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/Restrictions
Applicant’s election without traverse of Group I, Claims 1-6 in the reply filed on 6/3/26 is acknowledged.
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.
Claim 4 is rejected under 35 U.S.C. 112(b) 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.
With respect to claim 4, limitations “a proportion of coarse solder particles having a number-based particle diameter that is 1.25 times or more greater than the number average particle diameter in the solder particles is 0.5% or less” are ambiguous because it is unclear what proportion is being compared and what is meant by “coarse” and “number-based”? The relative term ‘coarse’ is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the limitation. Similarly, it is confusing what is implied by “number-based particle diameter”? The specification repeats the same language without providing any guidance. Therefore, the recited vague language fails to clearly set forth the scope of the claims, rendering them indefinite. Example 1 in the specification describes solder particles having particle size distribution from 15 to 25 µm (pg. 21, lines 11-22). For purpose of examination and in accordance with broadest reasonable interpretation consistent with the specification, claim 4 is taken to mean: solder particles having a particle size in a range of 15 to 25 µm. Appropriate correction is requested.
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 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iseki et al. (US 2015/0196978, hereafter “Iseki”).
Regarding claim 1, Iseki discloses solder particles comprising: an oxidized film on a surface of the solder particles, wherein an average film thickness of the oxidized film is greater than 3 nm (see table 6 examples), and an average surface roughness Ra of the solder particles is greater than 10 nm (e.g. 30 µm) [0082].
As to claim 5, Iseki discloses solder particles comprising Sn and at least one selected from Ag and Cu (see table 3 examples 19-27).
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.
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Iseki et al. (US 2015/0196978).
As to claim 2, Iseki discloses that average film thickness of the oxidized film is greater than 3 nm and less than 100 nm (table 6 examples) and an average surface roughness Ra of the solder particles is 0.30 µm or less (table 6 examples), which is very close to recited value of 0.11 µm (110 nm). The claim would have been obvious since it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985), MPEP 2144.05. Moreover, Iseki teaches that solder surface roughness is particularly preferable to be 0.30 µm or less to achieve more successful joining with the substrate [0040]. Therefore, it would have been obvious to one of ordinary skill in the art to choose solder particles average surface roughness of about 0.10 µm with a motivation to achieve more successful joining, as suggested by Iseki.
As to claim 6, examiner notes this is a product-by-process claim. The determination of patentability is based on the product itself. If the product in the product-by-process claim is the same as or obvious from a product of prior art, the claim is unpatentable even though prior product may be made by a different process. In re Thorpe, 227 USPQ 964 (Fed. Cir. 1985). The claim is not limited to the specific manipulations of the process steps, but only the structure and thus, any structure implied by the process steps would be considered when assessing the patentability (see MPEP 2113). In this case, force airflow classification step does not appear to change or impart any structure to the solder particles. The solder particles taught by Iseki are substantially identical to the claim and accordingly, at least renders the claim obvious.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Iseki as applied to claim 1 above, and in view of Ishikawa et al. (US 2011/0067911, hereafter “Ishikawa”).
As to claims 3-4, Iseki is silent with regard to solder particles having diameter size of 15 to 25 µm. However, such feature is known in the art. Analogous to Iseki, Ishikawa (also directed to joining parts to substrate using paste made of solder particles) discloses solder particles made tin-based alloys and containing at least one of Ag, Au, Cu bi and In [0014-0017]; the part may be a chip [0018]. Ishikawa teaches the solder particles are composed of average particle diameter (D50) of 11 µm and the maximum diameter is about 20 µm (example 1- [0072]). This falls within particle size distribution mentioned in Applicant’s example 1. 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 Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to select solder particles size in a range of 15 to 25 µm in Iseki in order to produce solder paste suitable for joining desirable parts, such as chip to substrate, as shown by Ishikawa.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/13/26 complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVANG R PATEL whose telephone number is (571) 270-3636. The examiner can normally be reached on Monday-Friday 8am-5pm, EST.
To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at https://www.uspto.gov/patents/laws/interview-practice. Communications via Internet email are at the discretion of Applicant. If Applicant wishes to communicate via email, a written authorization form must be filed by Applicant: Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. The form may be filed via the Patent Center and can be found using the document description Internet Communications, see https://www.uspto.gov/patents/apply/forms. In limited circumstances, the Applicant may make an oral authorization for Internet communication. See MPEP § 502.03.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached on 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVANG R PATEL/
Primary Examiner, AU 1735
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