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 .
Election/Restrictions
Applicant’s election without traverse of Group I: claims 49-61 in the reply filed on 3/6/2026 is acknowledged.
Claims 62-68 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/6/2026.
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.
Claims 50-52 and 61 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 50, the phrases "preferably” and “more preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Claim 51 recites the limitation “SnSb alloy (e.g. 95% Sn, 5% Sb),” which renders the claim indefinite. The use of parentheses around the recited limitation “e.g. 95% Sn, 5% Sb” makes it unclear whether the limitation with in the parentheses is required or not. Additionally, the phrase “e.g.” (i.e., for example) renders the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d). Furthermore, “95% Sn, 5% Sb” is infinite because it does not specify if the percentages are weight percentages or atomic percentages.
Claim 51 recites the limitation “Innolot alloy (Sn-Ag3.7Cu0.65Bi3.0Sb1.42Ni0.15),” which renders the claim indefinite. The use of parentheses around the recited limitation “Sn-Ag3.7Cu0.65Bi3.0Sb1.42Ni0.15” makes it unclear whether the limitation with in the parentheses is required or not. Furthermore, “Sn-Ag3.7Cu0.65Bi3.0Sb1.42Ni0.15” is infinite because it does not specify if the percentages are weight percentages or atomic percentages.
Regarding claim 52, the phrase "preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 61 recites “Sn20%In2%Ag” which renders the claim indefinite, because the limitation does not specify if the percentages are weight percentages or atomic percentages.
Claim Rejections - 35 USC § 102
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)(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.
Claim(s) 29 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Liu et al. (US 2011/0220704), as cited in the IDS dated 11/1/2023, hereinafter “Liu.”
Regarding claim 29, Liu teaches a solder material for use in electronic assembly ([0022], Fig. 1), the solder material comprising solder layers, which may be made of SnAg or SnAgCu ([0027]), a core layer comprising a core material, which may be made of Ag ([0028]), the core layer being sandwiched between the solder layers (Fig. 1), wherein the thermal conductivity of the core material (e.g., Ag) is greater than the thermal conductivity of the solder (e.g., SnAg or SnAgCu).
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.
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.
Claim(s) 50, 52, and 61 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 2011/0220704).
Regarding claim 50, Liu anticipates the limitations recited in claim 1, as detailed above. Liu further teaches wherein the thickness of the solder layers is 5 µm or more, for example 5-50 µm ([0026]), which overlaps with the instantly claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05.
As to claim 52, Liu anticipates the limitations recited in claim 1, as detailed above. Liu further teaches wherein the thickness of the solder layers is 5 µm or more, for example 5-50 µm ([0026]), and wherein the thickness of the core layer may be between 2 and 10 times as thick as the solder layers ([0023]), which overlaps with the instantly claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05. Liu further teaches that the core layer may comprise one or more of Cu and Ag ([0028]).
With respect to claim 61, Liu anticipates the limitations recited in claim 1, as detailed above. Liu teaches that the core material may be absent copper, such as a core material made of Ag ([0028]), which reads on claim 61.
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 49-50, 52, and 61 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 29 and 37 of copending Application No. 17/755,193 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 29 and 37 of the reference application discloses a solder material which closely reads on the limitations set forth in the instant claims 49-50 and 52. Specifically regarding the instant claim 61, claims 29 and 37 of the reference application discloses that the solder material may be absent Sn20%In2%Ag and the core material may be absent copper.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 53-60 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 53, the prior art fails to disclose or fairly suggest the solder material as recited. In particular, the closest prior art, Liu (US 2011/0220704), teaches a solder material for use in electronic assembly ([0022], Fig. 1), the solder material comprising solder layers, which may be made of SnAg or SnAgCu ([0027]), a core layer comprising a core material, which may be made of Ag ([0028]), the core layer being sandwiched between the solder layers (Fig. 1), wherein the thermal conductivity of the core material (e.g., Ag) is greater than the thermal conductivity of the solder (e.g., SnAg or SnAgCu). However, Liu does not teach or adequately suggest wherein the core layer comprises two or more core sublayers separated by one or more further solder layers, the two or more core sublayers formed of core material, the core material of one sublayer having a different coefficient of thermal expansion to the core material of another sublayer, as required by claim 53. Thus, claim 53 is distinct over the teachings of the prior art. Claims 54-60 further limit the subject matter recited in claim 53 and are thus also distinct over the teachings of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at (571)272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734
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