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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 1, 2024 has been considered by the examiner.
Claim Rejections - 35 USC § 102
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.
Claim 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bulan et al. (WO 2015135858).
Bulan et al. teaches silver powder (Abstract and paragraph 12). The claim recites that the powder is obtained by the process of claim 1 thus claim 9 is a product by process claim. According to MPEP 2113, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since claim 9 does not recite any compositional details of the powder, the silver powder of Bulan et al. is deemed to be the same as that of the instant claim and therefore anticipates the claim.
Claim 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sopchak et al. (CN 1284139).
Sopchak et al. teaches copper powder (Abstract). The claim recites that the powder is obtained by the process of claim 1 thus claim 9 is a product by process claim. According to MPEP 2113, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since claim 9 does not recite any compositional details of the powder, the copper powder of Sopchak et al. is deemed to be the same as that of the instant claim and therefore anticipates the claim.
Sopchak et al. additional teaches a method of producing copper powder by electrolysis including the steps of carrying out the electrolysis at a temperature of 15-35°C (paragraph 33), mechanically removing the powder from the cathode (paragraph 36), and washing the powder with an antioxidant to prevent oxidation (paragraph 37).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-7 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bulan et al. (WO 2015135858) in view of Takano (JP 2003342775, cited in IDS 3/1/2024).
Regarding claim 1, Bulan et al. teaches a process for production of a powder of metal in an electrolytic cell comprising an anode made of the metal (i.e., silver anode; see paragraph 12), a cathode (paragraph 13) and an electrolyte solution (paragraph 13), which comprises
a) anodic dissolution to form ions of the metal (“anodic dissolution of the silver anode”; see paragraph 12) in the electrolyte solution and cathodic deposition of metal particles from the electrolyte solution (“cathodic deposition of the silver powders”; paragraph 12),
b) removing the metal particles from the cathode into the electrolyte solution (“silver crystallites growing on the cathode can also be mechanically removed”; see paragraph 24), and
c) isolating the metal particles from the electrolyte solution (i.e., by removal from the cell; paragraph 24) wherein
the metal is silver
the electrolyte solution comprises a soluble metal salt (i.e., silver nitrate or silver sulfate; paragraph 13).
Bulan et al. does not explicitly teach the electrolyte solution comprises an alkane sulfonic acid or alkanol sulfonic acid.
Takano teaches a method for manufacturing silver powder by electrolysis (paragraph 13). Takano teaches that it is preferable that the acidic aqueous solution containing at least an alkyl group and a sulfo group contains an alkane sulfonic acid, particularly methanesulfonic acid or ethanesulfonic acid, to ensure the silver ion is stably present in the acidic aqueous solution (paragraph 17).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Bulan et al. by incorporating the alkane sulfonic acid of Takano because it would ensure the silver ion is stably present in the acidic aqueous solution. Incorporating the alkane sulfonic acid in the electrolyte of Bulan et al. would result in the solution comprising a soluble metal salt of the alkane sulfonic acid.
Regarding claims 2, 4, and 12, Bulan et al. in view of Takano teaches that the alkane sulfonic acid is methanesulfonic acid, where C is 1 (paragraph 17 of Takano).
Regarding claims 3 and 13, the instant limitation directed to the alkanol sulfonic acid is an optional limitation of claim 1. Since the rejection applies to the alkane sulfonic acid, the instant claim is met by virtue of the limitation being optional.
Regarding claims 5-6 and 14-16, Bulan et al. teaches that the electrolytic production of silver powders is carried out at a temperature of 0 to 50°C (paragraph 14). According to MPEP 2144.05, 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).
Regarding claim 7, the instant limitation directed to the copper powder is an optional limitation of claim 1. Since the rejection applies to the silver powder, the instant claim is met by virtue of the limitation being optional.
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Bulan et al. (WO 2015135858) in view of Takano (JP 2003342775, cited in IDS 3/1/2024), and further in view of Tsuyama et al. (JP 2014186952).
Bulan et al. in view of Takano teaches the method of claim 1. Bulan et al. further teaches drying the silver powder (paragraph 24). However, Bulan et al. does not explicitly teach an anti-oxidation step (claim 8) such as a reduction under an atmosphere of hydrogen (claim 17).
Tsuyama et al. teaches a method of drying coated copper particles under conditions that suppress oxidation are preferable, for example, an inert gas atmosphere such as nitrogen or argon is more preferable, and drying under a reducing gas atmosphere such as hydrogen is even more preferable (paragraph 42).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention modified the method of Bulan et al. by drying the silver powder in an atmosphere of hydrogen to suppress oxidation, as suggested by Tsuyama et al. While Tsuyama et al. teaches drying copper powder, one having ordinary skill in the art would have an expectation of success in applying the same drying process to silver powder, since silver powder is susceptible to oxidation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to the applicant's disclosure.
JP 2001115294 teaches a method of electroplating copper using alkane sulfonic acids to produce a smoother copper coating (paragraph 10).
WO 2010107328 teaches a method of electrodepositing copper powders at a temperature of 18-60°C and removing the powders from an electrode surface (page 3, last full paragraph).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUAN V VAN whose telephone number is (571)272-8521. The examiner can normally be reached Monday-Friday 8:30-5:00.
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, Patricia Mallari can be reached at (571) 272-4729. 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.
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
Prosecution Insights