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 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 1-16 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 1 and 2, recite R1 and R2 as a broad limitation followed by more narrow limitations. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “R1 is selected from a C2-C18-akyl” and “R2 is a C1-C18-alkyl” claim 1 also recites “a C1-C12-alkyl” “a C1-C6-alkyl” which is the narrower statement of the range/limitation. Similarly, Claim 2 defines the alkyl moiety of R1 as “a linear alkyl” “a linear C1-C6 alkyl” and “methyl or ethyl.” The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 recites limitations followed by “particularly…more particularly” in Lines 10-11, 19-20, 22-23, 27-30, 32-33 and “particularly” in Lines 4, 34 and 37. Claim 2 recites limitations followed by “particularly…more particularly” in Line 2, Claim 7 recites limitations followed by “particularly” in Line 10. Claim 9 recites limitations followed by “particularly” in Line 3. Claim 10 recites limitations followed by “particularly” in Line 3. Claim 10 recites limitations followed by “particularly” in Line 3, Claim 12 recites limitations followed by “particularly…more particularly” in Lines 3-4 and “even more particularly” in Lines 5-6. It is unclear which, if any of the limitations are present or if the limitations of these claims are optional. Appropriate correction is required to establish concrete elements of the claimed composition with specificity. The terms “particularly,” “more particularly,” and “even more particularly” do not establish the presence of limitations following these terms.
Claims 13 and 14 recite “comprises additionally.” The recitation of “additionally” following the word “comprises” and not preceding the word “comprises” renders these claims grammatically unclear. It is unclear whether “additionally” is meant to convey an active method step of adding the materials that follow the term, or some other meaning entirely. Appropriate correction is required to establish with specificity the presence of silver oxide or the presence of metallic silver and/or copper.
Regarding Claims 13-16, separately from the issue above, Claims 13 and 14 recite “the composition in form of a paste according to claim 12” in Line 1. Claim 15 recites “the composition in form of a paste according to claim 13” in Lines 1-2. Claim 16 recites “the composition in form of a paste according to claim 14” in Line 1. There is a lack of antecedent basis for “paste” and it is unclear the nexus between a paste and the composition of Claim 12 which depends on Claim 1 and does not recite a paste. It is noted Claim 11, which depends on Claim 1 recites “wherein the composition is in form of a dried powder or a paste.” In Line 2. Appropriate correction is required to establish the presence of a paste in Claims 13-16.
Claim 15 recites “the metallic silver and/or copper” in Line 5 for which there is a lack of antecedent basis for this phrase. There is no previous mention of “metallic silver” or “copper” in Claim 13 on which Claim 15 depends. Appropriate correction is required.
Claim 16 recites “the silver oxide” in Line 2 for which there is a lack of antecedent basis for this phrase. There is no previous mention of “silver oxide” in Claim 14 on which Claim 16 depends. Appropriate correction is required.
Claims 3-6, 8, and 11 are rejected for their dependency on a rejected claim.
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.
Claims 1-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Oestreicher et al. EP 2838690 B1 in view of Chew et al. US 10910340 B1.
Regarding Claim 1, Oestreicher et al. ‘690 teaches a composition for sintering comprising a silver precursor (Ag(I)-2[2-(2-methoxyethoxy)ethoxy]acetate) and a particle comprising agglomerated silver nanoparticles.
Oestreicher et al. ‘690 teaches nanometer scaled particles and does not expressly teach the ratio of the weight of the precursor to the weight of the particle.
Notwithstanding the 112(b) rejections above, Chew et al. ‘340 teaches a silver sintering composition comprising 30 to 88 wt% silver flake particles and 5 to 50 wt% silver precursor. Chew et al. ‘340 therefore teaches ratios overlapping and lying within the instantly claimed range of between 1:5 and 1:9 (for example a weight ratio of 10% silver precursor weight and 60% particle weight yields a ratio of 1:6), meeting the limitations of the instant Claim.
Oestreicher et al. ‘690 does not expressly teach forming micrometer-scale particles. However, notwithstanding the 112(b) rejections above, Chew et al. ‘340 further teaches a silver sintering composition comprising silver flake particles having an average particle size ranging from greater than 1 to 20 micrometers, overlapping the instantly claimed range of 0.5 to 20 micrometers, meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where 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).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to formulate the composition of Oestreicher et al. ‘690 with the weight ratios taught in Chew eta l. ‘340 with the reasonable expectation of forming a useful composition for sintering and in order to increase the thermal conductivity of the composition based on the teachings of Chew et al. ‘340 at (Column 1 Lines 48-62).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to formulate the composition of Oestreicher et al. ‘690 with micrometer particle size of Chew et al. ‘340 in order to improve adhesion to non-precious metals based on the teachings of Chew et al. ‘340 at (Column 1 Lines 48-62).
Oestreicher et al. ‘690 modified with the particle size and weight ratios of Chew et al. ‘340 meets the limitations of the instant Claim.
Regarding Claims 2-7, modified Oestreicher et al. ‘690 teaches the limitations set forth above. Oestreicher et al. ‘690 teaches the formation of unbranched, linear alkyl moieties, as well as chemical structures including AgO2C(CH2OCH2)3H, overlapping the instantly claimed structures [0014-0016], meeting the limitations of the instant Claims. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding Claim 8, modified Oestreicher et al. ‘690 teaches the limitations set forth above. Oestreicher et al. ‘690 teaches an exemplary melting temperature o f the precursor of about 110 °C, meeting the limitations of the instant Claim for a melting temperature below 200 °C.
See MPEP 2144.05. In cases where 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).
Regarding Claim 9, modified Oestreicher et al. ‘690 teaches the limitations set forth above. Oestreicher et al. ‘690 does not expressly teach the ratio of the weight of the precursor to the weight of the particle.
Notwithstanding the 112(b) rejections above, Chew et al. ‘340 teaches a silver sintering composition comprising 30 to 88 wt% silver flake particles and 5 to 50 wt% silver precursor. Chew et al. ‘340 therefore teaches ratios overlapping and lying within the instantly claimed range of between 1:5 and 1:9 (for example a weight ratio of 10% silver precursor weight and 60% particle weight yields a ratio of 1:6), meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where 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).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to formulate the composition of Oestreicher et al. ‘690 with the ratios taught in Chew eta l. ‘340 with the reasonable expectation of forming a useful composition for sintering and in order to increase the thermal conductivity of the composition based on the teachings of Chew et al. ‘340 at (Column 1 Lines 48-62).
Regarding Claim 10, modified Oestreicher et al. ‘690 teaches the limitations set forth above. Oestreicher et al. ‘690 does not expressly teach forming micrometer-scale particles.
However, notwithstanding the 112(b) rejections above, Chew et al. ‘340 teaches a silver sintering composition comprising silver flake particles having an average particle size ranging from greater than 1 to 20 micrometers, overlapping the instantly claimed range of 0.5 to 20 micrometers, meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where 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).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to formulate the composition of Oestreicher et al. ‘690 with micrometer particle size of Chew et al. ‘340 in order to improve adhesion to non-precious metals based on the teachings of Chew et al. ‘340 at (Column 1 Lines 48-62).
Regarding Claims 11 and 14, modified Oestreicher et al. ‘690 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, Oestreicher et al. ‘690 teaches a silver paste comprising the precursor and metallic silver [0008, 0014, 0028], meeting the limitations of the instant Claims.
Regarding Claim 12, modified Oestreicher et al. ‘690 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, Oestreicher et al. ‘690 further teaches an ethanol alcohol solvent [0019], meeting the limitations of the instant Claim.
Claims 13, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Oestreicher et al. EP 2838690 B1 in view of Chew et al. US 10910340 B1 as applied to Claims 1-12 and 14 above, further in view of NPL Zhang et al.
Regarding Claim 13, Oestreicher et al. ‘690 teaches the limitations above but does not expressly teach the paste comprises silver oxide.
However, notwithstanding the 112(b) rejections above, NPL Zhang et al. teaches adding silver oxide to a paste composition for sintering comprising a silver precursor in order to improve bonding strength, adhesion, and thermal conductivity (Section 3).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to add a silver oxide to the paste of Oestreicher et al. ‘690 in order to ensure the resulting silver film has improved bonding strength based on the teachings of NPL Zhang et al. at (Introduction), meeting the limitations of the instant Claim.
Regarding Claims 15 and 16, modified Oestreicher et al. ‘690 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, NPL Zhang et al. expressly teaches varying the content of silver oxide within a silver paste between 0 and 20% to evaluate its thermal conductivity effects (Section 2.1). The range overlaps the instantly claimed range of between 1:10 and 1:12.
See MPEP 2144.05. In cases where 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).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would have been obvious to one having ordinary skill in the art at the time of filing the invention to add silver oxide in an amount up to 20 weight% to the composition of modified Oestreicher et al. ‘690 with the reasonable expectation of forming a useful composition for sintering and in order to increase the thermal characteristics of the sintering paste based on the teachings of NPL Zhang et al. at (Abstract).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
CN 102921944 B teaches micron sized silver powder within a silver precursor-based paste.
Kang, Xi, et al. "Combining the single-atom engineering and ligand-exchange strategies: Obtaining the single-heteroatom-doped Au16Ag1 (S-Adm) 13 nanocluster with atomically precise structure." Inorganic Chemistry 57.1 (2018): 335-342. teaches silver precursors having the claimed structures.
Halaciuga, Ionel, and Dan V. Goia. "Preparation of silver spheres by aggregation of nanosize subunits." Journal of Materials Research 23.6 (2008): 1776-1784. teaches preparing silver spheres with an average particle size of 1.3 microns.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
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