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
Claims 31-37 of Group II, are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 4, 2026.
Applicant's election with traverse of claims 20-30 of Group I, in the reply filed on June 4, 2026 is acknowledged. The traversal is on the ground(s) that although the prior art discloses the same composition for the same purpose and the sole difference is an optimized parameter with an otherwise identical system, it serves an entirely different purpose (nanoparticle nucleation and growth in solution) from the claimed composition (a sinterable paste for forming electrically and thermally conductive composite materials).
Applicant argues that Liu is not directed to a sintering paste, does not disclose a co-solvent as a separate component, and does not teach or suggest any sintering function, conductivity-enabling properties, or deoxidation of silver oxide on particle surfaces.
Applicant is respectfully apprised that this is not found persuasive because the features upon which Applicant relies (i.e., sintering paste, co-solvent as a separate component, sintering function, conductivity-enabling properties, and deoxidation of silver oxide on particle surfaces) are not recited in the rejected claims. 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).
. In addition, Applicant argues that the hydroxyl concentration range of 2 M to 20 M recited in claim 20 is not a mere optimization of Liu’s system because Liu’s product is a dilute silver ion solution in essentially neat glycerol.
Applicant is respectfully apprised that Liu’s product is indeed silver nanoparticles dispersed in glycerol and water (para 4.2 of page 16252). Accordingly, the hydroxyl concentration range of 2 M to 20 M is indeed a result of routine experimentation by one of ordinary skill in the art at the time, for the purpose of providing the desired optimum or workable range, in the absence of a clear showing to the contrary.
Moreover, there are several prior art rejections that have been previously made of record in the November 30, 2023, written opinion of the PCT application.
Accordingly, the requirement is still deemed proper and is therefore made FINAL.
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 20-30 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.
It is unclear in claim 20, what the term “deoxidizer solvent” means. What does it do? Is the deoxidizer solvent chemically deoxidizing or reducing the plurality of silver particles?
Furthermore, in the last two lines of claim 20, it is unclear how the concentration of the hydroxyl groups of 2 M to 20 M is calculated.
Does the unit “M” stand for molarity? Ordinarily, the molarity M represents the concentration of a solute dissolved by solvent(s) in a solution. However, in the instant case, it appears that the hydroxyl groups of the solvents themselves are deemed to be the solute in the solution, which does not appear to make sense unless Applicant has a special definition and hence a special formula to calculate the concentration of the hydroxyl groups.
Claims 21-30 depend on and include all the subject matter of claim 20, but fail to provide any solutions to the indefinite issues described above.
Clarification accompanied by relevant citation(s) from the specification and/or a teaching reference, are required.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. EP-2911979-B1, US 2014/0030509, US 8,950,653 and US 2015/0353804 each teach various features of the present claims.
Any inquiry concerning this communication should be directed to Sow-Fun Hon whose telephone number is (571)272-1492. The examiner is on a flexible schedule but can usually be reached during a regular work week between the hours of 10:00 AM and 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Aaron Austin, can be reached at (571)272-8935. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/Sophie Hon/
Sow-Fun Hon
Primary Examiner, Art Unit 1782
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