DETAILED ACTION
Examiners’ Note
This office action is in response to applicants’ amendments to the claims and remarks filed July 14, 2026. Claims 1-19 and 21-28 are pending.
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 1-13, 17-19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al. (WO 91/17858 A1).
Regarding applicants’ claims 1 and 18, Davis et al. disclose a solder paste made from solder spheres/powder (considered solder particles), and a solder paste vehicle, the solder paste vehicle having a solvent and a fluxing agent, where the fluxing agent has a formula of a dicarboxylic acid (a carboxylic acid) and where the solvent may be selected from a group of compounds including 1,2-propyldiol and 1,3-propyldiol (page 3 lines 14-16 and page 5 lines 13-20). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select a solvent from those disclosed, including solvents such as 1,2-propyldiol as presently required.
With regards to the solder being lead-free Davis et al. disclose solder material comprising a metal selected from lead, tin, antimony, silver, and mixtures thereof (page 15 lines 6-9). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select a solder composition from those disclosed, including solder compounds which do not include lead (lead-free).
Regarding applicants’ claim 2, both applicants and Davis et al. (page 4 lines 33-34) disclose the selection of malic acid as the carboxylic acid. Given that identical materials are expected to exhibit identical properties, malic acid as disclosed by Davis et al. would be expected to function in a manner identical to applicants’ disclosed carboxylic acid including being configured to generate in combination with the alcohol, a reducing agent when heated as part of the soldering process.
Regarding applicants’ claims 3 and 4, Davis et al. disclose malic acid (C4H6O5) (page 4 lines 33-34).
Regarding applicants’ claim 5, Davis et al. disclose the malic acid to be present at about 0.1 to about 60 wt% of the vehicle but do not appear to explicitly disclose the proportion within the solder paste. However the discovery of a working amount of solder vehicle and solder powder is within the ordinary level of skill. One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to discover a workable range of proportions for the solder vehicle and solder powder. There is a reasonable expectation that the workable range will result in proportions falling within, or at least overlapping applicants’ claimed proportions, where Davis et al. disclose examples where ethe solder is 90wt.% and malic acid is 1.0% (example 19).
Regarding applicants’ claim 6, Davis et al. disclose that the solvent may be selected from a group of compounds including 1,2-propyldiol and 1,3-propyldiol (page 3 lines 14-16 and page 5 lines 13-20). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select a solvent from those disclosed including solvents such as 1,2-propyldiol as presently required.
Regarding applicants’ claims 7, Davis et al. disclose the solder vehicle to contain 0.1 to 60 wt% malic acid (page 4 lines 33-34), with the remaining portion being the alcohol the proportions disclosed overlap applicants’ claimed proportions. One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select proportions from within those disclosed including proportions which fall within applicants’ claimed range.
Regarding applicants’ claim 8, Davis et al. do not appear to explicitly disclose the ratio of solder vehicle to solder particles. However the discovery of a working amount of solder vehicle and solder powder is within the ordinary level of skill. One of ordinary skill in the art before the effective filing date of applicants’ invention would have found it obvious to discover a workable range of proportions for the solder vehicle and solder powder. Given examples containing ~90 wt% solder particles there is a reasonable expectation that the workable range at least overlaps applicants’ claimed range.
Regarding applicants’ claim 9, Davis et al. discloses a solder paste made from solder spheres/powder (considered solder particles), and a solder paste vehicle, the solder paste vehicle having a solvent and a fluxing agent, where the fluxing agent has a formula of a dicarboxylic acid (a carboxylic acid) and where the solvent may be selected from a group of compounds including isopropanol, 1,2-propyldiol and 1,3-propyldiol (page 3 lines 14-16 and page 5 lines 13-20). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select a solvent from those disclosed including solvents such as 1,2-propyldiol as presently required.
The alcohol is the solvent and therefore meets the requirement that the solder material include both an alcohol and a solvent.
With regards to the solder being lead-free Davis et al. disclose solder material comprising a metal selected form lead, tin, antimony, silver, and mixtures thereof (page 15 lines 6-9). One of ordinary skill in the art before the effective filing date of applicants claimed invention would have found it obvious to select a solder composition form those disclosed, including solder compounds what do not include lead (lead-free).
Regarding applicants’ claim 10, 1,2-propyldiol and 1,3-propyldiol are polar solvents.
Regarding applicants’ claim 11, Davis et al. disclose that the solvent may be isopropanol (page 5 lines 13-20).
Regarding applicants’ claim 12, Davis et al. disclose the solder vehicle to contain 0.1 to 60 wt% malic acid (page 4 lines 33-34), with the remaining portion being the alcohol the proportions disclosed overlap applicants’ claimed proportions. One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select proportions from within those disclosed including proportions which fall within applicants’ claimed range.
Regarding applicants’ claims 13 and 17, Davis et al. do not appear to explicitly disclose the ratio of solder vehicle to solder particles. However the discovery of a working amount of solder vehicle and solder powder is within the ordinary level of skill. One of ordinary skill in the art before the effective filing date of applicants’ invention would have found it obvious to discover a workable range of proportions for the solder vehicle and solder powder. Given examples containing ~90 wt% solder particles there is a reasonable expectation that the workable range at least overlaps applicants’ claimed range.
Regarding applicants’ claims 19 and 21, Davis et al. disclose solder material comprising a metal selected from lead, tin, antimony, silver, and mixtures thereof (page 15 lines 6-9), disclose a range of dicarboxylic acids and solvents (page 3 lines 14-16 and page 5 lines 13-20). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select a solder, dicarboxylic caid, and solvent form those disclosed including combinations where the evaporation temperature of the solvent and dicarboxylic acid are below that of the soldering temperature for which the paste is configured.
Allowable Subject Matter
Claims 14-16 is 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. Davis et al. discloses a solder paste made from solder spheres/powder (considered solder particles), and a solder paste vehicle, the solder paste vehicle having a solvent and a fluxing agent, where the fluxing agent has a formula of a dicarboxylic acid (a carboxylic acid) and where the solvent may be selected from a group of compounds including 1,2-propyldiol and 1,3-propyldiol (page 3 lines 14-16 and page 5 lines 13-20). Davis et al. do not disclose any of the combinations of an acid and alcohol as required by claim 14. Further there is no motivation such that one of ordinary skill in the art before the effective filing date of applicants’ claimed invention to modify the acid and alcohol such to arrive at a combination as claimed.
Claim 22-27 allowed. Huang et al. disclose a solder paste comprising free of toxic lead, metal filler particles (metal solder particles), carboxylic acid, and liquid transient surfactant such as ethylene glycol (an alcohol as claimed) (col. 1 lines 42-55, col. 2 lines 11-30, and col. 4 lines 25-46). Huang et al. however include additional components. Claim 21 uses the transitional phrase “consisting of” which limits the claim to metal solder particles and a single component that is an alcohol, ester or aldehyde. There is no motivation such that one of ordinary skill in the art would have modified the solder paste of Huang et al. to only include metal solder particles and an alcohol, ester or aldehyde. Given the use of closed transitional language thereby excluding any other components in the claimed lead-free solder, claim 22 is found it distinguish over the prior art and is allowed.
Claim 28 is 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. Huang et al. disclose a solder paste comprising free of toxic lead, metal filler particles (metal solder particles), carboxylic acid, and liquid transient surfactant such as ethylene glycol (an alcohol as claimed) (col. 1 lines 42-55, col. 2 lines 11-30, and col. 4 lines 25-46), but does not appear to explicitly disclose the metal particles to comprise first metal particles and second metal particles where the first metal particles have a melting temperature below the melting temperature of the second metal particles. There is no motivation such that one of ordinary skill in the art would have found it obvious to modify the solder paste to conform to the claimed metal particle configuration.
Response to Amendments/Arguments
Applicants’ amendments to the claims have overcome the rejections over Huang et al. and under 35 U.S.C. 112(b). Following further search and consideration of applicants’ claims as amended, new grounds of rejection have been identified and set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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/Adam Krupicka/Primary Examiner, Art Unit 1784
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