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 .
The amendment filed 7/8/2026 has been entered. New claims 11-19 have been added. Claims 1-19 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claim 15 is objected to because of the following informalities: “comprises” or “is” or similar term should be inserted after “medium” and before “at least one” on line 2. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: “comprises” or “is” or similar term should be inserted after “medium” and before “at least one” on line 2. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: “comprises” or “is” or similar term should be inserted after “medium” and before “at least one” on line 2. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: “comprises” or “is” or similar term should be inserted after “medium” and before “at least one” on line 2. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 14-19 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. Claims 14 and 17 recite, “wherein the reducing agent comprises at least one compound selected from the group consisting of polyethylene glycol 200, polyethylene glycol 300, polyethylene glycol 400, polypropylene glycol 300 (triol type), polypropylene glycol 400 (diol type), polypropylene glycol 700 (diol type), and polypropylene glycol 4000 (triol type)” (emphasis added), however, it is unclear whether the limitations within the parentheses are meant to be incorporated into the claims. If the parenthetic expressions are meant to be part of the claimed invention, then it is also noted that the addition of the term “type” to the otherwise definite expression(s), e.g., diol or triol, extends the scope of the expression to render it indefinite. See Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955); also see MPEP § 2173.05(b). Further, claims 15, 16, 18, and 19 recite, “wherein the dispersion medium at least one compound selected from the group consisting of pentanol, hexanol, heptanol, octanol, decanol, dihydroterpineol, terpineol, and isobornyl cyclohexanol (MTPH) ethers, esters, acid amides, aliphatic hydrocarbons, aromatic hydrocarbons, aromatic hydrocarbons, and mercaptans having a cycloalkyl group having 5 to 7 carbon atoms” (emphasis added), however, it is first noted that similar to the above, it is unclear whether the limitation “MTPH” within the parentheses is meant to be incorporated into the claims, especially given that “MTPH” is not a general abbreviation for isobornyl cyclohexanol (IBCH) and instead is known to refer to “monoterpene phenol hydrogenated” – “a chemical description of how the substance is made” or more widely known to refer to a commercial brand name product TERUSOLVE MTPH, a proprietary product manufactured by Nippon Terpene Chemicals, Inc. (as evidenced by the attached Google Search results). Hence, if “MTPH” is meant to be encompassed by claims 15, 16, 18, and 19, then said claims would contain the trademark/trade name MTPH, and where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name.
It is also noted that although alternative expressions are permissive in the claims, they should be drafted in a format such that there is no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. In the instant case, given the first “and” on each line 3 before “isobornyl cyclohexanol (MTPH)” on lines 3-4, and the second “and” before “mercaptans” on each line 5, and particularly with no comma between “(MTPH)” and “ethers” in claims 16 and 19, it is unclear as to what compounds are meant to be encompassed by the alternative Markush group of the “selected from the group consisting of” limitation. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 13 recites, “The metal paste for bonding according to claim 1, wherein the dispersion medium comprises at least one compound selected from the group consisting of compounds other than the reducing agent,” however, given that claim 1 has been amended to recite, “the dispersion medium comprises at least one compound other than the reducing agent,” claim 13 does not further limit claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
NOTE: given that claim 13 does not further limit claim 1, Applicant is advised that should claims 14, 15, and/or 16 be found allowable, claims 17, 18, and/or 19, respectively, will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 103
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kawana (JP2020-020015A, please refer to the machine translation submitted with the IDS filed 8/25/2026 for the below cited sections) in view of Kikuchi (US2024/0157483A1) or Ishii (US2019/0019594A1).
Kawana teaches a metal paste for joining, a method for manufacturing a bonded body utilizing the metal paste, and the bonded body formed utilizing the metal paste (Paragraph 0009), wherein the metal paste comprises a combination of large flake-shaped copper particles having a volume average particle diameter of 2 to 50 µm (Paragraph 0038) as first copper particles (reading upon the claimed “copper microparticles” of instant claim 5 and “the copper microparticles are flake-shaped” as in instant claim 6), and small copper particles having a volume average particle size of 0.10 to 0.8 µm, preferably 0.15 to 0.8 µm (Paragraph 0047) as second copper particles (reading upon the claimed sub-microparticles of instant claim 5), with a content of the first copper particles being 10 to 70% by mass, based on the total mass of the metal particles (Paragraph 0045); a content of the second copper particles being 30 to 90% by mass, based on the total mass of the metal particles (Paragraph 0056) as well as based on the sum of the masses of the first and second particles (Paragraph 0057, as in instant claim 5); and a sum of a content of the first and second copper particles being 80 to 100% by mass, based on the total mass of the metal particles (Paragraph 0058; as in instant claim 5 and also reading upon the claimed “wherein the metal particles contain copper particles” as in instant claim 1).
Kawana teaches that the paste also comprises a dispersion medium including an organic compound(s) having a boiling point of 235°C or less and a weight-average molecular weight of 130 to 170 as a first dispersion medium (Abstract, Paragraphs 0060-0061), such as α-terpineol and butyl carbitol (Paragraph 0065); and polyethylene glycol (PEG) having a weight-average molecular weight of 200-600 as a second dispersion medium (Abstract, Paragraphs 0060 and 0067), such as polyethylene glycol 200, polyethylene glycol 300, and polyethylene glycol 400 (Paragraph 0069, reading upon the claimed “reducing agent” of instant claim 1 and particularly as in instant claims 14 and 17), given that the second dispersion medium hardly volatilizes at temperatures of at least 200°C, and hence when the bonding paste is dried at 50 to 180°C, the second dispersion medium remains in the bonding metal paste (Paragraph 0067; hence, the first dispersion medium or PEG 200-600 reading upon the claimed “dispersion medium comprises at least one compound other than the reducing agent” as in instant claim 1, and similarly, the claimed “dispersion medium comprises at last one compound selected from the group consisting of compounds other than the reducing agent” as in instant claim 13, and more particularly, the “at least one compound” as recited in instant claims 15-16 and 18-19). Kawana teaches that from the viewpoint of obtaining even greater effect in improving bonding strength, the content of the second dispersion medium (the claimed “reducing agent”) is preferably 4 parts by mass or more and 14 parts by mass or less, per 100 parts by mass of metal particles (Paragraph 0070), “for example, 4 to 14 parts by mass, 4 to 10 parts by mass, 4 to 7 parts by mass, 5 to 14 parts by mass, 5 to 10 parts by mass, 6 to 10 parts by mass, or 9 to 14 parts by mass per 100 parts by mass of metal particles” (Paragraph 0070), reading upon the claimed content(s) of the “reducing agent” as recited in instant claims 1 and 12).
Kawana teaches that the first copper particles may be treated with a specific surface treatment agent including organic acids as recited in Paragraph 0042, in the form of one molecular layer or more on the particle surface (Paragraph 0043) to achieve both dispersibility of the first copper particles and desorption of the surface treatment (Paragraph 0042), while the second copper particles may also be treated with a specific organic acid surface treatment agent as recited in Paragraph 0050, applied to the surface of the second copper particles in an amount of one to three molecular layers (Paragraph 0053); and that in addition, the metal paste may contain other components or additives, such as “wetting agents such as nonionic surfactants and fluorinated surfactants; defoaming agents such as silicone oils; and ion trapping agents such as inorganic ion exchangers,” in an amount as appropriate and within a range that does not hinder the effects of the invention (Paragraph 0077). Kawana further teaches a method of manufacturing a bonded body comprising the steps of preparing a laminate in which a first member, the metal paste as described above, and a second member are stacked in this order, and then sintering the metal paste (as in instant claim 7) while under the weight of the first member (Paragraph 0023; thus with no added pressure conditions as in instant claim 8); wherein a gas atmosphere during sintering may be an oxygen-free atmosphere (Paragraphs 0103-0104; as in instant claim 8) and wherein at least one of the first and second components may be a semiconductor element (Paragraph 0027, as in instant claim 9), thereby providing a bonded body comprising the first member, the second member, and a sintered body of the above metal paste bonding the first and second members as in instant claim 10.
Hence, Kawana teaches a metal paste, method for manufacturing a bonded body, and a bonded body as recited in instant claims 1, 5-10, and 12-19, except Kawana does not specifically teach that the other components or additives, particularly the ion trapping agents, include a coordinating compound that is at least one selected from the group consisting of an organic phosphorus compound and an organic sulfur compound as instantly claimed. However, it is again noted that Kawana clearly teaches that the metal paste may comprise ion trapping agents and although Kawana specifically recites “inorganic ion exchangers” as an example of said “ion trapping agents” in Paragraph 0077, Kawana does not limit the ion trapping agents to said inorganic agents such that one skilled in the art would have been motivated to utilize either inorganic trapping agents or organic trapping agents, with the latter often referred to in the art as metal chelating, sequestering, or complexing agents, and given that organic phosphorus and/or organic sulfur compounds having one or more free electron pairs are known metal/copper complexing agents (as evidenced by Vorlop, USPN 5,015,448, Entire document, particularly Col. 2, lines 40-Col. 6, line 14; or Ng, US2019/0177555A1, Paragraph 0049; see also the attached Google Search AI Overview results for “phosphorus compounds as copper ion trapping agents”), the claimed invention as recited in instant claims 1, 5-10, and 12-19 would have been obvious over the teachings of Kawana given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize any known ion trapping agent in the art, and that it is that prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Additionally, as discussed in the prior office action (and incorporated herein by reference, see particularly Paragraphs 7-11 and 15-17 of the Office Action dated 9/23/2025), Kikuchi teaches a similar metal paste composition as in Kawana, that is suitable for joining electronic components to form a joined body, such as in the production of a semiconductor device (e.g., as in Kawana), comprising first and second copper particles (e.g., as in Kawana) and a solvent such as polyethylene glycol (as in Kawana), wherein Kikuchi specifically teaches that the paste composition may further contain a phosphoric acid ester from the viewpoint of storage stability and to provide enhanced sinterability (Paragraph 0060), with examples thereof including those recited in Paragraph 0063, such as alkyl phosphates reading upon the claimed organic phosphorus coordinating compound as a reduction aid as recited in instant claims 1-3, and in a content of not less than 0.01 mass% and not greater than 2.0 mass% with respect to the amount of the paste composition (Paragraph 0064), thereby reading upon and/or suggesting a content as recited in instant claim 4.
Further, as also discussed in detail in the prior office action (and incorporated herein by reference), Ishii teaches a similar metal paste for joining metal components such as in producing a semiconductor device as in Kawana, wherein the paste includes metal fine particles (P1), particularly of copper as in Kawana, and a coating material (C) that coats at least a part of or the entire surface of the metal fine particles (P1) to limit sintering between the metal particles when heated to a temperature lower than or equal to the melting point of the bulk of the low melting point metal powder (P2) while when heated to a temperature greater than or equal to the melting point of the bulk of the low melting point metal powder (P2), the activating agent (A) decomposes and removes the coating material (C) from the surface of the fine metal particles (P1) (Paragraph 0055, see also Paragraph 18 of the Office Action dated 9/23/2025, which is incorporated herein by reference). Ishii teaches that the coating material (C) may be an inorganic compound (C1) and/or an organic compound (C2), wherein the organic compound (C2) is a compound having an atomic portion having a noncovalent electron pair of a functional group that adsorbs on the surface of the fine metal particles (P1) to produce a molecular layer that not only hinders inter-particle sintering but also enhances dispersibility of the metal fine particles, with suitable examples thereof recited in Paragraph 0059 including organic phosphorus compounds and organic sulfur compounds, including compounds reading upon the claimed “coordinating compound” as recited in instant claims 1-3 and in a content as recited in instant claim 4 (Paragraphs 0029 and 0059-0060).
Hence, given that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate an organic sulfur compound as recited in instant claim 1 and/or organic phosphorus compound as recited in instant claims 1-4 as an activating agent taught by Ishii and/or to enhance sinterability as taught by Kikuchi, into the metal paste composition taught by Kawana, particularly given that Kawana teaches that various additives such as ion trapping agents may be incorporated into the paste composition, the claimed invention as recited in instant claims 1-10 and 12-19 would have been obvious over the combined teachings of Kawana in view of Kikuchi or Ishii given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to combine prior art reference teachings to arrive at the claimed invention where there is some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference.
With respect to instant claim 11, as discussed in detail above, Kawana teaches that the dispersion medium includes an organic compound(s) having a boiling point of 235°C or less and a weight-average molecular weight of 130 to 170 as a first dispersion medium (Abstract, Paragraphs 0060-0061), such as α-terpineol and butyl carbitol (Paragraph 0065); and although Kawana does not specifically recite dihydroterpineol as instantly claimed, given that dihydroterpineol is known to have a boiling point of less than 235°C (e.g., around 210°C) with a molecular weight within the range of 130 to 170 (e.g., about 156 g/mol) as required by Kawana, and is a known functionally-equivalent dispersion medium in the art to the α-terpineol and/or butyl carbitol recited by Kawana (as evidenced by Hiratsuka, US2015/0069638A1, Paragraph 0032; or Nakamura, US2006/0197062A1, Paragraph 0094; or Mochizuki, JP2017228363A, see Paragraph 0067 of the attached machine translation), the Examiner takes the position that absent any clear showing of unexpected results, the claimed invention as recited in instant claim 11 would have been obvious over the teachings of Kawana in view of Kikuchi or Ishii given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Response to Arguments
Applicant’s arguments filed 7/8/2026 have been fully considered but are moot in view of the new grounds of rejection presented above.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 7/8/2026.
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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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