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 .
Election Acknowledged
Applicant's election with traverse of Group I (claims 1-6) and Species I-B (claims 1 and 4-6) in the reply filed on 07/21/2026 is acknowledged. The traversal is on the grounds that the inventions are not independent or distinct, that the inventions and species do not induce a serious search and/or examination burden, and that the Examiner made merely conclusory statements with respect to search burden.
This is not found persuasive because the restriction provides multiple reasons explaining why products and methods are distinct. Products are not defined by their method of manufacture and are rendered distinct if the product can be produced by a method of manufacture different from the claimed method, as stated in the restriction.
With respect to search burden and invention groupings, searching a product does not require a search of how that product is made or deploying search terms specific to method of manufacture. Furthermore, methods and products are historically classified in different areas of the classification scheme. Additionally, non-prior art issues, such as those under 35 U.S.C. 112(f), for example, apply to methods but are inapplicable to product claims.
With respect to search burden and species groupings, the particular compositions diverge in makeup and proportion. The composition of claim 2, for instance, contains proportions and components that differ from the compositional makeup recited in claim 4. Claims are examined as a whole. A search for one species does not require a search for the other species due to their unique compositions. The fact that there are overlapping components in each species does not equate to lack of a search burden, as it assumes that a single search will cover all species.
The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
Claims 1-20 are pending. Of the pending claims, claims 1 and 4-6 are presented for examination on the merits. Claims 2, 3, and 7-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 1, 4, and 6 are objected to because of the following informalities:
With respect to claims 1 and 6, the formulas for AgCu (Ag10Cu90, Ag95Cu5, and Ag23Cu77) are not properly formatted. The numbers should be in subscript form.
With respect to claim 5, there is a minor grammatical error in the clause “wherein the composition further comprised of” (line 2). It is believed that the intended phrase is either “wherein the composition further is comprised of” or “wherein the composition further comprises.” Appropriate correction is required.
Claim Rejections - 35 USC § 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 4 and 5 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.
Regarding claim 4, the limitation directed to the “50% of a solution of 5% aqueous hydroxyethyl cellulose” is indefinite because the solution lacks a unit of measure. It is unclear whether the solution is percent by volume or weight/mass. Because the units for the proportions of AgCu nanoparticles and ethylene glycol are recited in weight percent, the solution will also be interpreted as being weight percent. However, appropriate correction is still required.
Regarding claim 5, the claim is likewise rejected, as it incorporates all limitations of claim 4.
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.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Robinson et al., “Silver—Copper Alloy Nanoinks for Ambient Temperature Sintering,” Langmuir, 2022, 38, pp. 5633-5644 (“Robinson”).
Regarding claims 1 and 6, Robinson discloses bimetallic silver-copper alloy nanoinks with room temperature sintering properties (bimetallic sinterable AgCu alloy composition ink fomulation). Abstract.
The nanoink contains AgCu bimetallic nanoparticles that have compositions containing varied amounts of Ag and Cu. Page 5634 – Results and Discussion Section – Bimetallic Composition. Example AgCu compositions are Ag86Cu14, Ag55Cu45, and Ag23Cu77 (page 5635 – Figure 2), which fall within the claimed range.
The AgCu bimetallic nanoparticles have example sizes of 8.2 nm and 9.9 nm (pp. 5635-5636 – Size and Morphology – bridging paragraph), which fall within the claimed range.
The ink contains ethylene glycol and contains 30 wt.% nanoparticles (page 5634 – Ink/Paste Formulation section), which falls within the claimed range.
A specific example in the prior art that falls within claimed ranges anticipates a claimed range. MPEP § 2131.03(I). Since Robinson discloses specific numerical values that fall within the claimed ranges, Robinson anticipates the claimed ranges.
Regarding claims 4 and 5, Robinson discloses a nanopaste composition containing 30 wt.% AgCu nanoparticles, 50 wt.% of 5% hydroxyethyl cellulose (aqueous), and 20 wt.% ethylene glycol. Page 5634 – Ink/Paste Formulation section.
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.
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.
Claims 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0212413 (A1) (also WO 2022/071300 (A1)) to Maeda et al. (“Maeda”) in view of US 2014/0308158 (A1) to Maekawa et al. (“Maekawa”).
US 2023/0212413 (A1) is a pre-grant publication of U.S. appl. ser. no. 18/173,773, which is a continuation of PCT application PCT/JP2021/035589, published by WIPO as WO 2022/071300 (A1). The pre-grant publication will serve as an equivalent of and the translation for the WIPO publication.
Regarding claims 1 and 6, Maeda is directed to a conductive laminate that includes a base material and a conductive ink provided on the base material. Abstract; para. [0002]. The conductive ink is a metal particle ink (ink formulation composition). Para. [0068]-[0070].
The metal particle ink contains metal particles containing a base metal, e.g., copper, and a noble metal, e.g., silver. Para. [0072]. The metal particles are present in an amount of 10% by mass to 90% by mass of the metal particle ink (para. [0076]), which overlaps the claimed range (at least 25% by weight).
The average particle diameter of the metal particles is 10-500 nm (para. [0073]), which overlaps the claimed range (2 nm to 15 nm).
The metal particle ink contains a dispersion medium that may include ethylene glycol. Para. [0091], [0092], [0100].
Maeda teaches that the metal particles may contain copper (Cu) and silver (Ag) (para. [0072]), but does not disclose a particular composition.
Maekawa is directed to a solid metal alloy. Para. [0001]. A particular alloy of interest is a silver and copper alloy particles for use in electrically conductive paste and ink. Para. [0003]. The AgCu alloy contains copper in the range of 0.1-99.94% by weight (bimetallic AgCu alloy) (para. [0193]), which encompasses the claimed range of Ag10Cu90 to Ag95Cu5.
The silver-copper alloy particle preferably has a particle diameter of 50 nm or less and more preferably 25 nm or less (para. [0210]), which overlaps the claimed range. This small size lowers the sintering temperature and is useful in electrically conductive pastes and the like (sinterable alloy). Para. [0210].
A particular advantage of silver-copper alloy is that oxidation susceptibility is lowered. Maekawa at para. [0062]. It would have been obvious to one of ordinary skill in the art to have utilized the silver-copper alloy particles of Maekawa in the metal particle ink of Maeda because of their ability to easily consolidate (melt and sinter) as well as resist oxidation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANESSA T. LUK whose telephone number is (571)270-3587. The examiner can normally be reached Monday-Friday 9:30 AM - 4:30 PM ET.
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, Keith D. Hendricks, can be reached at 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VANESSA T. LUK/Primary Examiner, Art Unit 1733
September 15, 2026
Prosecution Insights