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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02 FEB 2026 has been entered.
Status of Claims
Claims 1-12 are examined in the office action none of which were amended in Applicant's reply filed on 02 FEB 2026.
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.
List 1
Element
Instant Claims
(weight%)
US’287
(wt%)
Bi
30 – 60
2 to 60 wt % Bi
Ag
0.7 – 2.0
up to 4.5 wt % Ag
Cu
> 0 – 1.00
up to 2 wt % Cu
Ni
0.01 – 1.00
up to 1.5 wt % Ni
Sb
0.2 – 1.5
up to 12 wt % Sb
P, Ge, Ga, As,
Fe, Co,
Pd, Zr, Zn,
Pb
Claim 2: at least one selected from the group consisting of: at least one of P, Ge, Ga, and As: 0.1% or less in total,
at least one of Fe and Co: 0.1% or less in total,
Pd: 0.1% or less, Zr: 0.1% or less, Zn: 0.1 % or less, and
Pb: 0.02% or less
up to 1.5 wt % Co
P,
Ge,
Ga,
As,
Co,
Pd,
Pb
Claim 3: at least one selected from the group consisting of:
P: less than 0.01%,
Ge: 0.01% or less,
Ga: less than 0.01%,
As: more than 0.001% and 0.01% or less,
Co: less than 0.01%,
Pd: 0.01% or less, and
Pb: less than 0.004%
up to 1.5 wt % Co
Sn
Balance
Balance
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0070287 A1 of Mutuku (US'287) cited in the IDS.
Regarding claims 1-12, US 2020/0070287 A1 of Mutuku (US'287) teaches {abstract, [0007]} low melting temperature (e.g., liquidus temperature below 210° C.) SnBi alloys, with a composition, [0007] “In one embodiment, a SnBi solder alloy consists of: 2 to 60 wt % Bi; optionally, one or more of: up to 16 wt % In, up to 4.5 wt % Ag, up to 2 wt % Cu, up to 12 wt % Sb, up to 2.5 wt % Zn, up to 1.5 wt % Ni, up to 1.5 wt % Co, up to 1.5 wt % Ge, up to 1.5 wt % P, and up to 1.5 wt % Mn; and a remainder of Sn, wherein the solder alloy has a liquidus temperature below 210° C”, wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. In the case where the claimed ranges "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 re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. It is noted that the instant claims recite the transitional phrase “consisting of” which excludes any element, step, or ingredient not specified in the claim. See MPEP § 2111.03. Although the reference alloy may allow additional elements other than those explicitly claimed in the instant claims, the usage of the alloy as disclosed is fitting (meets the instant claimed limitations) as prior art since the prior art allows the range of additional elements to be as low as zero or those elements as optional constituents of the alloy.
It is noted that the prior art does not explicitly teach of the limitation of the claimed formulaic expressions and the ranges (relationships (1), (2) and (3)) of the instant claims 1, 2 and 3. However, as the prior art discloses a composition wherein the claimed ranges of the various elements of the instant alloy overlap or lie inside the ranges of various elements of the alloy of the prior art (see compositional analysis above of claim 1 above), the ranges of the formulaic expressions of the instant claims would also overlap or lie inside the values of the prior art resulting from the instant formulaic expressions. In addition, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Saklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75. Saklatwalla v. Marburg provides that “It requires something more than a mere new ratio of proportions in the ingredients constituting an article to render the product patentable. It was stated in the case of Bethlehem Steel Co. v. Churchward International Steel Co. (Carnegie Steel Co., Intervener), 3 Cir., 1920, 268 F. 361, 364, as follows: "But novelty of proportions in the sense of the patent law involves something more than figuring out proportions differing from any that were known before. It involves new results from new proportions, developing a new metal, or, it may be, an old metal with new characteristics of structure or performance, embracing entirely new, or at least substantially enhanced, qualities of utility. [Milligan Higgins] Glue Co. v. Upton, 97 U.S. 3, 24 L.Ed. 985; Welling v. Crane, C.C., 21 F. 707; Brady Brass Co. v. Ajax [Metal Co., 3 Cir.], 160 F. 84, 90, 87 C.C.A. 240; Pittsburgh Iron Steel [Foundries] Co. v. Seaman-Sleeth Co., [3 Cir.] 248 F. 705, 160 C.C.A. 605; Miami Copper Co. v. Mineral Separation, Ltd., [3 Cir.] 244 F. 752, 157 C.C.A. 200."”
Regarding claims 4-12, the prior art teaches “[0036] The solder alloys described herein may be used either in paste form (e.g., mixture of solder powder and flux), as a solder ball, as a solder preform, as a solder bar, a solder powder, or any other form that is suitable for electronic and microelectronic consumer applications and other relevant and/or related applications. The solder alloys of the present disclosure may be particularly suitable for, but not limited to, forming solder joints, such as homogeneous solder joints or hybrid solder joints with SAC alloys.” thereby reading on the solder ball, paste and joint of the instant claims.
Response to Arguments
Applicant's arguments filed 0 regarding the rejections of instant claims 1-12 under 35 U.S.C. 103 as being unpatentable over US 2020/0070287 A1 of Mutuku (US'287) have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., "both high hardness in high-temperature environments and heat cycle resistance" "beneficial crystal grain size, hardness, and EM resistance") are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
With respect to the arguments that the embodiments provided by the prior art do not teach the claimed matter, the arguments have been fully considered but they are not persuasive. Patents are relevant as prior art for all they contain. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).See MPEP § 2123.
Instant claims, specifically the independent claims, do not recite any properties that are recited in the arguments (Tables in the specification and declaration). Instant claims recite compositional range for the elemental constituents and also ranges for Relations that involve some of these elements. As noted above, the prior art of record meets the composition as well as the relations recited in the instant claims thereby rendering the instant claims obvious over the prior art of record.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02(d). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP § 716.02(d) II.
Regarding the arguments directed to prior declaration under 37 CFR 1.132 filed 12 June 2025, the declaration sets forth “a Table of additional experiments of comparative examples” on page 3 of the declaration. However, as noted in the prior action, the data provided in the Table 1 contains illegible characters and is hard to read. It is noted that the Applicant comparative samples include two embodiments (No. 22 and No. 25) from the prior art of US’287 but the Table fails to contain any of the additional compositional components of instant claims 2 and 3. Moreover, all of samples provided has the exact amount of Bi, 56.9. Closer look at the data indicates that the table in the declaration does not compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. Moreover, as noted above, none of the claims recite the features that are being argued.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733