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 .
Status of the Claims
Claims 1-13 are pending and are currently under examination.
Claim Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
Claim 13 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a well asserted utility or a well-established utility.
In regard to claim 13, the four statutory classes are product, apparatus, composition and method. A “use of a solder paste” would not be classified in any of these statutory classes and therefore would not meet 35 U.S.C. 101.
Claim 13 is also rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Specifically, because the claimed invention is not supported by either a well asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
In regard to claim 13, it is unclear what the scope of a “use of a solder paste” would include or exclude
and therefore the scope of this claim would be indefinite.
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.
Claims 1-2 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue et al. (US 2015/0343571).
In regard to claim 1, Inoue et al. (‘571) discloses a flux having 10 to 30 mass percent of Acrylic resin (A); 10 to 30 mass percent of acrylic resin (B); 0 to 20 mass percent of other base resins; 0 to 30 mass percent of an activator; 0 to 13 mass percent of a thixotropic agent; and 0 to 35 mass percent of an organic solvent [0037-0043]. Acrylic resin (A), for instance, may be methacrylic acid [0022-0025] and acrylic resin (B), for instance, may be octyl(meth)acrylate [0022-0025] and the other base resin may be styrene-maleic acid resin [0033]. Thus, the acid resins disclosed by Inoue et al. (‘571) may be 10 to 50 mass percent and the other component, octyl(meth)acrylate may be 10 to 30 mass percent, which would overlap the ranges of the instant invention, thereby establishing prima facie obviousness. MPEP 2144.05 I. Next, the activator in Inoue et al. (‘571) is disclosed as including amines [0034] and as such the 0 to 30 mass percent disclosed in Inoue et al. (‘571) would encompass the range of the instant invention. Additionally, the organic solvent of Inoue et al. (‘571) at 0 to 35 mass percent would overlap the claimed range of organic solvent (10 to 60 wt%), thereby establishing prima facie obviousness. MPEP 2144.05 I. The thixotropic agent disclosed in Inoue et al. (‘571) is not required and therefore the scope disclosed in Inoue et al. (‘571) would overlap that of the instant invention. MPEP 2111.03 and MPEP 2144.05 I.
With respect to the recitation “wherein the flux is characterized in that it undergoes a weight loss of ≥50 wt.% upon reaching a temperature of 280°C during a thermogravimetric analysis carried out in the range from 25 to 350°C at a heating rate of 10 K/min and with the addition of synthetic air” in claim 1, Inoue et al. (‘571) discloses a substantially similar composition. Therefore, this property would be expected. MPEP 2112.01 I.
In regard to claim 2, Inoue et al. (‘571) discloses subjecting acrylic resin (A) and acrylic (B) to radical polymerization which with using (meth)acrylic acid with another resin such as octyl(meth)acrylate would provide (meth)acrylic copolymers [0028].
In regard to claim 9, Inoue et al. (‘571) discloses wherein acrylic resin A would have an acid value of 0 to 70 mg KOH/g and acrylic resin B would have an acid value of 30 to 230 mg KOH/g [0027]. Inoue et al. (‘571) also discloses wherein the acrylic resins A and B have a weight average molecular weight of 30000 or less [0029].
In regard to claim 10, Inoue et al. (‘571) discloses wherein acrylic resin A would have an acid value of 0 to 70 mg KOH/g and acrylic resin B would have an acid value of 30 to 230 mg KOH/g [0027]. Inoue et al. (‘571) also discloses wherein the acrylic resins A and B have a weight average molecular weight of 30000 or less [0029].
In regard to claim 11, Inoue et al. (‘571) discloses wherein acrylic resin B would have an acid number in the range of 30 to 230 mg KOH/g, which would overlap the range of the instant invention [0027]. MPEP 2144.05 I.
In regard to claim 12, Inoue et al. (‘571) discloses wherein the solder paste has the flux
would have a mass ratio of approximately 8:92 to 15:85 of flux to solder alloy such as Sn-Cu type
alloys, which would be with in the range of the instant invention [0045-0046].
In regard to claim 13, Inoue et al. (‘571) discloses using the solder paste to join
electronic device components [0047].
Still regarding claim 13, “for connecting electronic components to substrates or for
producing solder deposits on substrates” would be an intended use. MPEP 2111.02 II.
Allowable Subject Matter
Claims 3-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In regard to claim 3, Inoue et al. (‘571) fails to specify wherein the acidic oligoester(s) and the acidic (meth)acrylic copolymers are each carboxyl-group-bearing resins.
In regard to claims 4-5, Inoue et al. (‘571) fails to specify wherein the acidic oligoester(s) has/have an acid number in the range of 150 to 300 mg KOH/g and a weight average molecular weight in the range of 300 to 600.
In regard to claim 6, Inoue et al. (‘571) fails to specify wherein the acidic oligoester(s) is/are composed of one or different low-molecular weight polycarboxylic acids as carboxyl building blocks.
In regard to claims 7-8, Inoue et al. (‘571) fails to specify wherein the acidic oligoester(s) is/are linear acidic oligoesters having one or two terminal carboxyl groups or a mixture of such oligoesters.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. At this time, the Examiner is not aware of additional prior art pertinent to the pending claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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