DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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, 3-5, 7, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ono (JP 2015036383) in view of evidence given by Takeuchi et al. (US 2025/0226424) and Iwasaki et al. (US 2024/0162482)
Re claims 1, 4, 5, 7, Ono disclose thermally conductive resin composition [1] that forms sheets [28]. The composition comprises base resin, flake-shaped, i.e. scaly, filler and fibrous filler [17]. Attention is drawn to the examples of Ono [44-46, Table 1] which discloses composition made from 19-35 vol% scaly graphite known under the tradename CB150, which as evidenced by Takeuchi [117], has a density of 0.26 g/cm3 and 0.5-2 vol% carbon nanofiber known under the tradename VGCF-H, which as evidenced by Iwasaki [167], has a density of 2.1 g/cm3. It is calculated there is 4.94 – 9.1 wt.% scaly graphite (19*2.6 – 35*0.26) and 1.05 – 4.2 wt.% carbon fibers (0.5*2.1 – 2*2.1). Therefore, it is calculated that the ratio of scaly graphite to carbon fiber is 1.2/1 – 8.7/1 (4.94/4.2 – 9.1/1.05) which overlaps the ratio presently claimed.
From Figure 2b, it is clear that the long axis direction of the scaly filler 12 and the fiber axis direction of the fibrous filler 13 are oriented in the same direction. The normal direction of a scale surface of the scaly filler is necessarily aligned in a predetermined direction and the resulting sheet would necessarily have a plurality of unit layers as claimed.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
In light of the overlap between the claimed sheet and that disclosed by Ono, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a sheet that is both disclosed by Ono and encompassed within the scope of the present claims and thereby arrive at the claimed invention and because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claims 3 and 12-13, Ono discloses the composition has a thermal conductivity of 8-36 W/m K (Table 1).
Response to Arguments
Applicant’s arguments are persuasive and moot in view of the new ground of rejection. See Office Action above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure including the international search report and written opinion.
US 2022/0002607 to Huang et al. teaches graphite and carbon fillers in thermal conductive polymeric matrix. [35]+
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.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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