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 .
This Office Action is in response to the amendments and arguments filed August 4, 2026 wherein claims 1-2 and 4-6 are currently pending.
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)(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 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato et al (US 2018/0346768).
With regards to claim 1, Sato teaches a conductive composition (abstract) that contains a metal particle that includes tin (abstract), a resin that includes a phenoxy resin (0111), and an organic acid (0123).
With regards to claim 2, Sato teaches the addition of lead-free solders (0007 and 0059).
With regards to claim 5, Sato is silent on the use of the composition as a conductive ink. However, 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. See MPEP 2111.02. Therefore, the addition of such statement adds no patentable weight.
With regards to claim 6, Sato teaches the composition to be used for a circuit (0003).
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.
Claims 1-2 and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizowaki et al (US 2016/0194525) in view of Sato et al (US 2018/0346768).
With regards to claim 1, Mizowaki teaches an electrically conductive adhesive (abstract) that includes a conductive metallic powder including Sn (tin) (abstract), a thermosetting resin (abstract) that includes polyimide-based resin (0023), and an organic acid (abstract).
Mizowaki does not teach the resin to include one of the claimed resin components.
The disclosure of Sato is adequately set forth in paragraph 4 above and is herein incorporated by reference. Sato teaches the motivation for using this resin to be because it provides a composition with excellent film properties such as formability and handleability (0040). Sato and Mizowaki are analogous in the art of conductive compositions. In light of the benefit above, it would be obvious to one skilled in the art prior to the effective filing date of the present invention to use the resin of Sato as the resin of Mizowaki, thereby obtaining the present invention.
With regards to claim 2, Mizowaki teaches the composition to contain a solder that is lead free (0003).
With regards to claim 4, Mizowaki teaches the volume resistivity to be 2X10-4 Ωcm (0050 table 3, example 4).
With regards to claim 5, Mizowak is silent on the use of the composition as a conductive ink. However, 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. See MPEP 2111.02. Therefore, the addition of such statement adds no patentable weight.
With regards to claim 6, Mizowaki teaches the composition to be used on electronic circuits (0003).
Response to Arguments
Applicant’s arguments, see pages 3-5, filed August 4, 2026, with respect to claims 1-2 and 4-6 under 35 USC 112 have been fully considered and are persuasive. The rejection of the above claims with respect to USC 112 has been withdrawn.
Applicant’s arguments, see pages 3-5, filed August 4, 2026, with respect to the rejection(s) of claim(s) 1-2 and 4-6 under 35 USC 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sato et al (US 20180346768).
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 JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763
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