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 .
Priority
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 4 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Ejiri et al. (US 2025/0387833A1) (hereafter Ejiri).
With respect to claim 1, Ejiri teaches a joining material (title; and figures) comprising: metal particles containing metal particles (a) (paragraphs 16, 23, 51-53, 98, 111, and 177); and a solvent for dispersing the metal particles, wherein the joining material has a viscosity, as measured according to JIS Z 3285:2017, of 70 Pa.Math.s or greater, and the metal particles (a) have a particle size D50 at a cumulative volume of 50%, as measured by laser diffraction/scattering particle size distribution measurement, of greater than 0.15 μm and less than 0.8 μm (paragraphs 16, 23, 26-27, 51-53, 88, 98, 111, and 177).
With respect to claim 4, Ejiri teaches wherein the metal particles include metal particles (b) different from the metal particles (paragraphs 16, 23, 51-53, 98, 111, and 177) (a), and the metal particles (b) have a particle size D50 at a cumulative volume of 50%, as measured by laser diffraction/scattering particle size distribution measurement, of 0.15 μm or less, or of 0.8 μm or greater (paragraphs 16, 23, 51-53, 98, 111, and 177).
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 (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.
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.
Claim(s) 1-2 and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moyer (US 2018/0346371A1).
With respect to claim 1, Moyer teaches a joining material (title) comprising: metal particles containing metal particles (a); and a solvent for dispersing the metal particles (paragraphs 74-76 and 90), wherein the joining material has a viscosity, of 70 Pa.Math.s or greater (paragraphs 82, 91, and 116-117), and the metal particles (a) have a particle size D50 at a cumulative volume of 50% (paragraph 64), of greater than 0.15 μm and less than 0.8 μm (paragraph 64).
With respect to claim 1, Moyer does not explicitly teach that the viscosity is measured according to JIS Z 3285:2017, and the particle size is measured by laser diffraction/scattering particle size distribution measurement. However, these processes do not positively limit the structure of the claimed composition. It is the examiner’s position that the composition of Moyer would result in the claimed properties when measured in accordance with JIS Z 3285:2017, which the applicant has not fully supplied to the Office. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02. Accordingly, the applicant must provide a persuasive argument and/or evidence that the composition of Moyer does not meet the claimed properties when processed by JIS Z 3285:2017 and measured by laser diffraction/scattering particle size distribution measurement.
With respect to claim 2, Moyer teaches wherein the metal particles (a) are silver particles (paragraph 64).
With respect to claim 4, Moyer teaches wherein the metal particles include metal particles (b) different from the metal particles (paragraph 67) (a), and the metal particles (b) have a particle size D50 at a cumulative volume of 50%, as measured by laser diffraction/scattering particle size distribution measurement, of 0.15 μm or less, or of 0.8 μm or greater (paragraph 64).
With respect to claim 5, Moyer teaches in the solvent thereof, a resin component which is a curable resin, a non-curable resin or a thermoplastic resin, wherein a ratio of a content of the resin component to a content of the metal particles in the joining material is less than 0.01 mass % (paragraphs 70-73).
With respect to claim 6, Moyer teaches wherein the joining material does not contain, in the solvent thereof, a resin component which is a curable resin, a non-curable resin or a thermoplastic resin (paragraph 71, specifically the organic medium includes resin, rosin and/or a solvent).
With respect to claim 7, Moyer teaches a method of producing a joined body in which a conductive first component and a conductive second component are bonded via a conductive joining portion, the method comprising: attaching the joining material according to claim 1 to a first surface of the first component or a second surface of the second component (paragraphs 10, 87, 93-94, 102, 107-108, and 139); laminating the first component and the second component with the attached joining material therebetween to produce a laminate (broadest reasonable interpretation) (paragraphs 10, 87, 93-94, 102, 107-108, and 139); drying the joining material in the laminate to form a dried joining material (paragraphs 10, 87, 93-94, 102, 107-108, and 139); and firing the dried joining material at a temperature higher than a temperature at which the joining material has been dried to thereby form the joining portion from the dried joining material (paragraphs 10, 87, 93-94, 102, 107-108, and 139).
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Torigoe et al. (US2025/0041936A1) (hereafter Torigoe).
With respect to claim 1, Torigoe teaches a joining material (title) comprising: metal particles containing metal particles (a); and a solvent for dispersing the metal particles (paragraphs 88 and 91), wherein the joining material has a viscosity, of 70 Pa.Math.s or greater (paragraphs 96, 181, and 188; and Table 7), and the metal particles (a) have a particle size D50 at a cumulative volume of 50%, measured by laser diffraction/scattering particle size distribution measurement (paragraph 89), of greater than 0.15 μm and less than 0.8 μm (paragraph 89).
With respect to claim 1, Torigoe does not explicitly teach that the viscosity is measured according to JIS Z 3285:2017. However, this process does not positively limit the structure of the claimed composition. It is the examiner’s position that the composition of Torigoe would result in the claimed properties when measured in accordance with JIS Z 3285:2017, which the applicant has not fully supplied to the Office. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02. Accordingly, the applicant must provide a persuasive argument and/or evidence that the composition of Torigoe does not meet the claimed properties when processed by JIS Z 3285:2017 and measured by laser diffraction/scattering particle size distribution measurement.
With respect to claim 2, Torigoe teaches wherein the metal particles (a) are silver particles (paragraph 89).
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KILEY SHAWN STONER whose telephone number is (571)272-1183. The examiner can normally be reached on Monday-Thursday.
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, Keith Walker can be reached on 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KILEY S STONER/ Primary Examiner, Art Unit 1735
Prosecution Insights