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 .
Election/Restrictions
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 24, 2025.
Applicant’s election with traverse of Group I (claims 1-10) in the reply filed on July 24, 2025 is acknowledged. The traversal is on the ground(s) that “the claims contain features other than beryllium oxide, e.g., clamping pressure and/or bulk resistivity, that are indeed special technical features, that are not inherent to all beryllium oxide compositions” (Applicant’s Remarks filed July 24, 2025, hereinafter “Remarks,” at p. 6). This is not found persuasive because the additional limitations referenced by Applicant, such as clamping pressure and bulk resistivity, are found in independent claim 1 but are not shared by all of the claims at issue. For instance, independent claim 18 includes no limitations directed to clamping pressure or bulk resistivity. Likewise, independent claim 19 includes no limitations directed to clamping pressure or bulk resistivity. Therefore, the only technical feature common to all four Groups is a beryllium oxide composition. See MPEP 1850.
The requirement is still deemed proper and is therefore made FINAL.
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.
In lines 2-3 of claim 1, the limitation “and optionally fluorine/fluoride ion” renders the claim indefinite, since it is not clear whether the optional component of the beryllium oxide composition is, on the one hand, fluorine or fluoride ion, or, on the other hand, a mixture of fluorine and fluoride ion.
For purposes of claim interpretation, “fluorine/fluoride ion” will be treated as if reading “fluorine or fluoride ion,” this being the broadest reasonable interpretation consistent with the Specification.
In line 2 of claim 2, the upper bound for the range of magnesium oxide content is given as “5 wt% ppm.” As currently written, this is nonsensical: wt% and ppm are both units designating the proportion of a component, in terms of weight or mass, in relation to the total weight or mass of the composition. Therefore, the limitation should read either as “5 wt%” or as “5 ppm.” Based on the written description, it seems possible that “5 wt%” was intended (see Specification at ¶ 0046), but this is not certain. In line 3 of claim 2, the same issue occurs with regards to the content of magnesium trisilicate. Since one of ordinary skill in the art cannot be certain whether “5 wt%” or as “5 ppm” (or some other value) is intended, the scope of the claim is unclear.
For purposes of claim interpretation, the relevant limitations of claim 2 will be treated as if reading “from 1 ppm to 5 wt% magnesium oxide” and “from 1 ppm to less than 5 wt% magnesium trisilicate,” this interpretation being the broadest reasonable interpretation consistent with the Specification.
The other rejected claims no explicitly discussed above are rejected by reason of their dependence from claim 1.
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.
Claim(s) 1 and 3-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Pat. Pub. 2009/0068433 to Rasheed (hereinafter “Rasheed”).
Regarding claim 1, Rasheed discloses a beryllium oxide ceramic wafer having a circular-shaped geometry comprising a diameter of about 11 to 13 inches and a thickness of about 0.030 to 0.060 inches (¶ 0015); this beryllium oxide ceramic wafer thus comprises a plate shape (i.e., a thin disk) and, by necessity, intrinsically has a top and a bottom (see also ¶ 0047, explicitly teaching a top surface). Rasheed discloses that the beryllium oxide ceramic wafer (plate) “contains about 95 wt % (weight percent) or greater of beryllium oxide, preferably, about 98 wt % or greater, preferably, about 99 wt % or greater, preferably, about 99.5 wt % or greater, and more preferably, about 99.9 wt % or greater” (¶ 0020). The plate-shaped beryllium oxide ceramic wafer of Rasheed is inherently capable of serving as a base plate.
Although Rasheed does not explicitly teach that the base plate demonstrates a clamping pressure of at least 133 kPa at a temperature of at least 600 °C and a bulk resistivity greater than 1 x 105 ohm-m at 800 °C, given the substantially identical material composition of the Rasheed base plate and the claimed invention, one of ordinary skill in the art would reasonably expect that the base plate disclosed by Rasheed inherently demonstrates a clamping pressure and a bulk resistivity within the ranges specified in claim 1, since products of identical composition are presumed not to have mutually exclusive properties. 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 (see MPEP 2112.01(I), first paragraph). Here, that prima facie case is bolstered by the fact that Rasheed discloses a beryllium oxide composition (and base plate) that has a thermal conductivity at room temperature (i.e., about 20°C) within a range from about 200 W/m∙K to about 350 W/m∙K (¶ 0043), which is substantially identical to the thermal conductivity at room temperature of the beryllium oxide composition (and base plate) of the claimed invention (see Specification at p. 29, ¶ 0123). Thus, since the base plate disclosed by Rasheed has a substantially identical material composition as the claimed invention and demonstrates a thermal conductivity substantially identical to the thermal conductivity of the claimed invention, one of ordinary skill in the art would reasonably expect that the base plate of Rasheed would also inherently demonstrate a clamping pressure and bulk resistivity substantially identical to the claimed invention.
Thus, Rasheed discloses a base plate comprising a beryllium oxide composition reading on every limitation of claim 1.
Regarding claim 3, Rasheed does not explicitly disclose a temperature variance, decomposition change, dielectric constant, surface harness, or coefficient of thermal expansion of the base plate. However, given the substantially identical material composition of the Rasheed base plate and the claimed invention, one of ordinary skill in the art would reasonably expect that the base plate disclosed by Rasheed would inherently demonstrate at least one of the properties recited in claim 3, within the range recited by claim 3, since products of identical composition are presumed not to have mutually exclusive properties. 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 (see MPEP 2112.01(I), first paragraph). Here, that prima facie case is bolstered by the fact (as noted above in respect to claim 1) that Rasheed discloses a beryllium oxide composition (and base plate) that has a thermal conductivity substantially identical to the thermal conductivity of the beryllium oxide composition (and base plate) of the claimed invention (compare Rasheed at ¶ 0043 with the Specification at p. 29, ¶ 0123).
Regarding claims 4-6 and 8-10, Rasheed does not explicitly disclose the claimed properties and features of the base plate, but, given the substantially identical material composition of the Rasheed base plate and the claimed invention, one of ordinary skill in the art would reasonably expect that the base plate disclosed by Rasheed would inherently demonstrate the claimed properties and features, within the claimed ranges, since products of identical composition are presumed not to have mutually exclusive properties. 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 (see MPEP 2112.01(I), first paragraph). Here, that prima facie case is bolstered by the fact (as noted above in respect to claim 1) that Rasheed discloses a beryllium oxide composition (and base plate) that has a thermal conductivity substantially identical to the thermal conductivity of the beryllium oxide composition (and base plate) of the claimed invention (compare Rasheed at ¶ 0043 with the Specification at p. 29, ¶ 0123).
Regarding claim 7, Rasheed is silent as to the presence of any discrete layers within the base plate, and therefore one of ordinary skill in the art would reasonably conclude that the base plate of Rasheed contains no discrete layers.
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.
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Rasheed as applied to claim 1 above, and further in view of CN 108623288 A to Duan et al. (with reference to the provided machine translation, hereinafter “Duan”) and CN 105819832 A to Wang et al. (with reference to the provided machine translation, hereinafter “Wang”).
Regarding claim 2, Rasheed discloses the base plate of claim 1, as set forth above (see p. 5). Moreover, Rasheed teaches that the beryllium oxide composition of the base plate may contain other components, including other oxides (see ¶ 0020). However, Rasheed does not explicitly recite wherein the base plate comprises a beryllium oxide composition comprising from 1 ppm to 5 wt% magnesium oxide and from 1 ppm to 5 wt% silicon dioxide and from 1 ppm to less than 5 wt% magnesium trisilicate.
Duan, in the same field of endeavor (beryllium oxide ceramics), teaches a beryllium oxide composition comprising silicon dioxide powder, magnesium oxide powder and beryllium oxide powder in a weight ratio of 0.05-0.2:0.3-0.45:100, wherein the purity of the beryllium oxide powder is ≥99.5% (¶¶ 0010-0011). So, for instance, in an embodiment where the respective weight ratios of silicon dioxide, magnesium oxide, and beryllium oxide are 0.2, 0.3, and 100, Duan teaches a composition comprising 0.2 wt% silicon dioxide (or 2,000 ppm) and 0.3 wt% magnesium oxide (or 3,000 ppm). Similarly, in an embodiment where the respective weight ratios of silicon dioxide, magnesium oxide, and beryllium oxide are 0.05, 0.45, and 100, Duan teaches a composition comprising 0.05 wt% silicon dioxide (or 500 ppm) and 0.45 wt% magnesium oxide (or 4,500 ppm). Duan thus teaches ranges for magnesium oxide and silicon dioxide lying within the ranges for those components recited in claim 2.
It would have been obvious to one of ordinary skill in the art to modify Rasheed by including in the beryllium oxide composition 0.3-0.45 wt% magnesium oxide and 0.05-0.2 wt% silicon dioxide, as taught by Duan. One of ordinary skill in the art would have been motivated to make this modification in order to improve the dispersibility of the beryllium oxide (see Duan at ¶ 0022) and in order to improve the firing characteristics of the beryllium oxide composition (see Duan at ¶ 0025).
Wang, in the same field of endeavor (beryllium oxide ceramics), teaches a beryllium oxide composition that includes beryllium oxide powder and magnesium trisilicate in a weight ratio of 100:0.5-0.55 (¶ 0009); that is, Wang teaches a beryllium oxide composition that comprises approximately 0.5-0.55 wt% magnesium trisilicate. Wang thus teaches a range of magnesium trisilicate lying within the range for that component recited in claim 2.
It would have been obvious to one of ordinary skill in the art to modify Rasheed by including in the beryllium oxide composition 0.5-0.55 wt% magnesium trisilicate, as taught by Wang. One of ordinary skill in the art would have been motivated to make this modification in order to use magnesium trisilicate as a sintering aid, i.e., to take advantage of the low melting point of magnesium trisilicate to lower the sintering temperature of the composition (see Wang at ¶ 0026).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rasheed with the teachings of Duan and Wang in order to produce a base plate reading on every limitation of claim 2.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
U.S. Pat. No. 5,268,334 to Emly et al. (hereinafter “Emly”) teaches a process for producing beryllium oxide (Abstract). Emly teaches an embodiment beryllium oxide composition comprising 0.5 wt% magnesium and near 100 ppm fluorine (see Example 4, Col. 8, lines 52-53).
U.S. Pat. No. 3,791,833 to Sugiura et al. (hereinafter “Sugiura”) teaches a beryllium oxide ceramic body for use in electronic equipment (Abstract). Sugiura teaches an embodiment comprising 97 wt% beryllium oxide, 1.0 wt% magnesium oxide, and 0.5 wt% silicon dioxide (Col. 3, Table 1, Sample No. 2).
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/P.A.F./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731
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