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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/14/2026 has been entered.
Response to Arguments
Applicant's arguments filed 1/14/2026 with respect to the 35 U.S.C. 103 rejections over Okada et al. (US 2018/0111190) and Yoshida et al. (US 2020/0122236) have been fully considered but they are not persuasive. Applicant’s arguments with respect to the 35 U.S.C. 103 rejection over Nishimoto (JP 2017-039990) has been fully considered and are persuasive in view of Applicant’s amendments to the claims. The rejection is withdrawn.
Regarding Okada, Applicant argues Okada does not specifically teach the claimed D/D50 ratio, nor does Okada simultaneously teach the packed bulk density and D/D50 ratio simultaneously. This argument is not persuasive. First, there is no requirement that a prior art reference must explicitly teach the claimed limitations. See MPEP 2144.01. Okada teaches a crystallite diameter and an average particle diameter. This is sufficient to implicitly teach a D/D50 ratio. The implied D/D50 ratio of Okada overlaps the claimed D/D50 ratio. This creates a prima facie case of obviousness which Applicant has not rebutted. See MPEP 2144.05 I. Second, the bulk density of Okada overlaps the claimed density, creating a prima facie case of obviousness which Applicant has not rebutted. See MPEP 2144.05 I.
Regarding Yoshida, Applicant argues Yoshida’s disclosure of a D/D50 ratio is broader than the claimed D/D50 ratio, Yoshida does not teach the claimed packed bulk density, and Yoshida’s does not teach the claimed BET specific surface area. However, Applicant concedes the prior art range overlaps the claimed range (see Remarks, p. 4). This creates a prima facie case of obviousness which Applicant has not rebutted. See MPEP 2144.05 I. As to bulk density, the bulk density of Yoshida overlaps the claimed density, creating a prima facie case of obviousness which Applicant has not rebutted. See MPEP 2144.05 I.
As to BET surface area, Applicant argues the examples of Yoshida do not teach the claimed surface area. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP 2123. The examples of Yoshida are not the exclusive disclosure of Yoshida. Applicant’s arguments are not persuasive and the rejection over Yoshida is maintained.
Applicant finally argues the prior art references do not teach or suggest rationale for selecting with the D/D50, packed bulk density, or BET surface area ranges to achieve improved performance when sintering copper powder. This argument is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., improved performance) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant presents the data of Table 1 in the specification to rebut the prima facie case of obviousness are insufficient. However, inventive examples in Table 1 have a D/D50 ratio outside the claimed range but meet the desired TMA 5% contraction temperature (see Ex. 8&9). This is clear evidence the claimed range is not necessary for achieving unexpected results because the data is not commensurate in scope with the claimed range. Further, the claimed range for BET surface area (2-7 m2/g) is not commensurate in scope with the data (which give a range of 2.30-5.16 m2/g). Objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02 (d). The evidence is therefore insufficient to rebut the prima facie case of obviousness.
In response to applicant's argument that the prior art does not recognize the advantages of selecting within the disclosed ranges, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The rejections over Okada and Yoshida are maintained.
New grounds of rejection have been entered in view of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Okada et al. (US 2018/0111190).
Regarding claim 1, Okada teaches a copper powder having a bulk density of 0.5-5.0 g/cm3 (¶ 23). Thus, the tap density (corresponding approximately to a packed density) is necessarily less than the bulk density, which overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. Okada also teaches a crystallite diameter on the (111) plane as being 80-300 nm (¶ 25), and an average particle diameter D50 of 1-100 μm (¶ 22). The ratio of crystallite diameter to average diameter is thus 0.0008 to 0.30, which overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. Okada also teaches a BET of 0.2-5.0 m2/g (¶ 24), which overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 3, the copper powder of Okada is obtained by electrolytic precipitation (see ¶¶ 62-63). One of ordinary skill in the art would expect the copper powder to be highly pure as a result, absent objective evidence to the contrary. See MPEP 2112.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Okada et al. (US 2018/0111190), as applied to claim 1, further in view of Komiyatani et al. (JP H11-3618).
Regarding claim 4, the limitations of claim 1 have been addressed above. Okada does not expressly disclose a hydrogen reduction loss of the copper powder. Komiyatani teaches a copper powder having a hydrogen reduction loss of 1.0% or less in order to suppress conduction resistance exhibit high conductivity (¶ 6). It would have been obvious at the effective time of filing for one of ordinary skill in the claimed invention to modify the copper powder of Okada according to the teachings of Komiyatani in order to obtain a copper powder exhibit high conductivity.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (US 2020/0122236).
Regarding claim 1, Yoshida teaches a copper powder having a tap density of 2-7 g/cm3 (¶ 35). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. Yoshida also teaches a crystallite diameter on the (111) plane as being 133-250 nm (¶ 36), and an average particle diameter of 1-10 μm (¶ 12). The ratio of crystallite diameter to average diameter is thus 0.0000133 to 0.25, which overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. The copper powder of Yoshida has a BET of 0.1-3 m2/g (¶ 35). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 3, Yoshida teaches the carbon content in the copper powder is 0.5% wt or less (¶ 35).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (US 2020/0122236), as applied to claim 1, further in view of Komiyatani et al. (JP H11-3618).
Regarding claim 4, the limitations of claim 1 have been addressed above. Yoshida does not expressly disclose a hydrogen reduction loss of the copper powder. Komiyatani teaches a copper powder having a hydrogen reduction loss of 1.0% or less in order to suppress conduction resistance exhibit high conductivity (¶ 6). It would have been obvious at the effective time of filing for one of ordinary skill in the claimed invention to modify the copper powder of Yoshida according to the teachings of Komiyatani in order to obtain a copper powder exhibit high conductivity.
Conclusion
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784