RESPONSE TO AMENDMENT
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 .
WITHDRAWN REJECTIONS
The 35 U.S.C. §103 rejections of claims 5-8 made of record in the office action mailed on 03/30/2026 have been withdrawn due to Applicant' s arguments in the response filed 03/30/2026
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claims 6 and 8 objected to under 37 CFR 1.75 as being a substantial duplicate of claims 5 and 7. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 103
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Matsushima (JP 2005-220380) (cited in the IDS filed on 03/12/2024) in view of Yamakawa et al. (U.S. App. Pub. No. 2009/0236404) and Tahara et al. (U.S. App. Pub. No. 2017/0216913).
Citations to Matshushima et al. below refer to the machine translation document provided by Applicant with the IDS filed on 03/12/2024.
Regarding claims 3-4, Matsushima et al. discloses a silver powder having improved dispersibility including a BET surface area of less than 5 m2/g, overlapping with the presently claimed range. (Abstract and par. [0014]). As set forth in MPEP 2144.05, in the case where the claimed range “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).
Matsushima et al. does not disclose a negative value for a difference or a value of less than 0.3 microns for a difference between particle diameters measured using isopropyl alcohol and butyl carbitol acetate as the dispersion medium.
Yamakawa et al. teaches a pasty silver particle composition including silver particles which are surface modified with a fatty-acid materials, including linoleic acid, to improve the water-repellency of the silver particles. (par. [0041]). The selection of these fatty acid materials would therefore affect the dispersibility and particle size dimensions when measured using a more hydrophilic (isopropyl alcohol) compared a more hydrophobic (butyl carbitol acetate) dispersion medium,
Furthermore, Tahara et al. discloses a silver powder wherein the particle size is measured using an isopropyl alcohol dispersion and a water dispersion medium and has slightly different particle size. (Abstract). Tahara et al. teaches that the differences in particle size measurement represent a highly hydrophilic silver particle material (par. [0042]) due to the presence of hydrophilic phosphorus compound on the surface of the silver particles. (par. [0047] and [0050]).
It would therefore have been obvious to one of ordinary skill in the art to surface modify the surface of the silver particles disclosed in Matsushima et al. with a fatty acid material as disclosed in Yamakawa et al. The surface modification with linoleic acid, in particular, would result in a difference in particle sizes when measured using isopropyl alcohol compared to butyl carbitol acetate as evidenced in Tahara et al. (which suggests that higher hydrophilic surface modifiers result in higher particle sizes in isopropyl alcohol) and in the current specification. As shown in Example 1-4 and Comparative Example 1, use of linoleic acid surface modified silver particles results in the claimed particle size difference when compared to a stearic acid surface modified silver particle.
One of ordinary skill in the art would have found it obvious to surface modify the surface of the silver particles disclosed in Matsushima et al. would a fatty acid material to improve the water repellency thereof when the particles are designed to be included in more hydrophobic mediums or solvents, improving the dispersibility thereof.
Allowable Subject Matter
Claims 5-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
While the prior art does recognize the different particle sizes as measured in solvents having different hydrophilic/hydrophobic properties (isopropyl alcohol vs butyl carbitol acetate) by selection of a fatty acid surface modifier, there is not teaching or suggestion in the prior art that the combination of an azole along with an unsaturated fatty acid having two or more particle bonds on a silver powder particle surface would achieve the claimed difference in particle sizes for silver powders having surface areas of 1.5 m2/g to 2.0 m2/g as claimed.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 03/30/2026 regarding the prior art rejections made of record in the office action 02/11/2026 have been carefully considered but are deemed unpersuasive.
The Applicant argues that the grounds of rejection for claims 3-8 are rooted in impermissible hindsight and lacking proper motivation due to Yamakawa et al. disclosing a generic laundry list of fatty acids for surface modification. (Applicant’s argument filed 03/30/2026, page 6).
Yamakawa et al. teaches that surface modification of silver particles with fatty acids results in improved water repellency thereof (par. [0041]). One of ordinary skill in the art would that different fatty acids having different chain lengths and hydrophilic properties would result in different properties including dispersibility in solvents which have hydrophobic properties (such as butyl carbitol acetate) compared to hydrophilic solvents. (isopropyl alcohol). Furthermore, Tahara et al. confirms that when measuring silver particle sizes in isopropyl alcohol medium or water medium, the hydrophilicity of the surface group affects the measured particle size due to difference in dispersibility in each of the solutions. (par. [0041]). This would therefore suggest to one of ordinary skill in the art that based on the teachings Matsushima, Yamakawa and Tahara et al., that one of ordinary skill in the art would have found it obvious to select a specific surface modifier based on the desire to adjust particle size of the silver particles or improve the dispersibility in the solvent in which the particles are intended to be used.
However, based on Applicant’s argument filed on 03/30/206, the Examiner has withdrawn the rejections of claims 4-8 as the prior art does not teach the combination of azole and linoleic acid on the silver particle surface in combination with the particle diameter differences as claimed in claims 3 and 4.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 04/22/2026