DETAILED ACTION
Applicant’s reply and request for continued examination (RCE), filed 10 December 2025 in response to the Final Office action mailed 11 June 2025, has been entered and fully considered. As per Applicant’s filed claim amendments claims 1-21 are pending, wherein: claim 1 has been amended, claims 2-20 are as originally filed, and claim 21 is new.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10 December 2025 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.
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.
Claims 1-6, 8-14 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Takahara et al. (US PGPub 2016/0115343; cited by the Examiner on PTO-892 of 10 March 2025) in view of Ogata et al. (JP 09-012771 A; Machine translation by J-PlatPat utilized for English language citations).
Regarding claims 1-5, 11-13 and 19-20, Takahara teaches thermosetting resin compositions comprising a thermosetting resin (instant thermosetting compound A) and an inorganic filler comprising boron nitride secondary particles (A) and boron nitride secondary particles (B) (abstract; [0013]; [0028]). Takahara further teaches the thermosetting resin is preferably an epoxy resin ([0055]) in combination with a curing agent which includes phenols compounds ([0056])(instant claim 2).
Takahara teaches the particles (A) ([0030]-[0033]), wherein the average particle size of the secondary particles is from 20 to 110 µm, preferably 40 to 80 µm ([0032])(instant particles B; instant claim 1; instant claims 3 and 11). Takahara teaches the particles (B) ([0034]-[0036]), wherein the average particle size of the secondary particles is from 1 to 150 µm, preferably 2 to 120 µm ([0036])(instant particles C; instant claim 1; instant claims 4-5, 12-13 and 19-20). Takahara further teaches other fillers may be included but such is optional and neither required nor preferred ([0052])(instant no other filler).
Takahara teaches the boron nitride fillers as set forth above but is silent as to the oxygen atom concentration of the boron nitride particles (instant particles C = Takahara particles (B)). However, Ogata teaches resin sheets comprising boron nitride and epoxy resins, and teaches that excellent filling properties, low permittivity, high heat conductivity and excellent electrical insulation can be obtained when the boron nitride is subjected to an oxidation treatment (abstract; pg1-2; [0006]; [0010]) which increases its weight by 1 to 40 wt% ([0007]; [0011])(readable over instant at least 1.5 at% or more (claim1)). Ogata and Takahara are analogous art and are combinable because they are concerned with the same field of endeavor, namely thermally conductive sheets comprising epoxy resins and boron nitride. At the time of filing a person having ordinary skill in the art would have found it obvious to utilize particles having been oxidized as taught by Ogata as the boron nitride filler of Takahara and would have been motivated to do so as Ogata teaches oxidized boron nitrides have improved filling, low permittivity, high heat conductivity, and excellent electrical insulation.
Regarding claims 6 and 14, Takahara in view of Ogata renders obvious the composition as set forth in claims 1-2 above. Takahara further teaches the total content of inorganic filler is from 40 to 80% by volume ([0054]) and teaches the ratio of particles (A) to particles (B) is 5:95 to 90:10 ([0050]).
Regarding claims 8-9 and 16-17, Takahara in view of Ogata renders obvious the composition as set forth in claims 1-2 above. Takahara further teaches curing the composition and forming sheets which are thermally conductive ([0065]).
Regarding claims 10 and 18, Takahara in view of Ogata renders obvious the sheets as set forth in claims 9 and 17 above. Takahara further teaches power modules comprising a seminconductor element mounted on a heat dissipation member, another heat dissipation member that externally dissipates heat, and the thermal conductive sheet of the disclosed composition which transmits the heat generated by the semiconductor element from one heat dissipation member to the other heat dissipation member ([0079]; Fig 4)(instant device).
Claims 7, 15 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Takahara et al. (US PGPub 2016/0115343) in view of Ogata et al. (JP 09-012771 A; Machine translation by J-PlatPat utilized for English language citations), and further in view of Nakanishi et al. (US PGPub 2009/0069513; cited by the Examiner on PTO-892 of 10 March 2025).
Takahara in view of Ogata renders obvious the compositions as set forth in claims 1-2 above. Takahara teaches the thermosetting resin is preferably an preferably an epoxy resin ([0055]) in combination with a curing agent which includes phenols compounds ([0056]), wherein the epoxy resins include bisphenol A epoxy resins, bisphenol F epoxy resins, ortho-cresol novolak epoxy resins, and so on ([0055]).
Takahara does not specifically teach the epoxy resin to have an epoxy equivalent of 130 or less. However, Nakanishi teaches it is known to use epoxy resins as binders for various applications ([0002]-[0003]) and teaches that improved heat resistance and mechanical properties can be obtained when multifunctional liquid epoxy resins having an epoxy number of 100 to 150 g/eq are used instead ([0005]-[0007]) to make cured products ([0038]). Nakanishi teaches compositions comprising the multifunctional liquid epoxy resins, a phenol curing agent, and filler including boron nitride ([0010]; [0023]; [0024]; [0026]; [0029]). Nakanishi and Takahara are analogous art and are combinable because they are concerned with the same field of endeavor, namely curable epoxy compositions comprising phenol curing agents and inorganic filler. At the time of filing a person having ordinary skill in the art would have found it obvious to use the multifunctional epoxy resin having an epoxy number of 100 to 150 g/eq of Nakanishi as the epoxy resin of Takahara and would have been motivated to do so as Takahara invites known epoxy resins, and so on, and further as Nakanishi teaches use of the multifunctional epoxy resins having an epoxy number of 100 to 150 g/eq instead of typical epoxy resins results in improved heat resistance and mechanical properties ([0005]-[0007]; [0023]; [0049]).
Response to Arguments/Amendments
The 35 U.S.C. 103 rejections of claims 1-6, 8-14 and 16-20 as unpatentable over Takezawa (US PGPub 2018/0148622) in view of Ogata (JP 09-012771A) and of claims 7 and 15 as unpatentable over Takezawa in view of Ogata and further in view of Baba (US PGPub 2018/0213635) are withdrawn as a result of Applicant’s filed claim amendments. Note the new grounds of rejection as necessitated by Applicant’s amendments to independent claim 1. Applicant’s arguments (Remarks, pages 7-10) are moot as the prior rejection is now withdrawn.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767