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 in the reply filed on January 20, 2026 is acknowledged.
Claims 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 20, 2026.
Claims 1-7 and 10 are pending, claim 1 is independent.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Examiner notes that applicant defines “cuboid silver powder” as “refers to a group of cuboid silver particles” (specification [0010]), but does not require a percentage or majority of the silver particles to be “cuboid”. Under broadest reasonable interpretation, a powder with two or more particles that are “cuboid” meets this limitation as presently recited.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Specifically, “There is provided” is language that can be implied.
Claim Objections
Claim 1 is objected to because of the following informalities: the parentheses around "Formula 1" shou. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: the parentheses around "Formula 2" should be removed, it is definitely included and the parentheses are unnecessary. Further, “is from” is redundant in line 3, and “from” should be deleted. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: the parentheses around "Formula 3" should be removed, it is definitely included and the parentheses are unnecessary. Further, “is from” is redundant in line 4, and “from” should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 2 and 3 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 2, it is indefinite if “L is a perimeter” the same “L is the perimeter” of claim 1 (from which claim 2 depends), as it is introduced with “a”. For purposes of examination it shall be considered to be the same “L”.
Regarding claim 3, claim 3 is rejected for its incorporation of the above due to its dependence on claim 2.
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 1-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tachika et al. (JP 2005/276773 A November 27, 2025 Google Patents machine translation and original for images), hereinafter Tachika (of record in the application).
Regarding claims 1 and 7, Tachika teaches a silver powder that is a polyhedral silver powder composed of 6+ planes including plate like shapes; shown to be in Fig. 3 inclusive of some particles that are generally rectangular (Fig. 3; Pg. 2 [6]; Pg. 5 [8]; inclusive of cuboid) and Fig. 3 shows silver particles with an average aspect ratio between 1.2 and 2.0 and meeting the claimed Formula 1 average value (Fig. 3). Tachika further teaches an "extremely small" specific surface area (Pg. 2 [6]) with specific examples including 0.20 m2/g, 0.30 m2/g and 0.31 m2/g (Pg. 5 [9]-[11]).
Examiner notes that the method for measuring aspect ratio and "BET" is product-by-process language, which provides no structural limitations beyond that of aspect ratio and specific surface area, which is addressed above. The structure implied by the process steps should be considered when assessing the patentability of product-by process claims over the prior art (MPEP 2113 I). In this instance, no additional structure is implied beyond aspect ratio and specific surface area, addressed above. The burden therefore shifts to applicant to come forward with a non obvious difference between the claimed product and the prior art product (MPEP 2113 II). Additionally, no specific plane is claimed for the cross-section and no number of particles is required to be an “average” for Formula 1.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Additionally, regarding average aspect ratio and Formula 1, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (MPEP 2114. 05 B). One of ordinary skill in the art would have adjusted the particle dimensions to improve dispersibility (Pg. 2 [6]-[7]).
Regarding claims 2-3, Tachika teaches each limitation of claim 1, as discussed above. Tachika further teaches Fig. 3 shows particles that meet the claimed circularity coefficient criteria (Fig. 3). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Additionally, regarding the circularity coefficient criteria, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (MPEP 2114. 05 B). One of ordinary skill in the art would have adjusted the particle dimensions to improve dispersibility (Pg. 2 [6]-[7]).
Regarding claims 4-5, Tachika teaches each limitation of claim 1, as discussed above. Tachika further teaches Fig. 3 shows particles that meet the claimed shape factor criteria (Fig. 3). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Additionally, regarding the shape factor criteria, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (MPEP 2114. 05 B). One of ordinary skill in the art would have adjusted the particle dimensions to improve dispersibility (Pg. 2 [6]-[7]).
Regarding claim 6, Tachika teaches each limitation of claim 1, as discussed above. Tachika further teaches an "extremely small" specific surface area (Pg. 2 [6]) with specific examples including 0.20 m2/g, 0.30 m2/g and 0.31 m2/g (Pg. 5 [9]-[11]) and the average particle diameter (50% D; i.e. D50) of the silver powder is 0.1-20 micron (Pg. 2 [7]), this calculates over the example range to 2x10-8m3/g to 6.2x10-6 m3/g). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Examiner notes that the method for measuring D50 and “BET” is product-by-process language, which provides no structural limitations beyond that of particle size and specific surface area, which is addressed above. The structure implied by the process steps should be considered when assessing the patentability of product-by process claims over the prior art (MPEP 2113 I). In this instance, no additional structure is implied beyond particle size and specific surface area, addressed above. The burden therefore shifts to applicant to come forward with a non obvious difference between the claimed product and the prior art product (MPEP 2113 II).
Regarding claim 10, Tachika teaches each limitation of claim 1, as discussed above. Tachika further teaches a conductive paste made of the silver powder (claims), and a polyhedral silver powder composed of 6+ planes including plate like; shown to be in Fig. 3 inclusive of some particles that are generally rectangular (Fig. 3; Pg. 2 [6]; Pg. 5 [8]; inclusive of cuboid).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784