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 1-5 are examined in the office action.
Drawings
The drawings are objected to because the single view that is used in the application to illustrate the claimed invention has been numbered and has the abbreviation “FIG.” See MPEP § 608.02 V. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
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 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, 4 and 5 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by JP 2006-167802 A of Saito and its English machine translation (JP’802).
Regarding claims 1, 2 4 and 5, JP 2006-167802 A of Saito and its English machine translation (JP’802) teaches [0001]“a solder paste used for mounting an electronic component on a printed wiring board, and more particularly to a solder paste using a lead-free solder.” [0007] “a solder paste comprising a flux and a solder powder, by blending a specific amount of a carboxylic acid derivative (A) having a specific structure in the flux” [0014] “The solder paste comprises 5-20 wt.% of a flux (F) containing a carboxylic derivative (A) obtained by subjecting a compound (a1) having two or more hydroxyl groups to a ring-opening half-esterification reaction with a cyclic anhydride (a2) having a 6-carbon ring structure, and 80-95 wt.% of a solder powder (M).” [0025] “The flux (F) used in the solder paste of the present invention may further contain a resin, an activator, an organic halogen compound, a thixotropy-imparting agent (hereinafter abbreviated as a thixotropic agent), a solvent, an antioxidant, a rust inhibitor, a chelating agent, a leveling agent, an antifoaming agent, a dispersant, a delustering agent, a colorant, and the like, depending on the required performance and the like. Examples of the resins include natural resins and synthetic resins, and examples of the natural resins include rosin-based resins such as natural rosin, disproportionated rosin, polymerized rosin, and hydrogenated rosin. Examples of the synthetic resin include polyester resins, polyurethane resins, silicone resins, epoxy resins, oxetane resins, and acrylic resins. The resin used in the present invention may be used alone or in combination of two or more kinds thereof. When the resin is blended, it is usually blended in the flux (F) in a proportion of 0 to 70% by weight.” [0029] “Examples of the thixotropic agent include polyolefin-based waxes such as castor wax (hydrogenated castor oil); aliphatic acid amides such as m-xylylenebis stearic acid amide; substituted-urea waxes such as N-butyl-N′-stearylurea; polymer compounds such as polyethylene glycol, polyethylene oxides, methylcellulose, ethylcellulose, and hydroxyethylcellulose; and inorganic particles such as silica particles and kaoline particles. Preferred examples thereof include m-xylylenebis stearic acid amide and hexamethylene bisstearic acid amide. The thixotropic agent may be used alone or in combination of two or more thereof. When the thixotropic agent is blended, it is usually used in a proportion of 0.1 to 30% by weight in the flux (F).” thereby anticipating the recited limitations of instant claims 1 and 5. {abstract, [0001]-[0032], claims 1-3}
The prior art further teaches the solder paste having the flux having the having specific compositions wherein a specific example, Example 7 in Table 1, that lies within the claimed compositional range of the instant claims thereby anticipating the alloy of the instant claims. Specifically, Example 7 has, in parts by weight, of the flux, 30.0 Pine Crystal KE-604 hydrogenated rosin, 8.0 XBSA which is m-xylylene bis stearic acid amide (which corresponds to the thixotropic agent represented by General Formula (1) of instant claim), 4.5 hydrogenated castor oil, 4.0 (2.0 +2.0) of activator, 24.5 solvent. A specific example in the prior art which is within a claimed range anticipates the range. “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) See MPEP § 2131.03 I.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2006-167802 A of Saito and its English machine translation (JP’802).
Regarding claim 3, Example 7 of JP 2006-167802 A of Saito and its English machine translation (JP’802) teaches that it has 30.0 Pine Crystal KE-604 hydrogenated rosin whereas instant claim requires 1 to 20%. However, the prior art teaches [0029] “Examples of the thixotropic agent include polyolefin-based waxes such as castor wax (hydrogenated castor oil); aliphatic acid amides such as m-xylylenebis stearic acid amide ; substituted-urea waxes such as N-butyl-N ′ - stearylurea; polymer compounds such as polyethylene glycol, polyethylene oxides, methylcellulose, ethylcellulose, and hydroxyethylcellulose; and inorganic particles such as silica particles and kaoline particles. Preferred examples thereof include m-xylylenebis stearic acid amide and hexamethylene bisstearic acid amide. The thixotropic agent may be used alone or in combination of two or more thereof. When the thixotropic agent is blended, it is usually used in a proportion of 0.1 to 30% by weight in the flux (F).” Therefore, the claimed ranges of the thixotropic agent of the instant alloy of the instant claims overlap or lie inside that of the alloy 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.
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.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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