DETAILED ACTION
Final
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 .
Response to Amendment
The preliminary amendment filed on 04/29/2026 is entered and acknowledged by the Examiner. Claims 1 and 15 have been amended. Claims 2, 11-14, 18-24, 29-33, and 40-163 have been canceled. Claims 1, 3-11, 13-17, 25-30, and 33-39 are currently pending in the instant application.
The rejection of claims 1, 3-5, 7-8, 10-11, 25, and 34-39 under 35 U.S.C. 102(a)(1) as being anticipated by Walker (JP 2020015921 A) is withdrawn in view of Applicant’s amendment.
The rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over Walker (JP 2020015921 A) in view of Chew (US 20220324021 A) is withdrawn in view of Applicant’s amendment.
The rejection of claims 9, 13, and 33 under 35 U.S.C. 103 as being unpatentable over Walker (JP 2020015921 A) in view of Boldt (US 20210222024 A1) is withdrawn in view of Applicant’s amendment.
The rejection of claims 14-17 and 29-30 under 35 U.S.C. 103 as being unpatentable over Walker (JP 2020015921 A) and Boldt (US 20210222024 A1) in view of St. Lawrence (US 2007/0148467 A1) is withdrawn in view of Applicant’s amendment.
The rejection of claims 26-28 under 35 U.S.C. 103 as being unpatentable over Walker (JP 2020015921 A) in view of Masashi (JP 2004238364 A) is withdrawn in view of Applicant’s amendment.
Information Disclosure Statement
The information disclosure statements (IDS) filed on 04/29/2026 and 06/18/2026 are in compliance with the provisions of 37 CFR 1.97 and have been considered by the examiner. An initialed copy accompanies this Office Action.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-5, 7, 8, 10, 15, 25, and 34-39 are rejected under 35 U.S.C. 103 as being unpatentable over by Walker (JP 2020015921 A) in view of US 2017/0236610 A1 (hereinafter Wu).
Regarding claims 1 and 15, Walker discloses a conductive ink composition comprising a silver complex formed by mixing a metal salt having a sterically bulky counterion (silver carboxylate) to a solvent (a dissolving agent) for dissolving the metal salt and a ligand catalyst to form the ink composition (See Abstract and 10th paragraph of unlabeled page 13). Walker discloses that the metal salt is a silver salt with a sterically bulky counterion being a long chain or branched carboxylate ion (See bottom of unlabeled page 11). The carboxylate ion is represented by R1COO- wherein R1 is a substituted or unsubstituted C1-C30 alkyl (See bottom of unlabeled page 11). In one embodiment, Walker discloses that the metal salt is silver neodacanoate (See 4th paragraph of unlabeled page 12, a silver decanoate). Thus, the silver carboxylate of Walker includes a branched carboxylate ion substituted or unsubstituted C1-C30 alkyl and meets the claimed silver decanoate (silver carboxylate) comprises at least one α-branched silver decanoate isomer as claimed. Walker discloses a solvent (a dissolving agent) is a lysing agent selected from an organic solvent, a chelating agent and a combination thereof (See 4th paragraph of unlabeled page 4). In one embodiment, Walker discloses that the solvent is terpineol (See 9th paragraph of unlabeled page 4). The terpineol of Walker meets the claimed dissolving agent. Walker discloses that the silver carboxylate (silver decanoate) is decarboxylate at a temperature of 100°C or less to form a conductive structure as claimed (See Abstract).
Walker failed to anticipate the instant claim because Walker does not disclose an adhesive promoter comprises a reactive silane as recited in amended claim 1.
Wu discloses an alkoxysilane used as an additive in a silver nanoparticle ink (conductive ink composition) in order to enhance adhesion of the silver nanoparticle ink onto a substrate (See Abstract and [0001]). Wu discloses that the alkoxysilane additive is a functionalized silane comprises a reactive silane (See [0043] and [0044]). The alkoxysilane additive of Wu fulfills the claimed adhesive promoter comprises a reactive silane as required in amended claims 1 and 15.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate the alkoxysilane additive of Wu into the conductive ink composition of Walker in order to enhance adhesion of the ink composition onto a substrate.
Regarding claim 3, Walker exemplify a metal salt of silver neodacanoate (See 4th paragraph of unlabeled page 12, a silver decanoate). Thus, the silver neodacanoate of Walker and meets the claimed plurality of α-branched silver decanoate isomers as required in claim 3.
Regarding claims 4 and 5, Walker discloses a silver salt including silver neodecanoate (See 5th paragraph of unlabeled page 3). The silver neodecanoate has a chemical structure of claim 4 with R1 and R2 being methyl (alkyl) group as recited in claim 5 and wherein R1, R2 and R3 together comprises 8 total carbon atoms as required in claim 4.
Regarding claim 7, Walker discloses a particle free ink composition (See bottom of unlabeled page 2).
Regarding claims 8 and 10-11, Walker discloses a terpineol (terpenoid) solvent (See 9th paragraph of unlabeled page 4).
Regarding claim 25, Walker discloses that the composition comprises a solubilizer that acts as a stabilizer (See bottom of unlabeled page 3). The solubilizer includes an acid-containing chelating agent (See 10th-11th paragraphs of unlabeled page 4). The acid-containing chelating agent meets the claimed acid stabilizer.
Regarding claim 34, Walker discloses that the conductive ink composition comprises 0.1-40 wt% of a metal salt (silver decanoate) in the composition (See 4th paragraph of unlabeled page 12 and 2nd paragraph of unlabeled page 15). The concentration of metal salt overlaps the claimed range.
Regarding claims 35 and 36, Walker discloses that the conductive ink composition has a viscosity of 5-1,000 centipoise (See 3rd paragraph of unlabeled page 10). The viscosity of Walker covers the claimed range.
Regarding claim 37, Walker discloses a conductive ink composition comprises of all the claimed ingredients and decarboxylate within the claimed temperature to form a conductive structure (See Claim 1 above). Therefore, the conductive structure of Walker inherently possess a resistivity property within the claimed range. It has been held by the court that “[p]roducts of identical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (fed. Cir. 1990). See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established."
Regarding claim 38, Walker discloses that the conductive ink composition comprises about 0.1 to about 40 wt% of silver concentration in the composition (See 6th paragraph of unlabeled page 7). The concentration of silver concentration overlaps the claimed range.
Regarding claim 39, Walker discloses a decarboxylate of silver carboxylate at a temperature of 100C or less to form a conductive (See Abstract).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Walker and Wu as applied to the above claims, and further in view of Chew (US 20220324021 A).
Walker and Wu are relied upon as set forth above.
With respect to claim 6, Walker and Wu discloses that the conductive ink composition comprises a metal salt containing silver metal and a branched carboxylate ion represented by R1COO- wherein R1 is a substituted or unsubstituted C1-C30 alkyl (See bottom of unlabeled page 11). Walker exemplify a silver salt of silver neodecanoate (See bottom of unlabeled page 8 and 4th paragraph of unlabeled page 12 of Walker), but does not disclose the specific silver salt as recited in claim 6.
Chew discloses a silver sintering paste composition that is printable (See [0059]). The printable silver paste composition of Chew is a conductive ink composition. Chew discloses that the silver paste comprises organic solvent including terpineols (See [0036]) and silver salt having a formula CnH2n+1COOAg with n being an integer of 7 to 10 and including silver neodecanoate, silver 2-ethylhexanoate, silver 2,2-dimethyloctanoate, silver 2,5-dimethyl-2-ethylhexanoate, and silver 2,2-diethylhexanoate (See [0030] and [0031]). The silver 2,2-dimethyloctanoate, silver 2,5-dimethyl-2-ethylhexanoate, and silver 2,2-diethylhexanoate of Chew having chemical structure as required in claim 6.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the conductive ink composition of Walker and Wu by substituting the silver neodecanoate of Walker with a silver 2,2-dimethyloctanoate, silver 2,5-dimethyl-2-ethylhexanoate, and silver 2,2-diethylhexanoate of Chew and the results would have been predictable because Chew discloses the conductive paste composition can includes at least one silver salt of neodecanoate, 2,2-dimethyloctanoate, 2,5-dimethyl-2-ethylhexanoate, and 2,2-diethylhexanoate.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Walker and Wu as applied to the above claims, and further in view of Boldt (US 20210222024 A1).
Walker and Wu are relied upon as set forth above.
With respect to claim 9, Walker and Wu did not disclose the conductive ink composition comprises a terpene solvent is a pinene or a limonene.
Boldt discloses an ink composition comprises a) a silver carboxylate and b) a terpene (See Abstract). Boldt discloses that the silver carboxylate is silver neodecanoate (See [0033] and [0088]-[0089]). The silver neodecanoate is a branched silver decanoate. Boldt discloses that the terpene includes orange terpene, limonene, pinene, or a combination thereof (See [0025]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the conductive ink composition of Walker and Wu by substituting the terpineol solvent of Walker with a terpene solvent of Boldt in order to dissolve the silver carboxylate.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Walker and Wu as applied to the above claims, and further in view of St. Lawrence (US 2007/0148467 A1).
Walker and Wu are relied upon as set forth above.
Regarding claims 16 and 17, Walker and Wu discloses a conductive ink composition comprises alkoxysilane additive having enhanced adhesion characteristic (See Abstract of Wu), but failed to disclose an adhesive promoter comprises an ethoxysilyl modified polyalkene and triethyloxysilyl modified poly-1,2-butadiene as required in the instant claims.
St. Lawrence discloses an adhesive promoter including alkoxysilane and triethyloxysilyl modified poly-1,2-butadiene (See [0061]). The silane-containing adhesion promoter of St. Lawrence fulfills the claimed silane adhesion promoter as required in the instant claims.
It would have been obvious for a skilled artisan at the time the invention of filed to substitute the alkoxysilane adhesive promoter of Wu with the triethyloxysilyl modified poly-1,2-butadiene of St. Lawrence into the conductive ink composition of Walker and Wu in order to improve the adhesion of the composition and the results would have been predictable.
Claims 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Walker and Wu as applied to the above claims, and further in view of JP 2004238364 A (hereinafter Masashi).
Walker and Wu are relied upon as set forth above.
Regarding claims 26-28, Walker and Wu discloses a conductive ink composition comprises a solubilizer that acts as a stabilizer and contains an acid (See bottom of unlabeled page 3 and 10th-11th paragraphs of unlabeled page 4 of Walker). Therefore, Walker discloses an acid stabilizer, but failed to disclose the acid stabilizer is an C6-C12 α-branched alkanoic acid, an α-branched decanoic acid isomer, and 2,2-dimethylhexanoic acid or 2,2-dimethylnonanoic acid as required in the instant claims.
Masashi discloses using a stabilizer including 2,2-dimethylnonanoic acid to stabilize a carboxylate/carbonate metal complex (See Abstract and [0022]). The 2,2-dimethylnonanoic acid of Masashi fulfills the claimed C6-C12 α-branched alkanoic acid, an α-branched decanoic acid isomer, and 2,2-dimethylnonanoic acid as required in the instant claims.
It would have been obvious for a skilled artisan at the time the invention of filed to incorporate the 2,2-dimethylnonanoic acid of Masashi into the conductive ink composition of Walker and Wu in order to improve stabilize the carboxylate/carbonate metal and/or conductive ink composition and the results would have been predictable.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
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.
Response to Arguments
Applicant’s arguments with respect to the claims above have been considered but are moot because the new ground 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHANH TUAN NGUYEN whose telephone number is (571)272-8082. The examiner can normally be reached M-F 9:00 AM to 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHANH T NGUYEN/Primary Examiner, Art Unit 1761
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