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 .
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.
Claims 1-20 are pending.
Election/Restrictions
Applicant’s election of Group I, claims 1-9, 17-20 in the reply filed on 08/17/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim(s) 10-16 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/17/26.
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-9, 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamai (U.S. 2020/0095370) in view of Obata (EP 2099036) in view of Abe (U.S. 2010/0012362), with evidence from the Silicic acid Britannica NPL document and from Yundt (U.S. 4,199,649)
Regarding claims 1-9, 17-20, Tamai teaches a composition comprising an epoxy siloxane binder with residual hydrolyzable groups ([0028], [0049], [0075]-[0077]), an epoxy monomer as a reactive diluent as in claim 19 ([0083]), a photoacid/photobase generator as in claim 18 ([0097]), a phthalic anhydride dehydrating agent ([0118], [0098], inherently a curing agent as in claim 17 based on the present specification), copper powder as conductive filler as in claim 20 ([0110]), as well as suggesting silane coupling agents with reactive groups as in claim 9 ([0126], [0130]-[0131]) and silicic acid ([0133], i.e., tetrahydroxysilane, see the NPL document). Tamai does not disclose vanillic acid or the claimed organic inorganic compound.
However, both Obata and Abe (together or individually) render obvious the inclusion of vanillic acid in such a composition. Obata is also directed to an epoxy based composition comprising metallic (copper) powder filler and discloses that vanillic acid is a known flux activating ingredient for reducing the oxide surface of such metallic powder and/or for reducing the oxide surface of a copper surface (e.g., a circuit) to which the composition is applied (which is particular applicable to the copper containing composition of Tamai and also based on Tamai disclosing that the composition may form electrodes which would be obvious to use in contact with copper foil/electrodes/circuits in order to electrically connect to such electrodes/circuits) ([0007]-[0009], [0019]-[0021]). Abe is also directed to an epoxy and siloxane based composition for use in electronics and discloses that vanillic acid is a known additive to reducing the oxide layer on copper that the composition may come into contact with (see abstract, [0023]-[0026]) and also discloses that silane coupling agents (as generally called for in Tamai) in such compositions have curable reactive groups as in claim 9 as well as hydrolyzable groups ([0025]). Based on the above, it would have been obvious to have included vanillic acid in the composition of Tamai in order to reduce the oxide surface of the copper particles in the composition and/or reduce the oxide surface of a copper substrate upon which the electrode composition of Tamai would be placed (e.g., to electrically connect the electrode formed from the composition of Tamai to a copper electrode/circuit), as taught by Obata and/or Abe. Abe further renders obvious the inclusion of silane coupling agents with hydrolyzable groups as the silane coupling agents called for in Tamai in order to provide the intended coupling effect (i.e., enhance adhesion).
Based on the above, the composition of modified Tamai would include vanillic acid as well as several silane/siloxane based ingredients with hydrolyzable groups (e.g., the epoxy functional siloxane binder in Tamai that is disclosed as still containing reactive hydrolyzable groups, see above, as well as the silicic acid, see above, as well as the silane coupling agents, see above). Because vanillic acid includes hydroxyl groups, which are highly reactive under ambient conditions with the hydrolyzable (e.g., alkoxy)/hydroxyl groups of the siloxane binder, the silicic acid, and/or the silane coupling agents discussed above to form siloxane bonds (see as evidence, col. 6, line 60-col. 7, line 5, and col. 8, lines 20-30 of the Yundt evidentiary reference), these ingredients would inherently react when mixed together in the composition to form the claimed organic inorganic compound of claims 1-8 and 17. The inherent reaction of vanillic acid with such hydrolyzable/hydroxyl groups discussed above is also based on the reaction of such reactive groups in the present application (i.e., without relying on the Yundt evidentiary reference).
That is, the hydroxyl groups of the vanillic acid would react with the residual OR3 groups of the siloxane binder resin in Tamai to form Si-O-C bonds at each of the vanillic acid hydroxyl groups. Likewise, the hydroxyl groups of the vanillic acid would react with the OH groups of the silicic acid in Tamai to form Si-O-C bonds at each of the vanillic acid hydroxyl groups. Similarly, the hydroxyl groups of the vanillic acid would react with the alkoxy groups of the silane coupling agents in Tamai to form Si-O-C bonds at each of the vanillic acid hydroxyl groups.
Such reactions would create the structure of claims 1, 3, and formula 6 of claim 6 upon completion of the condensation reaction and would also produce the structure of formula 7 and 8 of claims 6 and 7 during the intermediate stages of the reaction (when one of the two hydroxyl groups is reacted). The structure of claims 2 and 4 would likewise be formed by the above reaction but only when silicic acid is reacted with the vanillic acid because claims 2 and 4 require that the silicon atom bonding with the vanillic acid has three other siloxane bonds which is only possible if that silicon atom is derived from a tetralkoxysilane monomer (like silicic acid). Furthermore, the silicic acid’s four hydroxyl groups would also react with the hydrolyzable or hydroxyl groups of the siloxane binder and/or the silane coupling agents thereby linking any vanillic acid that bonds with the silicic acid to the reactive groups of the siloxane binder and the silane coupling agent (thereby connecting the vanillic acid residue to a curable reactive group as required by claim 1). Such condensation of siloxane monomers (e.g., silicic acid and/or the silane coupling agents and/or the monomers that produce the siloxane binder) will also produce the siloxane bonds in claim 5 as part of the overall condensation cured product. The resulting reaction product of any of the siloxane binder, the silicic acid, and/or the silane coupling agents will also result in repeating units corresponding to the a-d repeating units in claims 6-7.
Regarding the relative amount of vanillic acid to the other siloxane repeating units discussed above, both Obata and Abe provide a motivation for the vanillic acid (reduction of metal oxide surface) that makes the amount of such an ingredient in the composition (and thus the ratio of the vanillic acid-derived repeating units to the siloxane based repeating units in claim 8) obvious to adjust as an art-recognized result effective variable based on the desired level of metal oxide reducing effect imparted to the overall composition.
See MPEP 2144.05 II A. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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