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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/6/2026 has been entered.
Response to Arguments
The 35 U.S.C. 112(b) rejection is withdrawn in view of Applicant’s amendments.
Applicant’s arguments, see Remarks, filed 3/6/2026, with respect to the 35 U.S.C. 103 rejection over Britting (US 2020/0384579) in view of Drui (DE 2457198) have been fully considered and are persuasive because the prior art combination does not fairly teach or suggest the claimed elemental relationship (c2), and the prior art combination does not teach or suggest the claimed adhesive strength, nor does the adhesive strength appear to be inherent to the composition of the prior art in view of c2. The rejection has been withdrawn.
Election/Restrictions
The combination of elected species is allowable. The restriction requirement, as set forth in the Office action mailed on 5/22/2024, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement of 5/22/2025 is hereby withdrawn. Accordingly, the genus (i.e., full scope of claim 1) is now examined for patentability.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10, 12-13, and 17-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a bonding layer where M1 is copper and M2 is tin, does not reasonably provide enablement for the bonding layer as claimed where M1 is any metal having a melting point of at least 700°C, M2 is any metal having a melting point under 700°C, and the bonding layer has the claimed adhesive strength. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. The relevant Wands factors are analyzed below:
Breath of the claims: The list of possible metal elements for M1 and M2 is very large. For M1, an inexhaustive list includes: iron, cobalt, nickel, molybdenum, platinum, rhenium, silver, tungsten, and uranium. For M2, an inexhaustive list includes: gallium, potassium, rubidium, sodium, lead, tin, mercury, francium, aluminum, antimony, cadmium, magnesium, and plutonium. Further, based on Applicant’s specification, M1 and M2 may be alloys of these metals (see Spec., ¶ 73). Therefore, the list of possible metals for M1 and M2 is infinite. This tends to support a finding of non-enablement for the scope of the claimed invention.
State of the prior art: While the state of the prior art for metal bonding layers between ceramic and metal substrates is reasonably well developed for some metals M1 such as copper, and some metals M2 such as tin or indium, it is nowhere near as developed or is otherwise nonexistent for other metals (e.g., M1=uranium or M2=mercury). This tends to support a finding of non-enablement for the scope of the claimed invention.
Level of predictability in the art: The chemistry and metallurgy arts are considered to be unpredictable. This tends to support a finding of non-enablement for the scope of the claimed invention.
Amount of direction provided by the inventor: Applicant’s specification is almost exclusively limited to describing metal bonding layers where M1 is copper, and M2 is tin or an alloy thereof. Furthermore, Applicant’s specification is entirely silent as to the considerations required for achieving the claimed adhesive strength. This tends to support a finding of non-enablement for the scope of the claimed invention.
Existence of working examples: Applicant’s examples are exclusively directed to metal bonding layers where M1 is copper and M2 is tin. This tends support a finding of non-enablement for the scope of the claimed invention.
Quantity of experimentation needed to make or use the invention based on the content of the disclosure: Applicant’s specification is silent as to the selection of M1 other than copper, and the selection of M2 other than tin or an alloy thereof. A list of possible metals M1 and M2 is infinite, and due to the unpredictable nature of the chemical arts, lessons learned in experimentation with one metal do not necessary carry over for other metals. It is further expected that M1 and M2 would need to be thoroughly experimented not only for different combinations of metals, but also by varying their concentrations in the bonding layer, as well as selections for M3 and M4. This experimentation would need to be carried out not only to discover working bonding layer compositions, but working bonding layer compositions that also provide the claimed adhesive strength. The specification provides no guidance for achieving such a bonding layer outside of selecting copper for M1 and tin for M2. Thus, the amount of experimentation required to determine the compositions covered by the scope of the invention is vast. This tends to support a finding of non-enablement for the scope of the claimed invention.
An analysis of the relevant Wands factors strongly supports a finding of non-enablement for the scope of the claimed invention because Applicant’s disclosure does not inform one skilled in the art how to make the full scope of the claimed invention without undue experimentation. Dependent claims 2-10, 12-13, and 17-20 are rejected for the same reasons as claim 1.
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 1-10 and 12-20 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.
Claim 1 recites: “a metal M2 having a melting point of less than 700°C…a metal M4 selected from the group consisting of bismuth, gallium, zinc, indium, germanium, aluminum and magnesium”. This limitation is indefinite. With the exception of germanium, all of the metals listed as M4 have a melting point under 700°C and therefore can also be considered as metal M2. It is impossible for one of ordinary skill in the art to determine whether a bonding layer containing, for example, bismuth and zinc, falls under the claimed invention because there is no way to identify which of bismuth or zinc should be considered M2 or M4. The relation (c2) would give two different results depending on which metal is selected as M2 or M4. Accordingly, one pair could meet (c2) while the other pair would not. In such a case, it would be unclear whether such a bonding layer meets the claimed bonding layer or not. For purposes of examination, M2 will be considered to refer only to tin.
It is also unclear how relations (c2) and (c3) should be calculated if there are more than one metal M2 and more than one metal M4. Do M(M2) and M(M4) refer to the aggregate of metals M2 and M4, or should M(M2) and M(M4) refer to an arbitrarily chosen metal for M2 and M4? For purposes of examination, it is presumed that M(M2) refers only to tin and M(M4) refers to the total of the metals M4 recited by claim 1.
Claim 1 recites “metal M3 selected from the group of active metals”. The phrase “active metals” is not defined in the specification, not specified by the claim, nor is it a clearly delineated group of metals known by those skilled in the art. It is thus unclear exactly what are the metals Applicant considers to be an “active metal”. While one of ordinary skill in the art might consider the metals listed in claim 6 to be “active metals”, it is presumed that claim 6 further limits the “group of active metals” recited by claim 1 and therefore the “group of active metals” in claim 1 includes other metals. If so, what these other metals? For purposes of examination, it is presumed that the “active metals” are those listed in claim 6.
Claim 17 recites: “the metal M2 is [] an alloy selected from the group consisting of tin-copper alloys, tin-bismuth alloys, tin-antimony alloys, tin-zinc-bismuth alloys, and indium-tin alloys.” Claim 1, which claim 17 depends from, requires “M2 having a melting point of less than 700°C…M(M2)EDX = 10 – 20 weight percent”.
EDX is a technique for determining elemental composition based off the X-rays emitted from an atom when excited. Hence, one of ordinary skill in the art would expect M2 to refer to an elemental metal, not an alloy. If M2 could be an alloy such as tin-copper, it is clear that copper is not a metal having a melting point of less than 700°C and therefore should not be included in M(M2). On the other hand, if M2 can be an alloy such as tin-copper, what exactly is (M2)EDX measuring? If (M2)EDX is measuring tin and copper together, how does EDX differentiate between copper as part of the M2 alloy as opposed to copper selected as M1?
If M2 is an alloy such as tin-bismuth or indium-tin, a part of the metal M2 is also M4, rendering the claim limitation [M(M4)/M/(M2)]ICP from claim 1 unclear as to what is being measured – is it [Bi]/[Sn] or [Bi]/([Sn]+[Bi])? If the latter, how does ICP differentiate between bismuth as part of the M2 alloy as opposed to bismuth selected as M4? It is unclear how to interpret claim 17 in view of claim 1, as it directs measurements of things that appear to be impossible. Accordingly, this portion of claim 17 has not been afforded an interpretation for purposes of examination.
Dependent claims not addressed are indefinite for one or more of the reasons given above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784