DETAILED ACTION
Examiner’s Note
This office action is in response to applicants’ amendments to the claims and remarks filed April 1, 2026. Claims 1-2 and 4-9 are pending.
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kikuchi et al. (JP 2020035979A, references herein made to the English translation reformatted from EPO espacenet dated January 3, 2025).
Regarding applicants’ claim 1-2, Kikuchi et al. disclose the production of copper particles for a paste for bonding semiconductor devices and electronic components, but do not appear to explicitly disclose the particles to be oxide-containing particles in which an absorption spectrum of the particles dispersed in 1 x 106 times by mass of ethanol, as measured by spectrophotometer, has an absorption peak in a range of wavelengths of from 600 to 1000nm. However substantially identical materials, treated in a substantially identical manner, are expected to yield products exhibiting substantially identical properties and structure.
Applicants disclose a process whereby a copper compound, shape stabilizer, and reducing compound are mixed in an organic solvent (paragraph 0021) where: examples of the copper compound include copper oxide, copper hydroxide, copper nitride, and copper carboxylate (paragraph 0022), examples of the shape stabilizer may include an amine compound and a carboxylic acid (paragraph 0024), examples of the reducing compound include hydrazine derivatives (paragraph 0029), and examples of the organic solvent include alcohols such as 1-propanol, 2-propanol, butanol, pentanol, hexanol, heptanol, and ethylene glycol (paragraph 0031).
Kikuchi et al. disclose a process where examples of the copper compound include copper oxide, copper hydroxide, copper nitride, and copper carboxylate (page 5 lines 4-7), the mixture including carboxylic acid and amine compounds (page 6 lines 22-424 and page 8 lines 5-7), where examples of the reducing compound include hydrazine derivatives (page 9 lines 13-21), and examples of the organic solvent include alcohols such as 1-propanol, 2-propanol, butanol, pentanol, hexanol, heptanol, and ethylene glycol (page 11 lines 13-17).
Given the use of substantially identical mixtures, the copper particles produced by Kikuchi et al. would be substantially identical to the particles produced by applicants, and therefore would exhibit substantially identical properties and structure, including satisfying the claimed physical parameters as well as the requirement of an absorption spectrum of the oxide-containing particles dispersed in 1 x 106 times by mass of ethanol, as measured by spectrophotometer, has an absorption peak in a range of wavelengths of from 600 to 1000nm.
Regarding applicants’ claims 4-7, Kikuchi et al. disclose copper particles for bonding, a bonding paste, a semiconductor device manufactured using the bonding paste, and an electric/electronic component (page 1 lines 17-19) and disclose that “The semiconductor device and the electric/electronic components of the present embodiment are excellent in reliability because they are joined using the above-mentioned joining paste” (page 20 lines 21-23).
Regarding applicants’ claims 8 and 9, for those reasons as discussed above with respect to claim 1 the copper particles of Kikuchi et al. are expected to be substantially identical to those produced by applicants and therefore would satisfy proportional requirements of claims 8 and 9.
Response to Arguments
Applicants’ arguments filed April 1, 2026 have been considered but have not been found to be persuasive.
Applicants argue that Kikuchi contains no teaching or measurement of the claimed absorption spectrum and that applicants’ disclosure treats that measurement as a defining feature of the particle. Applicants argue that Kikuchi describes copper particles principally in terms of average particle diameter without teaching the claimed nanoscale proportions. Applicants argue that Kikuchi focuses on producing bonding copper particles in contrast to applicants’ disclosure which defines oxide-containing particle as containing metallic copper and at least one copper oxide.
However obviousness is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with that of applicants’. Further characterization of a material by a different standard, or the discovery of a new or unappreciated property does not make an old composition newly patentable. While Kikuchi may not have been motivated to achieve a specific absorption measurement, the particles would be expected to be substantially identical to applicants’ particles as articulated in the rejections above. Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection and the examiner presents evidence or reasoning to show inherency the burden of production shifts to applicant (MPEP 2112 V). While applicants argue that there is no expectation of success to arrive at applicants’ claimed invention, the expectation is in-and-of-itself the substantially identical materials and steps as reasoned in the rejection of claim 1 above. The PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same (MPEP 2112 V).
Applicants have not provided evidence or persuasive articulated reasoning demonstrating that the particles of Kikuchi, particularly given the selection of substantially identical materials, would not exhibit an absorption spectrum which satisfies applicants’ claimed requirements. Absent supporting evidence, the claimed particles are not found to distinguish over the particles disclosed by Kikuchi, and the rejections of record are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Adam Krupicka/ Primary Examiner, Art Unit 1784
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