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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 23, 2026, has been entered.
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.
Claims 1, 6, 7, 9-11, 23, 24 and 34-38 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2012/114309 Van Der Mee et al in view of CN 108250583 Yu et al and CN 108503974 Shang et al with evidence from Magnesium Oxide and Boron Nitride.
Regarding claim 1, Van Der Mee teaches a thermally conductive insulating (paragraph 0002) sheet (paragraph 0116), wherein the thermally conductive insulating sheet comprises:
a thermoplastic resin comprising a homopolymerized PP (paragraph 0024);
a thermally conductive filler (paragraphs 0088-0090);
a toughener (paragraph 0096, where plasticizer makes the material more resilient and ductile, allowing the material to withstand higher forces), and
a fire retardant (paragraph 0096, flame retardant),
wherein the thermally conductive insulating sheet has a single-layer structure (paragraph 0116 teaching extrusion from a single melt blender such that the structure must be single-layered), and
wherein the volume of the thermally conductive filler accounts for 7-60 vol% of the thermally conductive insulating sheet (paragraph 0003 (a) and (b)), and the thermally conductive filler is magnesium oxide or boron nitride ((a) paragraph 0088 teaching MgO, and (b) paragraph 0089 teaching BN).
Van Der Mee does not explicitly teach 60wt% filler. However, the ranges taught by Van Der Mee in volume percent teach 5-45 vol% MgO and 2-15 vol% BN. While this does not directly correspond to wt%, weight and volume are related by density. MgO has a density of 3.6 and BN has a density of 3.49 (see Magnesium Oxide and Boron Nitride). Therefore, even though percents do not translate into values, a density of about 3.5 shows that a vol% of 7-60% would be a higher value when converted into wt%. Therefore, it is reasonable to suggest that 60 wt% of filler falls within the 7-60 vol% of filler.
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 7-60 vol% reads on the claimed range of 60 wt%.
Van Der Mee does not teach use of a homopolymerized PP and a copolymerized PP. Yu teaches a thermally conductive, insulting material made of a combination of homopolymerized PP and copolymerized PP (paragraph 0018). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to replace the homopolymerized PP of Van Der Mee with the combination of Yu because the combination of PP in Yu allows for the easy molding, complex shape abilities and strength properties of homopolymerized PP with the impact strength and weldability of copolymerized PP (paragraph 0018).
Van Der Mee does not teach an organosilicon toughener. Shang teaches a cold-resistant PVC sheet where an organosilicon containing an -OH end group (silanol) is selected to improve the toughness of the thermoplastic resin (paragraph 0021).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the silanol of Shang in the product of Van Der Mee because the silanol material is used to strengthen or toughen the polymer material and reduces the embrittlement temperature of a thermoplastic resin (paragraph 0021).
Please note that while Shang refers to PVC, because both PVC and PP are thermoplastic resins, it would be reasonable to expect the silanol to exhibit the same toughening feature in both situations. In other words, the material to which the silanol is added does not affect the toughening property of silanol. Applicant may provide evidence of a difference.
Regarding claim 6, Van Der Mee teaches that the thermally conductive insulating sheet is produced by processing and forming using a process of extrusion and rolling (paragraph 0119).
Regarding claim 7, Van Der Mee teaches that the thickness of the thermally conductive insulating sheet is 3 mm (paragraph 0127). However, “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (MPEP 2144.04 Section IV Part A). Therefore, without a showing of criticality, the claimed dimensions do not impart patentability to the claims.
Regarding claim 9, Van Der Mee teaches that the fire retardant is bromine halogenated fire retardant or phosphorus type halogen-free fire retardants (paragraph 0110).
Regarding claim 10, Van Der Mee teaches that the thermally conductive insulating sheet has a thermal conductivity coefficient higher than 1.0W/m*K (paragraph 0124).
None of Van Der Mee, Yu and Shang explicitly teaches breakdown voltage, surface resistance, flammability rating or relative temperature index. However, as Van Der Mee in view of Yu and Shang satisfies all of the previous limitations, the combination’s materials and method are indistinguishable from the claimed materials and method. Therefore, it is reasonable to expect that the combination’s breakdown voltage, surface resistance, flammability rating or relative temperature index would be the same or similar to that of the invention. “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” (MPEP 2112.01 Section I).
Regarding claim 11, Van Der Mee teaches use in a battery pack (paragraph 0126), but does not teach the specifics of the battery pack. Yu teaches a thermally conductive insulating sheet used in a battery pack, wherein the battery pack comprises batteries and a heat dissipating medium (paragraph 0002).
Yu teaches only a single battery. However, “the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced,” (MPEP 2144.04 Section VI Part B). Therefore, absent evidence of criticality, the claimed multiple batteries does not lend patentability to the claim. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the battery application of Yu in the product of Van Der Mee because this extends the variety of available applications for Van Der Mee’s product.
Regarding claim 23, Yu further teaches that the PP material is 1-50wt% (paragraph 0009), and that the ratio of the homopolymerized PP and copolymerized PP is 1:2 to 2:1 (paragraph 0018). Therefore, out of 1-50 wt%, the homopolymerized PP may be 0.33 to 33.3 wt%, and the copolymerized PP may similarly be 0.33 to 33.3 wt%. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught ranges of 0.33 to 33.3 wt% reads on the claimed values of 13 wt% for homopolymerized PP and 19 wt% for copolymerized PP.
Regarding claim 24, Van Der Mee in view of Shang teaches that the flame retardant may account for 0.1 to 40% by weight of the thermally conductive insulating sheet (Van Der Mee paragraph 0110, where other additives besides the flame retardant and toughener may not be present), and that the silanol is present in the amount of 1 wt% (1 part/101 parts, Shang Table 1, Example 4, teaching that the silanol is 1 part of a total of 101 parts, translated and reproduced below for Applicant’s convenience).
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 1.1 to 41 wt% reads on the claimed value of 8 wt%.
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Regarding claim 34, Van Der Mee in view of Shang teaches that the toughener accounts for 1 wt% of the thermally conductive insulating sheet (Shang Table 1, Example 4, where 1 part out of 101 is 0.99%, with one significant figure of the claim, is rounded to 1%).
Regarding claim 35, Van Der Mee teaches that the flame retardant may account for 0.1 to 40% by weight of the thermally conductive insulating sheet. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 0.1 to 40 wt% reads on the claimed value of 8 wt%.
Regarding claim 36, Van Der Mee teaches the process of rolling (paragraph 0112). Van Der Mee additionally teaches that an extensional force (stretching) may be applied but is optional (paragraph 0112) such that the lack of a stretching force has been envisioned.
Regarding claim 37, Van Der Mee does not explicitly teach that the extrusion and rolling (paragraph 0119) reduces or avoids holes. However, because Van Der Mee is silent regarding the presence of holes in the product, the Examiner is taking the position that no holes exist. Applicant may provide evidence that this is untrue.
Regarding claim 38, Van Der Mee in view of Yu and Shang teach all the limitations above with respect to claims 1, 23 and 35.
Response to Arguments
Applicant’s arguments with respect to the prior art have been considered but are moot because the new ground of rejection (Van Der Mee in view of Yu and Shang) does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megha M Gaitonde whose telephone number is (571)270-3598. The examiner can normally be reached Monday-Friday 8:30 am to 5 pm.
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781
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