Detailed Office Action
Notice of Pre-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 .
Restriction/Election
Applicant’s election of Group II, claims 6 – 9 and 16 – 20, in the reply filed on 05/19/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1 – 5 and 10 – 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group I (a product) and Group III (a method), there being no allowable generic or linking claim.
Claim Rejections – U.S.C. § 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 6 – 9 and 16 – 20 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.
Claim 6 recites the limitation "the conductive material". There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the pin". There is insufficient antecedent basis for this limitation in the claim. Specifically, it is unclear whether this refers to one pin of the “pins” of the electronic element or something else. For purposes of examination, the former interpretation is taken.
Regarding claim 17, the unit of “g” is indefinite. “g” is a unit of mass, not force, wherein the measurement is directed to an adhesive force. For purposes of examination, the unit is interpreted as gram-force. The examiner notes that the proper unit for gram-force is “gf”. The examiner also notes that gram force is a non SI unit and that all patent applications should use metric SI units followed by/in addition to English system units or other units (See MPEP 608.01 IV)
Regarding claim 19, the phrase “rosin resin and derivatives thereof” is indefinite. The phrase is indefinite because the claim is not a Markush grouping but instead requires each of the components (i.e., a synthetic resin surfactant, an organic acid activator, etc). As such, it is not clear whether the phrase “rosin resin and derivatives thereof” requires rosin resin and every single derivative thereof to be included, or whether the phrase is requiring a rosin resin or derivative thereof.
Claims 7 – 9, 16, 18, and 20 are rejected by virtue of dependency.
Claim Rejections – U.S.C. §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 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.
Claims 6 – 9, 16, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maeda (US2008/0244900)
Regarding claim 6 and 9, Maeda teaches a bonding arrangement [Fig 1.]. The arrangement includes;
A base substrate (labeled “1” in Fig 1) with a plurality of electrodes (labeled “2”)
The electrodes can be pads [0049], meeting the claimed limitation of a plurality of pads
An electronic part with a plurality of electrodes (labeled “4” and “5”, Fig 1), meeting the claimed limitation of a plurality of electronic elements
The electrodes can be a portion of wiring, meeting the claimed limitation of the electronic element comprising pins [0049]
A bump (labeled “6” in Fig 1) between the electrodes/pads and electrodes/wiring, meeting the claimed limitation of a connection member between a pad and pin.
A flux (labeled “3” in Fig 1) with a metal powder dispersed inside (labeled “8” in Fig 3), meeting the claimed limitation of a conductive material in a bulk material of a flux.
Maeda teaches that the content of the metal powder can range from 1 – 9 vol% [0058] and teaches specific examples of 6 and 9 vol% [0082] such that the examples of Maeda anticipate the claimed range of conductive material within the bulk material.
Wherein the arrangement meets the broadest reasonable interpretation of a “device”, meeting claim 9.
Regarding claim 7, Maeda teaches the invention as applied in claim 6. Maeda shows that the orthogonal of the flux with metal powder (i.e. conductive material) substantially overlaps with the orthogonal of the pad [Fig 1] (see Fig 8, 0062 of instant invention as comparison).
Regarding claim 8, Maeda teaches the invention as applied in claim 6. Maeda teaches that the bump, interpreted as the claimed “connection member” can be a tin-silver based alloy [0052], meeting the claimed limitation.
Regarding claims 16 and 20, Maeda teaches the invention as applied in claims 6 and 9. Maeda teaches that the metal powder, interpreted as the conductive material dispersed in the flux, can be tin metal coated with silver [0060], meeting the claimed limitation of comprising tin metal.
Given that Maeda teaches specific examples within the claimed vol% range of 6% and 9%, and specifically teaches using tin metal, an ordinarily skilled artisan would at once envisage using tin metal coated with silver at a vol% within the claimed range.
“A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015)(MPEP 2131.02 III)
Claim Rejections – U.S.C. §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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda (US2008/0244900) as applied to claims 6 and 9 above.
Regarding claims 16 and 20, Maeda teaches the invention as applied in claims 6 and 9. Maeda teaches that the metal powder, interpreted as the conductive material dispersed in the flux, can be tin metal coated with silver [0060], meeting the claimed limitation of comprising tin metal. Maeda teaches that the content of the metal powder can range from 1 – 9 vol% [0058].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken selected tin metal coated with silver as the metal powder in an overlapping vol% range in Maeda to achieve predictable results. Given Maeda expressly teaches metal tin coated with silver as an option for the metal powder and that the vol% range of metal powder within the flux is in a range of 1 – 9vol%, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results.
With regards to the overlapping ranges taught, “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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Claims 17 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda (US2008/0244900) as applied to claim 6 above, and further in view of Yasojima (JP2020/116637, using espacenet translation).
Regarding claims 17 – 18, Maeda teaches the invention as applied in claim 6. Maeda acknowledges that the viscosity should be controlled for coating purposes [0017]. Maeda also shows that the tack strength should allow the flux to stick [Fig 1]. However, Maeda does not expressly disclose a viscosity range or tack strength (i.e., adhesive force) range for the flux.
Yasojima teaches a bonding paste containing a metal powder and a flux for soldering [0013] electronic components [0116] by forming bumps [0001]. Yasojima teaches that the viscosity of the bonding paste should be 100 to 250 Pa-s, which overlaps with the claimed range, so that the metal powder will not separate from the flux while in storage and will also have adequate coatability onto the substrate [0067]. Yasojima teaches that the tacking force (adhesive force) should be at least 1000 mN [0068] (with examples of up to at least 1500 mN [0093])(~102 – 153 gf), which overlaps with the claimed range. Yasojima teaches that the tacking force should be at least 1000 nM so that the bonding paste does not slide off the substrate/surface [0068]. Yasojima also states that there is no particular upper limit unless removing the print from the mask becomes difficult and that the tacking strength can upwards of 100 N [0068].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the viscosity of the flux of Maeda to a range of 100 – 250 Pa-s and the adhesive force of the flux of Maeda to a range of 1000 nM or more, as taught by Yasojima. Maeda and Yasojima are directed to the same field of endeavor of solder bonding electronic components using a composition containing a flux and metal powder and as such, an ordinarily skilled artisan would have considered the teachings of Yasojima to be pertinent to Maeda. Moreover, Maeda does not expressly limit the viscosity or adhesive force and therefore an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Yasojima to Maeda. Lastly, an ordinarily skilled artisan would have been motivated to apply the teachings because Yasojima teaches that the viscosity range ensures the metal powder will not separate from the flux in storage while still having adequate coatability and the adhesive strength range ensures the bonding composition will not slide off the substrate/surface [0068].
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Maeda (US2008/0244900) as applied to claim 6 above, and further in view of Yang (CN103286477, using espacenet translation).
Regarding claim 19, Maeda teaches the invention as applied in claim 6. Maeda teaches that the flux contains a resin/modified resin and active acid component [0056], meeting the claimed limitation of rosin/derivative and organic acid activator. Maeda teaches that the flux also contains alcohol and benzene [0082], meeting the claimed limitation of solvent/co-solvent. Maeda teaches that the flux can contain polyamide resin [0055], which meets the broadest reasonable interpretation of a synthetic resin surfactant. Maeda does not expressly teach a film-forming agent or corrosion inhibitor.
Yang teaches a lead-free solder flux that leaves low residue [0008] for electronic components [0002]. Yang states that the flux contains an activator, surfactant, film-forming agent, solubilizer, a corrosion inhibitor, and water as a solvent [0009]. Yang teaches that the film-forming agent can be a polyethylene glycol [0017] and the corrosion inhibitor is nitrogen-containing heterocyclic compound [0019]. Yang teaches that the film-forming agent creates a dense protective film around the solder joint to prevent further oxidation of the solder and improve the wetting effect [0021].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have included a film-forming agent and corrosion inhibitor to the flux of Maeda. Yang and Maeda are directed to the same field of endeavor of solder bonding electronic components using a flux. Moreover, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results. An ordinarily skilled artisan would have been motivated to including a film-forming agent because Yang teaches that the film-forming creates a dense protective film around the solder joint to prevent further oxidation of the solder and improve the wetting effect. Moreover, a corrosion inhibitor inhibits corrosion which would be appreciated by a person of ordinary skill in the art with the flux of Maeda because Maeda expressly acknowledges that oxide is not desired [Abstract].
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2018/0236609 – hybrid flux with low metal powder volume in overlapping range
US2002/0185309 – Bonding semiconductor device with bump and flux paste. Flux paste containing a metal powder content of 1 – 20 vol%
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
Prosecution Insights