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 amendment filed 08 July 2026 has been entered.
Claims 1-9 and 11-13 are pending in the application, wherein claim 1 has been amended, claim 13 is new, and claim 10 is newly canceled.
Claim Interpretation
Regarding claim 1, the term “fine particle” introduced in line 5 is considered to be particles having an average particle size of 50 nm to 500 nm as recited in line 8 of the claim, and therefore the relative term “fine” is not held to be indefinite.
Regarding claim 1, the term “the first metal particle” in line 11 is considered to reference the previously introduced particle of a first metal, and therefore is not held to be indefinite in spite of the slight change in wording.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-9 and 11-12 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation where the first metal particle (i.e. the first metal) does not form an intermetallic compound with the second metal in the bonding material (lines. 11-2). The instant specification does not disclose this feature. Applicant cites paragraphs 0014-0015 of the instant specification as providing this support by the disclosure that an intermetallic compound is formed after heating a bonding material layer formed by a bonding material. This disclosure does not state that an intermetallic compound has not been formed in the bonding material, only that an intermetallic compound is formed after heating, which might reasonably suggest that not all of the bonding layer material has been formed into an intermetallic, but does not suggest that none of the bonding layer material has been formed into an intermetallic.
Claims 2-9 and 11-12 are rejected as being dependent on a rejected claim.
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 1-9 and 11-12 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.
Claim 1 recites the limitation where the first metal particle (i.e. the first metal) does not form an intermetallic compound with the second metal in the bonding material (lines. 11-2), and also recites the first metal and the second metal have properties of forming an intermetallic compound (i.e. in the bonding material since the bonding material comprises these materials). It is not clear how the first and second metal have properties of forming an intermetallic compound and also does not form an intermetallic compound.
Claims 2-9 and 11-12 are rejected as being dependent on a rejected claim.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6, 12 and 13 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). Furusawa teaches specific examples where the median particle diameter of first metal particles (i.e. corresponding to the fine particle of second metal as outlined above) is 200 nm (Example 13 in Table 2 of Furusawa), which lies within the instantly claimed range. See MPEP § 2131.03. 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, Example 13 in Table 2). 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; Example 13 in Table 2).
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, Example 13 in Table 2). 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%) (paragraph 0074, Example 13 in Table 2). The content of Bi lies within the instantly claimed range. See MPEP § 2131.03.
Claim 12: Furusawa teaches that 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 13: Each of the limitations recited in instant claim 13 are recited in claims 1, 3, and 4 (outlined above) except for the amount of the fine particle of the second metal being 35 mass% to 40 mass%. In this regard, Furusawa teaches a specific example of the mixing ratio of first metal particles (i.e. corresponding to the instantly claimed fined particle of the second metal, as outlined above) being 36% by mass (Example 13 in Table 2). Example 13 in Table 2 is also noted to have first metal particles be a copper alloy (i.e. the second metal is Cu) with a median particle diameter of 200 nm (i.e. an average particle size of 200 nm) and the second metal particles is Sn—58%Bi (i.e. the first metal is a Sn-Bi alloy).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7-9 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 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.
Terminal Disclaimer
The terminal disclaimer filed on 08 July 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Application No. 19/215,305 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
The amendments to claim 1 have overcome the indefiniteness previously set forth in the Office Action mailed 08 April 2026. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection under 35 U.S.C. 112(b) is made as outlined above.
The terminal disclaimer filed 08 July 2026 has overcome the nonstatutory double patenting rejection previously set forth in the Office Action mailed 08 July 2026. This double patenting rejection is withdrawn.
Applicant’s arguments, filed 08 July 2026, have been fully considered but they are not persuasive for the following reasons:
Applicant argues, see p. 7, that amended claim 1 further recites that the single particle is the first metal particle that does not form an intermetallic compound with the second material in the bonding material. However, this limitation lacks support in the written description, as outlined above.
Applicant argues, see p. 7, that because Furusawa mixes all the first and second metal particles simultaneously, then no isolated first or second metal particles remain. However, isolated first metal particles and isolated second metal particles are not recited in the claims. See MPEP § 2145(VI).
Applicant further argues, see p. 7, that even Furusawa’s schematic illustrations do not teach where the first metal particles cover the entire surface of second metal particles. However, it is noted that the schematic illustrations do not fully capture the mixing ratio of first metal particles and second metal particles, inasmuch that the first metal particles (i.e. the first metal particle of Furusawa corresponds to the fine particle of second metal) having the recited diameter can be present in a mass ratio as high as 70% (see Examples 9-10 and 14-15 in Table 2 of Furusawa), and therefore would be present in a much higher proportion than is depicted in the schematic illustrations. Attraction of very small particles to other surfaces by van der Waals forces is well known in the powder arts, and therefore the much smaller particles would be expected to be attracted to the surface of the larger particles and thereby cover substantially the entire surface.
Applicant’s argument, see p. 7-9, regarding dependent claims and the obviousness rejections, rely on the argument that claim 1 is not fully disclosed by Furusawa, which is addressed above.
Applicant’s argument, see p. 9-10, regarding a criticality to the range of mass ratio of the second metal particles have been fully considered but are not currently commensurate in scope to the instant claims. The argued critical range of the mass% of the fine particle of the second metal in a total mass of the single particle and the composite particle being 35 to 40 mass% is only recited in instant claim 13, but the data also is only relevant for the conditions used to obtain the data (e.g., SnBi particles having an average particle size of 2-6 µm, Cu with an average particle size of 200 nm, etc. as outlined in paragraphs 0051-0053). Furthermore, an argument of criticality can overcome an obviousness rejection, but claim 13 is rejected under 35 U.S.C. 102 as being anticipated by Furusawa.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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