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 1-5 and 7-10, in the reply filed on 10/27/2025 is acknowledged.
Claims 11-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/27/2025.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/27/2025 and 07/03/2024 are compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities:
In the final viscosity imitation in claim 1, it appears “electrical join composition” should be “electrical joint composition” . Appropriate correction is required.
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 1-5, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hanselmann et al. (US 20170369745 A1), herein Hanselmann.
In regards to claim 1, Hanselmann teaches an electrically conductive curable composition for joining a conductor to a contact comprising silver particles and a curable resin system [Abstract, 0002, 0012, claim 1]. The viscosity of the composition is 4 to 45 Pa s or 400 to 45,000 cps [0053]. This overlaps the claimed range.
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).
In regards to claim 2, Hanselmann further teaches the silver particles are present at 15 to 60 wt.% [0052]. This overlaps the claimed range.
In regards to claims 3-4, Hanselmann further teaches the silver particles have an average particle size, D50, of 1 to 25 microns [Abstract, 0012, 0021]. This overlaps the claimed ranges.
In regards to claim 5, Hanselmann further teaches the composition comprises a polyurethane resin (i.e., a low durometer elastomer).
Hanselmann differs from claim 5 by teaching polyurethane in a list of possible resins, such that it cannot be said that the polyurethane species is anticipated.
However, it would have been obvious of ordinary skill in the art before the effective filing date of the invention to have employed any of the resins taught by Hanselmann, including polyurethane. The motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
In regards to claim 8, Hanselmann further teaches the composition includes one or more hardeners (crosslinker, curing agents) [0037].
In regards to claim 10, Hanselmann further teaches the system is UV-curable and thus curable at room temp [0061].
Claims 1, 3-5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Theunissen et al. (US 20130224474 A1), herein Theunissen.
In regards to claims 1 and 7, Theunissen teaches a thermally curable adhesives that are suitable for use as electrically conductive materials in the fabrication of electronic devices, integrated circuits, semiconductor devices, passive components, solar cells, solar modules, and/or light emitting diodes to form interconnections [Abstract, 0005, 0007]. The adhesive composition comprises a curable resin and electrically conductive particles [Abstract, 0010, 0016, claim 1]. The electrically conductive particles comprise copper, silver, platinum, pallidum, gold, or tin [0034]. The viscosity of the composition is 11.3 – 340.8 Pa s or 11,300-340, 800 cps [0006, Table 1]. This overlaps the claimed range.
In regards to claims 3 and 4, Theunissen further teaches the average particle size of the metal particles is from 4 to 15 µm [0082]. This overlaps the claimed ranges.
In regards to claim 5, Theunissen further teaches the resin is polyisobutylene (i.e., a low durometer elastomer) [0020, claim 2].
Theunissen differs from claim 5 by teaching polyisobutylene in a list of possible resins, such that it cannot be said that the polyurethane species is anticipated.
However, it would have been obvious of ordinary skill in the art before the effective filing date of the invention to have employed any of the resins taught by Theunissen, including polyisobutylene. The motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
In regards to claim 8, Theunissen further teaches the composition further comprises a catalyst [0089-0090].
In regards to claim 9, Theunissen further teaches the electrically conductive particles comprise platinum [0034, claim 6].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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/ELIZABETH COLLISTER/ Primary Examiner, Art Unit 1784