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 .
Claim Objections
Claims 2, 3, 4, 6, 7, 12, 13, 14, 15, and 16 objected to because of the following informalities: in each of the listed claims remove the parentheses from “(mass%)”. Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13 and 14 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.
Claims 13 and 14 recite the limitation of “further containing, by mass%, at least one of Zr, Fe, Ge, Ga, P, As, Pb, Zn, Mg, Cr, Ti, Mn, Mo, Pt, Pd, Au, Al, and Si: 0.1% or less in total” however, both claims 13 and 14 depend from independent claim 1. It is unclear whether claim 1 is “open” or “closed” with the use of the transitional phrase “consisting of” but then further requiring at least one of the elements within the list. Additionally, it is unclear whether any of the elements is actually required as the lower limit can be zero percent. For the sake of compact prosecution, the Examiner is interpreting claim 1 as closed but allows for impurity levels of the elements listed in claims 13 and 14. Clarification is required.
Claim Rejections - 35 USC § 102
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 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.
Claims 5-6 and 21-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Teng et al. (CN 108994480A, hereinafter “Teng”).
Applicant provided the foreign document with the IDS filed 4/9/2024 and the Examiner is providing a machine translation. All citations refer to the translation except for the tables in the original document.
Regarding claim 5, Teng teaches a lead-free solder alloy comprising the following powder composition (Teng, [0008-0019] and Table 1):
Element
Present Invention, mass%
Teng, wt.%
Teng Example 4
Ag
1.0-3.8
0.1-5.0
1.0
Cu
0.4-0.8
0.4-4
0.7
Sb
0.03-2.90
0.1-10
2.0
In
1.1-4.2
0.5-10
1.5
Ni
0.01-0.14
0.01-0.5
0.01
Bi
0.1-5.0
0.5-10
0.5
Optional Co
0-0.1
0
0
Optional at least one of: Zr, Fe, Ge, Ga, P, As, Pb, Zn, Mg, Cr, Ti, Mn, Mo, Pt, Pd, Au, Al, and Si
0-0.1 in total
P: 0-200ppm, 0-0.02 wt.%
Ga: 0-200ppm, 0-0.02 wt.%
Ge: 0-200ppm, 0-0.02 wt.%
P: 150 ppm, 0.015%
Ga: 0
Ge: 60ppm, 0.006%
Total: 0.021
Balance
Sn
Sn and impurities
Sn
The composition of the solder alloy example 4 of Teng falls within the ranges of claim 5 and therefore anticipates the claim.
Regarding claim 6, Teng teaches the alloy of Example 4 has a Relation (3) value of approximately 0.143, i.e., 0.5/(1.5+2.0) = 0.143, which falls within the requirements of claim 6.
Regarding claims 21, 22, 23, and 24, Teng teaches the lead-free solder is any one of a powder, paste, solder ball, coreless or cored solder wire, rod, strip, ingot, and foil (Teng, [0029]). The above uses of the solder of Teng corresponds to a solder ball, solder preform, solder paste, and solder joint comprising the alloy of claims 21-24.
Claim Rejections - 35 USC § 102/103
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 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.
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 1-3 and 8-12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over Teng et al. (CN 108994480A, hereinafter “Teng”).
Regarding claim 1, Teng teaches a lead-free solder alloy comprising the following powder composition (Teng, [0008-0019] and Table 1):
Element
Present Invention, mass%
Teng, wt.%
Teng Example 4
Ag
1.0-3.8
0.1-5.0
1.0
Cu
0.4-0.8
0.4-4
0.7
Sb
0.03-2.90
0.1-10
2.0
In
1.1-4.2
0.5-10
1.5
Ni
0.01-0.14
0.01-0.5
0.01
Bi
0.1-5.0
0.5-10
0.5
Optional Co
0-0.1
0
0
Optional at least one of: Zr, Fe, Ge, Ga, P, As, Pb, Zn, Mg, Cr, Ti, Mn, Mo, Pt, Pd, Au, Al, and Si
0-0.1 in total
P: 0-200ppm, 0-0.02 wt.%
Ga: 0-200ppm, 0-0.02 wt.%
Ge: 0-200ppm, 0-0.02 wt.%
P: 150 ppm, 0.015%
Ga: 0
Ge: 60ppm, 0.006%
Total: 0.021
Balance
Sn
Sn and impurities
Sn
The composition of the solder alloy example 4 of Teng falls within the ranges of claim 1. While claim 1 recites the transitional phrase “consisting of” and Teng also includes small amounts of P and Ge, as noted above, claim 1 is being interpreted as open to the inclusion of impurity levels of the elements listed in the table above.
Alternatively, the broader ranges of Teng overlap with the ranges of claim 1 of the present invention, including the possibility of the elements P, Ge, and Ga to be zero percent, which falls within the requirement that the solder alloy consists of only the elements in claim 1. 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 (Fe. Cir. 1990).
Regarding claim 2, Teng teaches the alloy of Example 4 has a Relation (3) value of approximately 0.143, i.e., 0.5/(1.5+2.0) = 0.143, which falls within the requirements of claim 2.
Regarding claims 3 and 12, Teng teaches the alloy of Example 4 has a Relation (1) values of approximately 134.67, i.e., 94.269/0.7=134.67, which falls within the requirements of claims 3 and 12.
Regarding claims 8, 9, 10, and 11 , Teng teaches the lead-free solder is any one of a powder, paste, solder ball, coreless or cored solder wire, rod, strip, ingot, and foil (Teng, [0029]). The above uses of the solder of Teng corresponds to a solder ball, solder preform, solder paste, and solder joint comprising the alloy of claims 8-11.
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 1, 4-5, 7-11, and 13-24 are rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi et al. (US 2015/0305167 A1, hereinafter “Nakanishi”).
Regarding claims 1, 4, 5, 7, 13, 14, 15, and 16, Nakanishi teaches a solder alloy comprising the following composition (Nakanishi, [0027-0060] and Table 2):
Element
Present Invention, mass%
Nakanishi, mass%
Overlap
Nakanishi Example 34
Ag
1.0-3.8
2-4
Preferred: 2.5-3.8
Preferred within
3.0
Cu
0.4-0.8
0.1-0.7
Preferred: 0.4-0.6
Preferred within
0.5
Sb
0.03-2.90
0.1-5.0
Preferred: 0.4-4.0
Preferred: 0.4-2.90
1.5
In
1.1-4.2
2.2-6.2
Preferred: 3.8-4.5
Preferred: 3.8-4.2
4.3
Ni
0.01-0.14
0.01-0.15
Preferred: 0.04-0.06
Preferred within
0.05
Bi
0.1-5.0
0.5-4.8
Preferred: 2.2-3.0
Preferred within
2.7
Optional Co
0-0.1
0.001-0.008
Preferred: 0.004-0.006
Preferred within
0.005
Optional at least one of: Zr, Fe, Ge, Ga, P, As, Pb, Zn, Mg, Cr, Ti, Mn, Mo, Pt, Pd, Au, Al, and Si
0-0.1 in total
Optional Ge: 0.001-1.0
Preferred: 0.002-0.007
Preferred within
0
Balance
Sn
Sn
Sn
The preferred ranges of Nakanishi either fall within or significantly overlap with the ranges of claims 1, 4, and 5. 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 (Fe. Cir. 1990).
Moreover, as Ge can be an optional inclusion, the solder alloy of Nakanishi satisfies the requirement of “consisting of” as a transitional phrase of claim 1. Nakanishi also does not teach the inclusion of any additional elements which satisfies the requirements of claims 4 and 5.
Regarding the Relation (2) expression of claims 4, 7, 13, 14, 15, and 16, the preferred ranges of Ag and Ni are 2.5-3.8 mass% and 0.04-0.06 mass% respectively, which calculates to a range of 0.1-0.228, i.e., 2.5×0.04=0.1 and 3.8×0.06=0.228, which encompasses the range of claims 4, 7, 13, 14, 15, and 16. Moreover, as noted in the above table, Example 34 includes 3.0 mass% Ag and 0.05 mass% Ni, which calculates to 0.15 which falls within the claimed range.
Regarding claims 8-11 and 17-24, Nakanishi teaches the solder alloy is preferably contained in a solder paste bonding material (Nakanishi, [0071]). The above uses of the solder of Nakanishi corresponds to a solder ball, solder preform, solder paste, and solder joint comprising the alloy of claims 8-11.
Claims 8-11 and 17-24 are rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi as applied to claims 1, 4, and 5 above, and further as evidenced by Liu et al. (US 2016/0328384 A1, hereinafter “Liu”).
Regarding claims 8-11 and 17-24, while Nakanishi teaches the solder alloy can be used in a solder paste bonding material (Nakanishi, [0071]), Nakanishi does not explicitly disclose the solder alloy is a ball, preform, or joint. However, it is generally known in the art that solder alloys can be used for producing solder joints, solder preforms, solder balls, solder powders, and solder pastes as evidenced by Liu (Liu, [0028]). Therefore, it would have been obvious to one of ordinary skill in the art to use the solder alloy of Nakanishi as a paste, ball, preform, or joint as presently claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2012/0175020 A1 teaches a low silver solder alloy containing, in mass% 0.05-2.0% Ag, 1.0% or less copper, 3.0% or less antimony, 2.0% or less bismuth, 4.0% or less indium, 0.2% or less nickel, 0.1% or less germanium, 0.5% or less cobalt, with a remainder tin (Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
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