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 § 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 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.
Claim(s) 1, 5, 7-9, 11-13, and 15 is/are rejected under 35 U.S.C. 103 as obvious over Walker (WO2015/160938). Regarding claim 1, Walker discloses “an ink composition (title) for making a conductive (abstract) gold structure (abstract: group 11 element, paragraph 91: gold; Examiner notes that when choosing gold, the structure will be gold), the ink composition comprising: a gold (III) salt (paragraphs 91 and 138); and a complexing agent (paragraph 96), optionally further comprising a short chain carboxylic acid or salt thereof, wherein the gold (III) salt is gold (III) acetate (paragraph 92); and wherein the complexing agent is an alkyl amine or ammonia (paragraphs 96 or 118: NH3).” Examiner notes that Walker does not disclose specifically that the oxidation state of gold is 3, or that the gold salt is, for example, specifically, gold(III) carboxylate. However, paragraph 138 sets forth that the oxidation state of the generic metal M can be 3. The abstract discloses that the metal can be a group 11 metal and paragraph 91 specifically mentions that the metal can be gold, which is a group 11 metal. Walker also discloses that the counterion can be a carboxylate (paragraph 92), and that the carboxylate can be selected to be R1COO-, with R1 being C1-C30 alkyl (paragraph 92). Acetate fits this formula when R1 is C1 (that is, CH3). Finally, Walker discloses that the ligand can be a primary amine, especially tert-butylamine (paragraph 96) Therefore, Walker: a) specifically mentions gold can be chosen as the metal; b) specifically mentions that the oxidation state of the metal used can be chosen to be 3; c) specifically mentions R1COO- (with R1 being able to be chosen as CH3) can be chosen as the counterion; and d) specifically mentions tert-butylamine can be chosen as the ligand. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to select each component because each component is specifically disclosed by Walker as a possibility. Furthermore, it has been held that the selection of a known material based upon its suitability for its intended use is prima facie obvious. See MPEP §2144.07. Since Walker can be said to disclose that each component is suitable for their intended purpose, the selection of each is prima facia obvious. Regarding claim 5, since the short chain carboxylic acid or salt thereof is optional, nothing is recited which defines over the ink composition of Walker. Regarding claim 7, Walker further discloses “wherein the alkyl amine is a primary amine, a secondary amine, or a polyamine (paragraph 96).” Regarding claim 8, Walker further discloses “wherein the alkyl amine is selected from the group consisting of methylamine, dimethylamine, ethylamine, diethylamine, propylamine, dipropylamine, butylamine, dibutylamine, amylamine, isoamylamine, dipentylamine, and combinations thereof (paragraph 96).” Regarding claim 9, only that which is optional is recited; thus, the claim does not define over the ink composition of Walker. further discloses “wherein the short chain carboxylic acid is selected from the group consisting of formic acid, acetic acid, propionic acid, lactic acid, oxalic acid, citric acid, and citraconic acid (paragraph 208: R = 1).” Regarding claim 11, Walker further discloses “further comprising a solvent selected from the group consisting of ethanol, butanol, propylene glycol, water, and combinations thereof (paragraphs 132 or 99).” Regarding claim 12, Walker discloses all that is claimed, as in claim 1 above, including that “wherein the complexing agent is selected from the group consisting of methylamine, dimethylamine, ethylamine, diethylamine, propylamine, dipropylamine, butylamine (paragraph 96), dibutylamine, amylamine, dipentylamine, ammonia, and combinations thereof.” Regarding the limitation that “the gold(III) salt is gold(III) formate,” Walker discloses that the counter ion can be a carboxylate, but does not specifically disclose formate in paragraph 92. However, Walker specifically mentions using formate as a counterion (paragraph 118), and Examiner notes that formate is the simplest type of carboxylate. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use formate as the counterion of Walker because it has been shown to be suitable for the intended purpose and/or because it is the simplest carboxylate. See MPEP §2144.07. Regarding claim 13, Walker further discloses “wherein the complexing agent is selected from the group consisting of methylamine, dimethylamine, ethylamine, diethylamine, propylamine, dipropylamine, butylamine (paragraph 96), dibutylamine, amylamine, dipentylamine, ammonia, and combinations thereof, and wherein the short chain carboxylic acid is acetic acid (the short chain carboxylic acid is optional, and therefore does not define over the ink composition of Walker).” Regarding claim 15, Walker further discloses “further comprising a solvent selected from the group consisting of ethanol, butanol, propylene glycol, water, and combinations thereof (paragraphs 99 or 132)."
Claim(s) 1, 7, 8, 10, and 12-14 is/are rejected under 35 U.S.C. 103 as obvious over Wu et al. (US 2015/0344714). Regarding claims 1 and 12, Wu et al. disclose “an ink composition for making a conductive gold structure (paragraph 23), the ink composition comprising: a gold(III) (paragraph 23) salt (paragraph 24); and a complexing agent (paragraph 24), optionally further comprising a short chain carboxylic acid or salt thereof, wherein the gold(III) salt is gold (III) formate (paragraph 24: metal formates); and wherein the complexing agent is an alkyl amine or ammonia (paragraph 28: propylamine).” Wu et al. do not specifically mention the oxidation state of the gold in the salt as being (III). However, Wu et al. do disclose that when more than one oxidation state is available, any convenient form may be used as long as it is reducible to its zero-valent metal form (paragraph 26). Examiner asserts that a valence of III for gold was a known and/or convenient valency for gold. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use gold (III) as the valent form of gold because it was known in the art to be suitable for the intended purpose. See MPEP §2144.07. Furthermore, Wu et al. disclose that: a) the metal can be gold (paragraph 23); b) that the metal salt can be a metal formate (paragraph 24); and c) that the organic amine can be propylamine (paragraph 28). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to: a) choose gold as the metal; b) choose formate as the counterion; and c) choose propylamine as the organic amine because Wu et al. specifically mention being able to choose any of them, and/or because they are suitable for the intended purpose. See MPEP §2144.07. Regarding claim 7, Wu et al. further disclose “wherein the alkyl amine is a primary amine, a secondary amine, or a polyamine (paragraph 28).” Regarding claim 8, Wu et al. further disclose “wherein the alkyl amine is selected from the group consisting of methylamine, dimethylamine, ethylamine, diethylamine, propylamine (paragraph 28), dipropylamine, butylamine, dibutylamine, amylamine, isoamylamine, dipentylamine, and combinations thereof.).” Regarding claim 10, Wu et al. further disclose “further comprising methylene diamine or ethylene diamine (paragraph 28).” Regarding claim 13, Wu et al. further disclose “wherein the complexing agent is selected from the group consisting of methylamine, dimethylamine, ethylamine, diethylamine, propylamine (paragraph 28), dipropylamine, butylamine, dibutylamine, amylamine, dipentylamine, ammonia, and combinations thereof, and wherein the short chain carboxylic acid is acetic acid (this is an optional component which does not define over Wu et al.).” Regarding claim 14, Wu et al. further disclose “further comprising ethylene diamine (paragraph 28).”
Response to Arguments
Applicant's arguments filed 11/06/2025 have been fully considered but they are moot in view of the new grounds of rejection.
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.
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/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853