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 .
This action is responsive to the amendment filed on September 18, 2026.
Claims 1-4, 6-13 are withdrawn. Claim 13 is withdrawn.
The rejection of claims 1-3, 6-11 under 35 U.S.C. 102(a)(1) as being anticipated by Tokuhira et al is withdrawn in view of Applicant’s amendment.
The rejection of claim 4 under 35 U.S.C. 103 as being unpatentable over Tokuhira et al is withdrawn in view of Applicant’s amendment.
Claims 1-4, 6-11 stand rejected under 35 U.S.C 103 as being unpatentable over Jang et al for the same reasons provided in the previous office action.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al (US Patent Application 2012/0228560 (already of record)).
Regarding claims 1-4, 6-11, Jang et al teaches a conductive adhesive comprising a conductive particle, low melting alloy powder including an alloy including Sn and at least one material selected from the group consisting of Ag, Cu, Zn, In and Pb, a nanopowder, first powder including a thermosetting resin and a second binder including a rosin compound (Abstract). Jang et al further teaches a curing agent (Paragraphs 62, 64). Jang et al further teaches the conductive particle is preferably copper (which satisfies claimed thermally conductive particles and composition) (Paragraphs 25). Jang et al further teaches it is preferably for the size of the conductive particles to be larger than the low melting alloy so that the low melting alloy powder having a size smaller than the conductive particles can be dispersed between the conductive particles, be melted at low temperatures and be liquified. The liquefied low melting alloy powder is soaked into the pores between the conductive particles and combines the conductive particles, thereby enhancing the conductivity and the adhesive force (Paragraphs 55-56). Jang et al further teaches size of the conductive particle may be from 0.05-10µm and the size of the low melting point alloy powder may be from about 0.05-10 µm (Paragraph 58). Jang et al further teaches the low melting point alloy powder may have a melting point of about 130-180C (Paragraph 51) and a curing temperature up to about 200C (Paragraph 61). Jang et al further teaches the adding a polysiloxane, polybutadiene, polyacrylate or polyamide (Paragraphs 35, 69). Jang et al further teaches a first binder including an epoxy (which satisfices claimed oxirane ring) (Paragraph 16). Jang et al further teaches the composition comprises 30-85wt% of a conductive particle, 5-50wt% of low melting point allow powder, 3-13wt% of nanopowder and 7-15wt% organic compound including the first and second binder and additive (Paragraph 70). Jang et al further teaches about 15wt% of binders and 5wt% of curing agent (which satisfies a ratio C/D of 3 or less) (Example 1, Paragraph 79). However, Jang et al fails to specifically disclose the melting point of the low melting point alloy powder is lower than the thermal curing temperature of the composition, average particle ratio (A/B), 50% by volume or greater of the metallic filler, ratio of volume (A/B) of the thermally conductive particles to low melting point alloy powder.
With regard to the melting point of the low melting point alloy powder is lower than the thermal curing temperature of the composition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the melting point of the lower melting point alloy powder is lower than the thermal curing temperature of the composition in Jang et al as Jang et al teaches the low melting point alloy powder may have a melting point of about 130-180C (Paragraph 51) and a curing temperature up to about 200C (Paragraph 61); curing from 181-200C satisfies the claimed limitation.
With regard to average particle ratio (A/B), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the average particle diameter ratio (A/B) wihin the ranges as instantly claimed as Jang et al teaches size of the conductive particle may be from 0.05-10µm and the size of the low melting point alloy powder may be from about 0.05-10 µm, wherein it is preferred that the low melting alloy powder having a size smaller than the conductive particles can be dispersed between the conductive particles in order to enhance the conductivity and the adhesive force of the composition. It would only be obvious to the ordinary artisan to provide the claimed range as the values in Jang et al overlap the claimed range. For example, a conductive particle size of 5µm and an alloy powder of 2µm, provides a ratio of 2.5, which overlaps the teachings in Jang et al and satisfies the claimed range.
With regard to 50% by volume or greater of the metallic filler, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided 50% by volume or greater of the metallic filler in the composition in Jang et al as Jang et al teaches the composition comprises 30-85wt% of a conductive particle, 5-50wt% of low melting point allow powder, 3-13wt% of nanopowder and 7-15wt% organic compound including the first and second binder and additive, hence this would overlap the claimed teaching of 50vol% or greater. A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
With regard to ratio of volume (A/B) of the thermally conductive particles to low melting point alloy powder, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a ratio of volume (A/B) of the thermally conductive particles to low melting point alloy powder in Jang et al as Jang et al teaches the composition comprises 30-85wt% of a conductive particle, 5-50wt% of low melting point allow powder, hence it would only be obvious to the ordinary artisan to provide the claimed ratio of 1 or greater based upon the teachings in Jang et al as Jang et al teaches up to 85wt% of the conductive particles (higher amount than the low melting point alloy powder) and these particles have a bigger size (and bigger volume percentage than the low melting point alloy powder).
Claims 9, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al (US Patent Application 2012/0228560 (already of record)) as applied to claims 1-4, 6-11 above, and in further view of Chuma et al (US Patent Application 2012/0261174 (already of record)).
Regarding claims 9 and 12, Jang et al discloses the invention substantially as claimed. Jang et al teaches the features above. However, Jang et al fails to specifically disclose oxetane resin and glutaric acid.
In the same field of endeavor, Chuma et al teaches a conducting material to form conductive portions on an electric member (Abstract). Chuma et al further teaches a curable resin that are used as an adhesive component for electronic devices including an epoxy resin or an oxetane resin (Paragraph 35). Chuma et al further teaches glutaric acid as a compound having flux function and reducing the action of a metal oxide layer on surfaces (Paragraphs 77-79).
With regard to oxetane resin, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided an oxetane resin in Jang et al in view of Chuma et al as Chuma et al teaches curable resins that can be used as an adhesive component in the composition include epoxy resin and oxetane resins. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07. Likewise, simple substitution of one known thermosetting resin with adhesive properties for another would achieve the predictable results as a resin for forming a conductive channel/member for electronic devices.
With regard to glutaric acid, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided glutaric acid in Jang et al in view of Chuma et al in order to reduce the action of a metal oxide layer on the surface as taught in Chuma et al.
Response to Arguments
Applicant's arguments filed September 18, 2026 have been fully considered but they are not persuasive.
With respect to the obviousness rejection over Jang et al, Applicant argues that the “consisting essentially of” language permits other components only to the extent that the effects of the present invention are not impaired. The Examiner respectfully disagrees with the above argument because the “consisting essentially of” language does not necessarily exclude the second binder of Jang et al because “consisting essentially of” renders the composition open to the inclusion of unspecified ingredients which do not materially affect the basic and novel characteristics of the composition, see Ex parte Davis et al. (Bd of Appeals), 80 USPQ 448. Applicants have not submitted factual evidence showing that the second binder of Jang et al materially affects the instant invention. Also, the broad “comprising” and “containing” terminology do not exclude the presence of other ingredients in the composition, unlike the narrow “consisting of” language, see Swain v.Crittendon, 332 F 2d 820,14 1 USPQ 8 11 (CCPA 1964).
Conclusion
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 TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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, Angela Brown-Pettigrew can be reached at (571) 272-2817. 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.
/TANISHA DIGGS/Primary Examiner, Art Unit 1761 October 13, 2026
