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 .
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 1-12 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.
The term “fine particle” in claim 1 is a relative term which renders the claim indefinite. The term “fine” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. A fine particle is considered in the art to generally be of small size, but the instant specification does not define the size considered to be fine nor does instant claim 1 recite the particle size, and therefore the metes and bounds of the limitation are unclear. In the interest of advancing prosecution, the disputed limitation will be considered where a particle size of about 50 nm to 500 nm (i.e. an average particle size of the second metal particles as disclosed in paragraph 0040 or the instant specification) is a “fine particle”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-8 and 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 7 of copending Application No. 19/215,305 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter:
Instant claim 1 and claim 1 of the ‘305 application both recite a joining material (i.e. a bonding material) comprising single particles (i.e. a single particle), composite particles (i.e. a composite particle), and flux.
Instant claim 1 and claim 1 of the ‘305 application both recite that the single particle is a particle of a first metal.
Instant claim 1 and claim 1 of the ‘305 application both recite that the composite particle includes a central core that is a particle of the first metal and (at least one) coating layer covering an entire surface of the first metal particle, the coating layer being particles of a second metal. Instant claim 1 recites these particles of a second metal as “fine” particles, whereas claim 1 of the ‘305 application recites an average particle size of 50 nm to 500 nm, and therefore the second metal particles of the ‘305 application are considered to be fine particles.
Instant claim 1 and claim 1 of the ‘305 application both recite the flux as including a reducing agent component.
Instant claim 1 and claim 1 of the ‘305 application both recite that the first metal and second metal form an intermetallic compound.
Instant claim 1 and claim 1 of the ‘305 application both recite the reducing agent component of the flux is present between the central core and the coating layer.
While not reciting an exact duplicate of the claims of the ‘305 application, it would have been obvious to one of ordinary skill in the art before the effective filing date as each of the instantly claimed limitations are recited as features of the material of the ‘305 application (i.e. worded differently but resulting in substantially identical structural features; i.e. the ‘305 application recites additional limitations).
Instant claim 2 recites wherein the first metal is a Sn alloy, whereas claim 1 of the ‘305 application recites the first metal contains Sn, Bi, and In (i.e. a Sn alloy).
Instant claim 3 and claim 2 of the ‘305 application both recite wherein the second metal is Cu.
Instant claim 4 recites wherein the first metal is a Sn-Bi alloy, whereas claim 1 of the ‘305 application recites the first metal contains Sn, Bi, and In (i.e. a Sn-Bi alloy).
Instant claim 5 recites wherein the Sn-Bi alloy includes Bi with a content at which a liquidus temperature is less than or equal to 150°C in an equilibrium diagram of the Sn-Bi alloy, whereas claim 3 of the ‘305 application recites wherein a composition of the first metal (i.e. containing Sn, Bi, and In; i.e. the Sn-Bi alloy) is a composition corresponding to a content (i.e. includes Bi with a content) at which a liquidus temperature is less than or equal to 100°C in an equilibrium diagram of a Sn-Bi-In alloy (i.e. a Sn-Bi alloy). These liquidus temperatures overlap and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to other ranges. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
Instant claim 6 recites wherein the Sn-Bi alloy includes Bi with a content of 52 mass% to 62 mass%, whereas claim 4 of the ‘305 application recites a composition of the first metal is Sn-55wt.%Bi-20wt.%In (i.e. a Sn-Bi alloy with 55 mass% Bi). These contents of Bi overlap. See MPEP § 2144.05.
Instant claim 7 recites wherein the fine particle of the second metal to a total mass of the single particle and the composite particle is 30 mass% to 40 mass% when the total mass is 100 mass%, whereas claim 1 of the ‘305 application recites this proportion as 30 wt.% to 50 wt.%. These ranges overlap. See MPEP § 2144.05.
Instant claim 8 recites the particle of the first metal that is the core of the composite particle has an average particle size of 2 µm to 10 µm, whereas claim 1 of the ‘305 application recites the first metal particle (i.e. as a central core) have an average particle size of 100 nm to 2000 nm (i.e. 2 µm). These ranges overlap. See MPEP § 2144.05.
Instant claim 10 and claim 1 of the ‘305 application both recite wherein the particle of second metal has an average particle size of 50 nm to 500 nm.
Instant claim 11 and claim 7 of the ‘305 application both recite wherein the reducing agent component is an alkanolamine.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-6 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Furusawa et al. (US 2020/0335470).
Furusawa teaches a bonding material and a bonded structure formed using the bonding material (paragraph 0001). The bonding material has first metal particles of a first metal having a median particle diameter of 20 nm to 1 µm (i.e. a fine particle) and second metal particles of a second metal of Sn and at least one selected from Bi, In, and Zn and having a melting point of 200°C or less and wherein the first metal forms at least one intermetallic compound with Sn derived from the second metal particles (paragraphs 0019-0022). The bonding material further includes a binder such as a solvent and a reducing agent (i.e. a flux including a reducing agent component), and the first metal particles, second metal particles, and binder are stirred and mixed to obtain the bonding material (paragraph 0048). The first metal particles may be a simple metal such as Cu etc. or an alloy of Cu and at least one other metal, with Cu or an alloy with Cu being particularly preferred (paragraph 0059). The second metal particles melt at a temperature of 200°C or less and is an alloy of tin and other metal such as Bi, In, and Zn, wherein specific examples include a Sn-Bi alloy such as Sn-58 mass%Bi having a melting point of 138°C (paragraph 0073-0074). A preferred range of the median particle diameter of the second metal particles is 5 µm to 35 µm (paragraph 0076). Furusawa does not specifically teach the composite particle; however, because the bonding material is formed by stirring and mixing the first metal particles, the second metal particles, and binder (Furusawa, paragraph 0048) at least some of the larger particles (i.e. the particles containing Sn) would be coated with binder material and smaller particles (i.e. the particles containing Cu) due to the tendency of nanoparticles to stick to surfaces of other particles (i.e. the adherence/ agglomeration properties of particles on a nanoscale are well known in the powder arts) and due to the smaller surface area per mass of the larger particles. It is noted that Furusawa teaches the first metal particles to be the smaller Cu-containing particles and the second metal particles to be the larger Sn-containing particles, which is the reverse naming convention used in the instant application (i.e. as recited in instant claim 1); however, the naming convention does not alter the structure of the bonding material.
Claim 2: Furusawa teaches the second metal particles (i.e. corresponding to the instantly claimed first metal) to be an alloy of Sn and at least one other metal selected from Bi, In, and Zn (paragraph 0074).
Claim 3: Furusawa teaches the first metal particles (i.e. corresponding to the instantly claimed second metal) is particularly preferred to be Cu or an alloy of Cu (paragraph 0059).
Claim 4: Furusawa teaches the second metal particles (i.e. corresponding to the instantly claimed first metal) to be an alloy of Sn and at least one other metal selected from Bi, In, and Zn, and specific examples include an Sn-Bi alloy etc. (paragraph 0074).
Claim 5: Furusawa teaches generally that the second metal particles (i.e. corresponding to the instantly claimed first metal) have a melting point of 200°C or less, and a specific example is a Sn-58% by mass Bi alloy having a melting point of 138°C (paragraph 0074). The melting point (i.e. liquidus temperature in an equilibrium diagram of the Sn-Bi alloy) lies within the instantly claimed range. See MPEP § 2131.03.
Claim 6: Furusawa teaches generally that the second metal particles (i.e. corresponding to the instantly claimed first metal) can be an alloy of Sn and at least one other metal selected from Bi, In, and Zn, and a specific example is a Sn-58% by mass Bi alloy (i.e. includes Bi with a content of about 58 mass%). The content of Bi lies within the instantly claimed range. See MPEP § 2131.03.
Claim 12: Furusawa teaches the bonding material is supplied onto an insulation circuit substrate electrode (i.e. an element electrode) and a semiconductor element is mounted on the bonding material (paragraph 0051) or where the bonding material as a paste is transferred to a Cu plate (i.e. a metal member) and an Si chip (i.e. the aforementioned electrode) is placed thereon (paragraph 0079). Following completion of the bonding process, the result would be a bonded structure with these structures.
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.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Furusawa et al. (US 2020/0335470) as applied to claims 1 and 2 above.
Claim 7: The teachings of Furusawa regarding claims 1 and 2 are outlined above. Furusawa further teaches that the mixing ratio of the Cu particles (i.e. corresponding to the fine particle of the second metal as recited in the instant claims) is 36% by mass or more to provide a melting temperature of 300°C or more (i.e. of the bonding portion after initial bonding) and is preferably 60% by mass or more to have a desirable bonding strength of 8 MPa or more (paragraphs 0081-0082; Fig. 5). This range (i.e. 36% to 60% by mass) overlaps the instantly claimed range, and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
While not reciting a singular example of the instantly claimed proportion, it would have been obvious to one of ordinary skill in the art before the effective filing date because of the overlapping range recited in the prior art, which is considered to be prima facie obvious, and one would have had a reasonable expectation of success.
Claims 8-9: Furusawa teaches that the preferred range of the median particle diameter of the second metal particles (i.e. corresponding to the particle of the first metal as a single particle and as a central core of the composite particle as outlined above) is 5 µm to 35 µm (paragraph 0076). This range overlaps the instantly claimed ranges. See MPEP § 2144.05.
Claim 10: Furusawa teaches that first metal particles of a first metal (i.e. corresponding to the fine particle of second metal as outlined above) have a median particle diameter of 20 nm to 1 µm (paragraph 0020), which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Furusawa et al. (US 2020/0335470) as applied to claim 1 above, and further in view of Sakata et al. (US 2019/0084093).
Claim 11: The teachings of Furusawa regarding claim 1 is outlined above. Furusawa teaches that the bonding material further includes a binder such as a solvent and a reducing agent, such as a bonding agent of 1,3-diphenyl guanidinium hydrobromide, stearic acid or the like (paragraph 0048). However, Furusawa does not specify an alkanolamine as a reducing agent component.
In a related field of endeavor, Sakata teaches a bonding material containing high melting point metal particles such as copper, low melting point metal particles such as tin alloy, and a flux (paragraphs 0003 and 0005). The flux includes an active agent (paragraph 0023), which has an action of removing a metal oxide present on a surface of a metal (i.e. a reducing agent) (paragraph 0025). Sakata teaches amine-based active agents may include amino alcohols, amino acids etc., such as diphenyl guanidine hydrobromide, triethanolamine, monoethanolamine, etc., which may be used alone or in combination of two or more active agents (paragraph 0027).
As Furusawa and Sakata both teach a bonding material containing particles of Cu and of Sn alloy and containing a flux reducing agent, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the bonding material of Furusawa to include triethanolamine or monoethanolamine (i.e. these are an alkanolamine) in addition to or instead of 1,3-diphenyl guanidium hydrobromide (i.e. diphenyl guanidine hydrobromide) as these are considered art equivalent components of flux for a bonding material containing particles of Cu and Sn alloy, and one would have had a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784
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