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 .
Response to Amendment
The preliminary amendment filed on 10/06/2025 is entered and acknowledged by the Examiner. Claim 1 has been amended. Claims 2, 12, 18-24, 31-32, and 40-163 have been canceled. Claims 1, 3-11, 13-17, 25-30, and 33-39 are currently pending in the instant application.
Drawings
The drawings filed on 09/04/2024 have been considered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-5, 7-8, 10-11, 25, and 34-39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2020015921 A (hereinafter Walker).
Regarding claim 1, 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).
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).
The reference specifically or inherently meets each of the claimed limitations in their broadest interpretations. The reference is anticipatory.
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.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Walker (JP 2020015921 A) as applied to the above claims, and further in view of US 20220324021 A (hereinafter Chew).
Walker is relied upon as set forth above.
With respect to claim 6, Walker 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), 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 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.
Claims 9, 13, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Walker (JP 2020015921 A) as applied to the above claims, and further in view of US 20210222024 A1 (hereinafter Boldt).
Walker is relied upon as set forth above.
With respect to claim 9, Walker does 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 by substituting the terpineol solvent of Walker with a terpene solvent of Boldt in order to dissolve the silver carboxylate.
Regarding claim 13, Boldt discloses that the conductive ink composition comprises additives including an adhesive promoter (See [0024]).
Regarding claim 33, claim 9 is incorporated therein. Walker also discloses that the composition comprises an acid-containing stabilizer (See 5th and 10th paragraphs of unlabeled page 4).
Claims 14-17 and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Walker (JP 2020015921 A) and Boldt (US 20210222024 A1) as applied to the above claims, and further in view of US 2007/0148467 A1 (hereinafter St. Lawrence).
Walker and Boldt are relied upon as set forth above.
Regarding claims 14-17 and 29, Walker and Boldt discloses a conductive ink composition comprises additives including an adhesive promoter (See [0024] of Boldt), but failed to disclose the adhesive promoter comprises a reactive silane, an alkoxylsilane, and a triethyloxysilyl modified poly-1,2-butadiene as required in the instant claims.
However, St. Lawrence discloses an adhesive promoter comprises a 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 incorporate the silane adhesive promoter of St. Lawrence into the conductive ink composition of Walker and Boldt in order to improve the adhesion of the composition and the results would have been predictable.
Regarding claim 30, 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.
Claims 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Walker (JP 2020015921 A) as applied to the above claims, and further in view of JP 2004238364 A (hereinafter Masashi).
Walker is relied upon as set forth above.
Regarding claims 26-28, Walker 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). 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 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.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KHANH T NGUYEN/Primary Examiner, Art Unit 1761