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 in the reply filed on June 29, 2026 is acknowledged.
Claims 1-13 are pending. Claim 13 is withdrawn.
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.
Claims 1-3, 6-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tokuhira et al (JP2007-173317 (already of record, translation provided)).
Regarding claims 1-3, 6-11, Tokuhira et al teaches a thermally conductive bonding material comprising a first filler In-Sn-Bi alloy having a low melting point and a second filler excellent in thermal conductivity in a thermosetting resin (Abstract). Tokuhira et al further teaches a bonding material comprising 50% by volume of resin comprising In-Sn-Bi alloy having a melting point of 60C with an average particle size of 10µm and silver-plated copper particle with an average particle size of 35µm (which satisfies the claimed ratio or (A/B) average particle diameter of 3.5) into resin comprising 50 parts of Bisphenol F epoxy, 50 parts of naphthalene epoxy and 100 parts of curing agent (which satisfies weight ratio of C/D of 1), wherein the mixing ratio of the fillers is 1:1 (Example 1, Paragraphs 29-30). Tokuhira et al further teaches curing at a temperature up to 100C (which satisfies claimed melting point of the lower melting point particles is lower than the curing treatment temperature of the composition) (Pargraph 23).
Tokuhira et al inherently teaches the curing agent has flux activity on the metallic filler and the low melting point filler react with the conductive particles under thermal curing to become an alloy that exhibits a melting point higher than the melting point of the low melting point filler. Tokuhira et al teaches the limitations of the instant claims. Hence, Tokuhira et al anticipates the claims.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tokuhira et al (JP2007-173317 (already of record, translation provided)) as applied to claims 1-3, 6-11 above.
Regarding claim 4, Tokuhira et al discloses the invention substantially as claimed. However, Tokuhira et al fails to specifically disclose a volume ratio of thermally conductive particles to low melting point particles of 1 or greater.
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 volume ratio of thermally conductive particles to low melting point particles of 1 or greater in Tokuhira et al as teaches a weight ratio of 1:1 wherein the thermally conductive particles are greater in size, hence, this would provide the claimed volume ratio of 1 or greater.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al (US Patent Application 2012/0228560).
Regarding claims 1-11, 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) as applied to claims 1-11 above, and in further view of Chuma et al (US Patent Application 2012/0261174).
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.
Conclusion
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 July 21, 2026
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