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 14-19 in the reply filed on 07/13/2026 is acknowledged.
Claims 20-33 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/13/2026.
Priority
Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau.
Information Disclosure Statement
Three (3) information disclosure statements (IDS) were submitted on 03/27/2024, 05/16/2024 and 01/07/2026. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: L1 and L2 of the instant specification ([0031]) are not indicated in any of the figures.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Fig. 2 uses reference character “L” which is not described in the instant specification. While one of ordinary skill in the art understands “L” is typically a length, it is unclear whether “L” refers to length “L1”, “L2”, the length of line “41”, or a different interpretation.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Regarding claim 17, the term “volume-based median diameter” is interpreted as including D50 diameters. The instant specification recites the median diameter (particle diameter corresponding to a cumulative value of 50%; also referred to as D50) is a volume-based value ([0043]).
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.
Claims 14-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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.
Regarding claim 14, where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). One of ordinary skill in the art understands “apparent density” as synonymous with “bulk density” and defined as the mass of powder divided by the volume the powder naturally occupies when loosely packed. However, the instant specification recites the apparent density is measure by a true density analyzer and is “different from bulk density” ([0031]). As best understood, the “apparent density” of the claimed invention is intended to refer to the “true density” rather than “apparent density”. The term is indefinite because the specification does not clearly redefine the term. Clarification is requested.
Claims 15-19 do not resolve the aforementioned issues, and are thereby also indefinite.
Further regarding the “apparent density” of claim 14, the limitation renders the claim further indefinite. It is unclear whether the claimed density refers to the density of the powder as a whole (including voids), or if the claimed density is of only the particles (with no voids).
Claims 15-19 do not resolve the aforementioned issues, and are thereby also indefinite.
Claim 15 recites the limitation "largest void area ratio" in lines 2-3. The term “largest void area ratio” in claim 15 is a relative term which renders the claim indefinite. The term “largest void area ratio” 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 invention. The instant specification recites the largest area and total area of voids in the particle cross-section may be determined based on image analysis measuring preferably 2 or more particles ([0040]-[0041]). In this case, it is unclear what or who determines which void is the “largest” and the “largest void area ratio” is therefore not an objective standard for measuring the scope of the claim. See MPEP 2173.05(b)(IV).
Further regarding claim 15, the limitation “largest void area ratio” renders the claim indefinite since it is unclear what the ratio is and how it is obtained (e.g. dividing the area of a single void by a total particle area, or dividing a total void area by the total particle area in a single particle, or a different ratio).
Claim 16 recites the limitation “wherein total area of voids observed in the particle cross-section for the silver particles is 5% or more of cross-section area of the particle cross-section”. This limitation renders the claim indefinite since it is unclear whether the claimed total area of voids is conditional given the term “observed”, or if the claimed total area of voids only applies to voids that are observed. The limitation would be further indefinite since it is unclear which voids must be observed to meet the claimed total area of voids. A powder will necessarily have a total void area whether it is observed or not. However, as currently written, the claim reads as if the claimed total area of voids is not required if the voids are not observed.
Claim 19 recites the limitation “having a silver crystallite size” (emphasis added). This limitation renders the claim indefinite since it is unclear whether the claimed “silver crystallite size” is of the claimed silver powder, silver particles, or a different silver crystallite.
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 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 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over KR 2018/0121190 A of Kim (as cited in prior Office action and in IDS mailed 03/27/2024, with reference to its English machine translation).
Claims 14-19, as best understood given the 112(b) rejections in this Office action, are rejected as being unpatentable over the prior art of Kim.
List 1
Instant claims
Kim
“Apparent density”
8.2-9.2 g/cm3
9-10 g/cc (“true density”, claim 8)
Ratio of lengths of claim 1
1.1-1.4
-
“Largest void area ratio”
0.1-1.0%
-
Total area of voids of cross-section area
≥ 5%
-
Volume-based median diameter (D50)
0.6-2.0 μm
0.1-5 μm (“D50”, [0055])
Ignition loss
1.0-3.0 wt%
-
Silver crystallite size (Dx)
10-28 nm
-
D50/Dm: 0.5-2 (“dispersibility” ([0086])
BET: 0.1-5.0 m2/g (claim 8)
Regarding the “apparent density” of claim 14, Kim teaches spherical silver particles having excellent dispersibility and internal pores (Abstract, reads on claimed silver powder comprising a collection of silver particles; spherical implies the particles have or approach a spherical shape). Kim teaches silver particles with a true density of 9 to 10 g/cc measured using Accupyc II 1340 ([0019], [0054], Accupyc II 1340 is considered a true density analyzer; since the apparent density of the instant invention was measured with a true density analyzer, the true density of Kim overlaps with the claimed apparent density; see 112(b) rejection regarding “apparent density” of claim 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 Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Kim therefore reads on the limitation a silver powder comprising a collection of silver particles, wherein the silver powder has an apparent density of not less than 8.2 g/cm3 and not more than 9.2 g/cm3 of claim 14.
Regarding the voids of claims 15 and 16, Kim teaches silver particles having internal pores ([0054], [0086], Figs. 4-5, pores read on claimed voids) but does not explicitly teach dimensions of the pores.
Regarding the diameter of claim 17, Kim teaches a D50 particle size may be 0.1 to 5 μm ([0055], reads on claimed volume-based median diameter of claim 17).
Kim therefore reads on the limitation having a volume-based median diameter of not less than 0.6 μm and not more than 2.0 μm of claim 17.
Regarding the silver powder properties, Kim teaches spherical silver particles having internal pores that have a uniform particle size distribution, can prevent particle aggregation, can dramatically improve dispersibility, and can achieve excellent physical properties stably over a long period while maximizing process efficiency ([0008]). Kim teaches using the silver particles in a silver paste and screen-printing onto a surface ([0084], screen-printing onto a surface implies a good printing performance).
Regarding processing, Kim teaches obtaining silver particles by preparing a silver slurry, washing, filtering, and drying at a temperature range of 100 to 130°C in a vacuum oven ([0029]-[0053])
However, Kim does not explicitly disclose a value of not less than 1.1 and not more than 1.4 for a ratio of length of a perimeter in a particle cross-section for the silver particles and length of a line circumscribing a periphery of the particle cross-section of claim 14, having a largest void area ratio of not less than 0.1% and not more than 1.0% of claim 15, wherein total area of voids observed in the particle cross-section for the silver particles is 5% or more of cross-section area of the particle cross-section of claim 16, having an ignition loss of not less than 1.0 wt% and not more than 3.0 wt% of claim 18, and having a silver crystallite size of not less than 10 nm and not more than 28 nm of claim 19.
Since Kim teaches silver particles with a composition, density, and particle diameter overlapping with the claimed invention, as summarized in List 1, one of ordinary skill in the art would reasonably expect the powder of Kim to possess the claimed value of ratio of lengths of claim 14, largest void area ratio of claim 15, total area of voids of claim 16, ignition loss of claim 18, and silver crystallite size of claim 19, despite not explicitly measuring or disclosing them.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (emphasis added). In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the powder of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (both are silver particles), b) the claimed and prior art products are identical or substantially identical in structure (both have overlapping densities, diameters, and have good printing performance), and c) the claimed and prior art products are produced by identical or substantially identical processes (both obtain silver particles including a drying step in vacuum). Since the Office does not have a laboratory to test the reference powder, it is applicant’s burden to show that the reference powder does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
In this case, absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would expect the silver powder of Kim to possess the claimed properties. A prima facie case of obviousness has been properly established herein.
Kim therefore reads on the limitations a value of not less than 1.1 and not more than 1.4 for a ratio of length of a perimeter in a particle cross-section for the silver particles and length of a line circumscribing a periphery of the particle cross-section of claim 14, having a largest void area ratio of not less than 0.1% and not more than 1.0% of claim 15, wherein total area of voids observed in the particle cross-section for the silver particles is 5% or more of cross-section area of the particle cross-section of claim 16, having an ignition loss of not less than 1.0 wt% and not more than 3.0 wt% of claim 18, and having a silver crystallite size of not less than 10 nm and not more than 28 nm of claim 19.
Kim therefore reads on all the limitations of claims 14-19.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following prior art teaches “tap density” for silver powders instead of an “apparent density” or “true density”. Given the 112(b) issues regarding “apparent density”, it is difficult to appropriately compare the silver powders of the prior art since their properties are reported in terms of different types of densities and there is no straightforward conversion from “tap density” to “true density”. However, one of ordinary skill in the art understands true density is typically greater than tap density and apparent density. Therefore, while the references have a lower density range than claimed, their “true density” (which is believed to read on the claimed “apparent density”, see relevant 112(b) in this Office action) would be expected to be greater than their “tap density”. The references disclosed below have D50 diameters and/or porosity overlapping with the instant invention and are considered relevant to the claimed invention.
JP 2015/155576 A of Yamashita (with reference to its English machine translation) is considered relevant to claims 14-19. Yamashita teaches a hollow silver powder with an average particle size of 0.4 μm to 1.5 μm, a tap density of 4.0 g/cm¹ to 6.0 g/cm¹, and a particle cross-sectional porosity of 5% to 20% (Abstract). Yamashita teaches a surface smoothing treatment ([0044]) and vacuum drying ([0051]).
US 2015/0218391 A1 of Takahashi (as cited in IDS mailed 01/07/2026) is considered relevant to claims 14-19. Takahashi teaches a silver paste that includes silver particles with a D50 diameter of 0.5 to 6 μm, and a BET of 1 to 8 m2/g (claim 1).
WO 2020/204450 A1 of Yoon (as cited in IDS mailed 01/07/2026 using US 2022/0055941 A1 as its English translation) teaches spherical powders with a D50 of 0.5 to 2.5 μm (claim 1), a tap density of 2.0 to 7.5 g/cc (claim 2), and a porosity of 0.1 to 3% for silver powder A and 5 to 20% for silver powder B ([0057]).
JP 2002/080901 A of Matsumoto (as cited in IDS mailed 01/07/2026 with reference to its English machine translation) is considered relevant to claims 14-19. Matsumoto teaches a silver powder ([0001]) with a D50 particle size of 1.44 μm, a tap density of 4.2 g/mL and a specific surface area of 0.92 m2/g ([0016], Example 1). Matsumoto teaches a smoothing treatment ([0006]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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