approximately or equivalent. Appropriate correction is required.
Information Disclosure Statement
In nonprovisional applications, applicants and other individuals substantively involved with the preparation and/or prosecution of the application have a duty to submit to the Office information which is material to patentability as defined in 37 CFR 1.56. The provisions of 37 CFR 1.97 and 37 CFR 1.98 provide a mechanism by which patent applicants may comply with the duty of disclosure provided in 37 CFR 1.56 using an IDS. The IDS may be filed using form PTO/SB/08. Applicants and other individuals substantively involved with the preparation and/or prosecution of the patent application also may want the Office to consider information for a variety of other reasons; e.g., to make sure that the examiner has an opportunity to consider the same information that was considered by these individuals, or by another patent office in a counterpart or related patent application filed in another country. See MPEP § 609.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claim 1 is objected to because of the following informalities: The tilde (see line 2) should be replaced with "-" or "to" as tilde represents approximately or equivalent. Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-4 and 14-15 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 claims 1-4 and 14-15:
Claim 1 recites the limitation "the proportion of powder particles with a diameter of 8 μm or more" "the wettability" in lines 2-4. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "the proportion of powder particles with a diameter of less than 1 μm" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "the oxygen concentration of the powder particles" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the content" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the C.V. value" in line 1. There is insufficient antecedent basis for this limitation in the claim. In addition, the term should be defined at the initial instance.
Claim 15 recites the limitation "the surfactant" in line 1. There is insufficient antecedent basis for this limitation in the claim. In addition, the phrase "one kind" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "one kind"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). Specifically, the term “kind” can mean category or variety thereby making it unclear as to what is encompassed by the various categories or varieties as required by the instant claim.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 depends on claim 14 which depends on claim 1. Claim 15 requires that “the surfactant is one kind selected from the group” and recites members of the group. However, as neither claim 1 or 14 recites the presence of a surfactant, the limitation directed to the surfactant makes the instant claim of being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
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.
Claims 1-11 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0387292 A1 of Shirakawa (US’292).
Regarding claims 1 and 2, US 2021/0387292 A1 of Shirakawa (US’292) teaches “a flux and a solder paste capable of improving water washability and printability” “a solder paste comprising a solder material and a soldering flux (flux)” “The solder paste of the present invention comprises a solder material and the flux of the present invention” “The solder material preferably contains Sn or a Sn-based alloy. The Sn or the Sn-based alloy may comprise unavoidable impurities.” “The form of the solder material is preferably a particulate form, more preferably a powdery form, from the viewpoint of excellent fluidity.” “When the solder material is particulate, the solder material preferably has a size (particle size distribution) corresponding to symbols 1 to 8 in Classification of Powder Size (Table 2) in JIS Z 3284-1: 2004, more preferably a size (particle size distribution) corresponding to symbols 4 to 8, and further preferably a size (particle size distribution) corresponding to symbols 5 to 8. Thus, soldering to fine parts is possible.” {abstract, [0001]-[0002], [0007]-[0017], [0047]-[[0067]}. One skilled in the art recognized that Powder Size 8 in JIS Z 3284-1 ranges from 2 to 8 microns for 80% or more of the powder, those below 2 microns being 10% or under and those above 8 microns with 1% or under above 8 microns. The claimed ranges of the particle size of the instant alloy of the instant claims overlap or lie inside the ranges of the particle size of the prior art. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. Therefore, it 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 to use finer particle size such as Type 8 since the prior art teaches that finer particle size distribution is preferable as that enables soldering to fine parts.
Regarding the limitation of “for connection pins”, it is interpreted as a preamble statement reciting purpose or intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See MPEP § 2111.02 II. In the instant case, the product of the prior art would be capable of performing the intended use as recited in the preamble since it teaches the same structure as what is recited in the instant claim, a solder paste comprising solder powder and flux.
Regarding claim 3, prior art teaches “The solder material preferably contains Sn or a Sn-based alloy. The Sn or the Sn-based alloy may comprise unavoidable impurities. The Sn may be, for example, Sn having a purity of 99.9% or more (3N material), Sn having a purity of 99.99% or more (4N material), or Sn having a purity of 99.999% (5N material). Examples of the Sn-based alloy include alloys having compositions such as Sn—Ag alloys, Sn—Cu alloys, Sn—Ag—Cu alloys, Sn—Ag—Cu—Ni—Co alloys, Sn—In alloys, Sn—Bi alloys, Sn-Sb alloys, and Sn-Pb alloys, and alloys obtained by adding As, Bi, Sb, Pb, Ag, Cu, In, Ni, Co, Ge, P, Fe, Zn, Al, Ga, and the like to the alloys having the above compositions. The content of Sn in the Sn-based alloy is not particularly limited and can be, for example, more than 40% by mass.” [0048]-[0050]. The prior art teaches that Sn purity can be 5N. As the prior art teaches high purity, it 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 to ensure that the purity of the solder material is high as one skilled in the art recognizes that impurities can have detrimental effects to the performance of the solder material and its function.
Regarding claim 4, prior art teaches [0063] “In this embodiment, the mass ratio of the content of the solder material to the content of the flux (solder material: flux) may be, for example, 95% by mass of solder material: 5% by mass of flux to 5% by mass of solder material: 95% by mass of flux, preferably 95% by mass of solder material: 5% by mass of flux to 85% by mass of solder material: 15% by mass of flux.” thereby reading on the instant claimed limitations. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding claim 5, prior art teaches [0020]-[0046] “The flux of this embodiment comprises an organic acid, a solvent, and polyoxyethylene behenyl alcohol (behenyl alcohol ethylene oxide adduct) having an average number of moles of ethylene oxide added of 7 to 40 mol, and thus the water washability and the printability can be improved.” “The flux may contain a resin excluding the above-described ethylene oxide adducts.” “The flux preferably comprises one or more selected from the group consisting of a rosin-based resin, an amine, an amine hydrohalide, and an organic halogen compound, more preferably an amine hydrohalide, and further preferably an amine and an amine hydrohalide.” “The flux may contain a thixotropic agent.” thereby reading on the instant limitations.
Regarding claim 6, prior art teaches [0038] that its flux can have “diethanolamine”, and “triethanolamine” thereby reading on the instant limitations.
Regarding claim 7, prior art teaches [0039] “The content of the amine is, for example, 0 to 65% by mass, based on the whole of the flux, and preferably 20 to 65% by mass, more preferably 30 to 55% by mass, from the viewpoint of even better water washability and printability in good balance.” thereby reading on the instant limitations.
Regarding claims 8 and 9, prior art teaches [0020] “The flux of this embodiment comprises an organic acid, a solvent, and polyoxyethylene behenyl alcohol (behenyl alcohol ethylene oxide adduct) having an average number of moles of ethylene oxide added of 7 to 40 mol” “[0040] The flux may contain an organic halogen compound in order to improve the activity.” thereby reading on the instant limitations.
Regarding claim 10, prior art teaches [0040] “The flux may contain an organic halogen compound in order to improve the activity. The organic halogen compound here does not include the amine hydrohalide described later. Examples of the organic halogen compound include trans-2,3-dibromo-2-butene-1,4-diol, 2,3-dibromo-1,4-butanediol, 2,3-dibromo-1-propanol, 2,3-dichloro-1-propanol, 1,1,2,2-tetrabromoethane, 2,2,2-tribromoethanol, pentabromoethane, carbon tetrabromide, 2,2-bis(bromomethyl)-1,3-propanediol, meso-2,3-dibromosuccinic acid, chloroalkanes, chlorinated fatty acid esters, n-hexadecyltrimethylammonium bromide, triallyl isocyanurate hexabromide, 2,2-bis[3,5-dibromo-4-(2,3-dibromopropoxy)phenyl]propane, bis[3,5-dibromo-4-(2,3-dibromopropoxy)phenyl] sulfone, ethylenebispentabromobenzene, 2-chloromethyloxirane, HET acid, HET anhydride, and bisphenol A bromide type epoxy resins.” thereby reading on the instant limitations.
Regarding claim 11, prior art teaches [0042] “2-pipecoline hydroiodide, cyclohexylamine hydroiodide” thereby reading on the instant limitations.
Regarding claim 13, prior art teaches [0028] “The flux contains a solvent. Examples of the solvent include water, alcohol-based solvents, glycol-based solvents, glycol ether-based solvents, and terpineols.” [0030] “The flux may contain an ethylene oxide adduct other than the above behenyl alcohol ethylene oxide adduct (another ethylene oxide adduct). Examples of another ethylene oxide adduct include polyoxyethylene behenyl alcohol having an average number of moles of ethylene oxide added of less than 7 mol, alkyl alcohol ethylene oxide adducts (for example, a cetyl alcohol ethylene oxide adduct and a stearyl alcohol oxide adduct), a resorcinol ethylene oxide adduct, and polyethylene glycol.” thereby reading on the instant limitations.
Regarding claim 14, prior art teaches that the powder size can be type 8 which would read on the CV of the instant claim.
Regarding claim 15, prior art teaches that [0028] “The flux contains a solvent. Examples of the solvent include water, alcohol-based solvents, glycol-based solvents, glycol ether-based solvents, and terpineols. Examples of the alcohol-based solvents include isopropyl alcohol, 1,2-butanediol, isobornyl cyclohexanol, 2,4-diethyl-1,5-pentanediol, 2,2-dimethyl-1,3-propanediol, 2,5-dimethyl-2,5-hexanediol, 2,5-dimethyl-3-hexyne-2,5-diol, 2,3-dimethyl-2,3-butanediol, 1,1,1-tris(hydroxymethyl)ethane, 2-ethyl-2-hydroxymethyl-1,3-propanediol, 2,2′-oxybis(methylene)bis(2-ethyl-1,3-propanediol), 2,2-bis(hydroxymethyl)-1,3-propanediol, 1,2,6-trihydroxyhexane, bis[2,2,2-tris(hydroxymethyl)ethyl] ether, 1-ethynyl-1-cyclohexanol, 1,4-cyclohexanediol, 1,4-cyclohexanedimethanol, erythritol, threitol, guaiacol glycerol ether, 3,6-dimethyl-4-octyne-3,6-diol, and 2,4,7,9-tetramethyl-5-decyne-4,7-diol. Examples of the glycol-based solvents include 1,3-butylene glycol, phenyl glycol, and hexylene glycol. Examples of the glycol ether-based solvents include diethylene glycol mono-2-ethylhexyl ether, ethylene glycol monophenyl ether, 2-methylpentane-2,4-diol, diethylene glycol monohexyl ether, diethylene glycol dibutyl ether, triethylene glycol monobutyl ether, hexyl diglycol, and tetraethylene glycol dimethyl ether.” thereby reading on the instant limitations.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0387292 A1 of Shirakawa (US’292), and further in view of JP 2021/016892 A of Otoshi and its English machine translation (JP’892).
Regarding claim 12, over US 2021/0387292 A1 of Shirakawa (US’292) does not teach the presence of “the iodine compound is either 2-lodobenzoic acid or 3,5-diiodosalicylic acid” as recited in the instant claim. In the same field of endeavor, JP 2021/016892 A of Otoshi and its English machine translation (JP’892) teaches [0030]-[0031] “The flux can contain an activator in addition to the solvent.” “Examples of the activator include organic acids and halogen compounds.” “Examples of the halogen compound include bromine compounds such as 2-bromo-n-hexaneic acid and dibromobutenediol; and iodine compounds such as 2-iodobenzoic acid and 3,5-diiodosalicylic acid.” Therefore, it 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 to take the flux of US’292 and add “iodine compounds such as 2-iodobenzoic acid and 3,5-diiodosalicylic acid” as suggested by JP’892. Doing so would be advantageous to remove oxides that form on soldering surfaces enabling an effective solder.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH HENDRICKS can be reached at (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
Prosecution Insights