PEDETAILED 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 preliminary amendment filed on 03/21/2025 is entered and acknowledged by the Examiner. Claims 1, 3, and 5-6 have been amended. New claims 9-10 have been added. Claims 1-10 are currently pending in the instant application.
Priority
This application is a 371 of PCT/JP2023/030336 (filed on 08/23/2023). Acknowledgment is made of applicant’s claim for foreign priority based on an application filed in Japan on 09/30/2020.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 03/21/2025 is in compliance with the provisions of 37 CFR 1.97 and has been considered by the examiner. An initialed copy accompanies this Office Action.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 3 recite limitations within parenthesis throughout the claims. It is unclear whether these limitations are part of the claims or not. Appropriate correction is required. To advance prosecution, the Examiner will assume that the limitations within the parenthesis are part of the instant claims.
Claims 2 and 4-10 directly or indirectly depend from claims 1 and 3 and are indefinite based on their dependencies.
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.
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.
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.
Claim Interpretation: Claims 1 and 3 are drawn to a silver particle dispersion in a solvent containing a silver particle having a compound represented by formula (1) adhered to the surface of the silver particle. Applicant described that the compound represented by formula (1) is preferably 2-hydroxyisobutyric acid (See specification [0029]). The instant claims further described a measurement value of SPAN by a photocentrifuge method. However, the silver particle dispersion composition are not limited to the manipulations of the recited photocentrifuge method steps. The patentability of the dispersion composition does not depend on its method of measurement, and the claimed steps were not given patentable weight. Moreover, “[p]roducts of identical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (fed. Cir. 1990). See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In the instant case, if the prior art teaches the same composition, the measurement value of SPAN by a photocentrifuge method of the composition would yield the same or substantially value as claimed. It should be noted that the USPTO is not equipped to perform laboratory testings and experimental benchworks to measure the properties of the resulting composition. The burden is on the applicant to prove otherwise.
Claims 1-10 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 JP 2012054103 A (hereinafter Nao).
Nao discloses a conductive composition useful for forming a circuit (an electronic part) comprises a surface treatment silver powder where the silver powder is surface treated with fatty acid (See Abstract). The silver powder having an average particle diameter of 0.5 to 10 um is preferable (See middle of unlabeled page 2). Nao exemplify a silver powder having an average diameter of 0.5 um (See bottom of unlabeled page 2, commercial silver powder “EHD”). The average diameter of 0.5 um is equivalent to 500 nm and is within the claimed average particle diameter of 50 to 600 nm as required in claims 2 and 4. Nao discloses that the fatty acid includes 2-hydroxyisobutyric acid (See bottom at unlabeled page 3, formula (2)). The 2-hydroxyisobutyric acid meets the claimed compound represented by formula (1) as required in claims 1 and 3. Nao further discloses that the surface treated silver power is dispersed in a solvent (See bottom of unlabeled page 6). Noa discloses a silver particle dispersion containing all the claimed components, i.e., silver particle having the claimed particle diameter surface treated with a preferred 2-hydroxyisobutyric acid (claimed compound) as described by Applicant. Based on this rationale, the silver particle dispersion of Nao would have the same or substantially same value of SPAN as claimed because it has been held that products of the same composition must have the same properties and measurements.
The reference specifically or inherently meets each of the claimed limitations in their broadest interpretations. The reference is anticipatory.
In the alternative that Nao is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed silver particle dispersion, any minor modification necessary to meet the claimed limitations, such as measuring the value of SPAN by photocentrifuge would have been within the purview of the skilled artisan.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHANH TUAN NGUYEN whose telephone number is (571)272-8082. The examiner can normally be reached M-F 9:00 AM to 5:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHANH T NGUYEN/Primary Examiner, Art Unit 1761
