CTFR 17/695,318 CTFR 84830 DETAILED ACTION Applicant’s reply, filed 8 April 2026 in response to the non-final Office action mailed 9 January 2026 , has been fully considered. As per Applicant’s filed claim amendments claims 1-2, 5-10, 13-18 and 20-21 are pending under examination, wherein: claims 1, 5, 13 and 20 have been amended, claims 2, 6-10 and 14-18 are as originally filed, claim 21 is as previously presented, and claims 3-4, 11-12 and 19 have been cancelled by this and/or prior amendment(s). Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claim 20 is 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. Regarding claim 20 , the as-amended claim depends from a now-cancelled claims and as such is indefinite. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-2, 5-6, 8-10, 13-14, 16-18 and 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 1-2, 5, 13 and 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 ). 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 5, 13 and 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) . 07-21-aia AIA Claim s 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 Takahara (US PGPub 2016/0115343) in view of Ogata (JP 09-012771 A) and of claims 7, 15 and 21 as unpatentable over Takahara in view of Ogata and further in view of Nakanishi (US PGPub 2009/0069513) are maintained . Applicant’s arguments (Remarks, pages 7-8) have been fully considered but were not found persuasive. Applicant argues that Takahara [0049] teaches the ratio of the average particle sizes of particles (A) to the average particle sizes of particles (B), a ratio of (D A /D B ), is from 0.8 to 10 and that if the ratio exceeds 10, the thermal conductivity may not be obtained. Applicant further argues the as amended claim limitations of instant particles B and C fall outside the ratio of Takahara and that Takahara teaches away from the instant claims. This is not found persuasive. As Applicant noted, Takahara also states that the ratio of (D A /D B ) “is not particularly limiting” and that while a ratio range of 0.8 to 10 is ‘preferred’, it is not required. Further Takahara’s teaching that the thermal conductivity ‘may not’ be obtained, where no specific value thereof is required, is not a teaching that it will not be obtained or does not occur. The average particle size range taught by Takahara of the particles (A) of from 40-80 µm ([0032]) meet the claimed range of instant particles B, and the average particle size range taught by Takahara of the particles (B) of from 1-150 µm ([0036]) render obvious the claimed range of instant particles C, and does so with overlapping values that also meet a (D A /D B ) range of 0.8 to 10. Takahara does not teach away from the instant particle sizes as Takahara teaches overlapping ranges thereof and does not criticize, discredit or otherwise discourage selecting from those ranges values that meet the instant claims. Conclusion 07-39 AIA THIS ACTION IS MADE FINAL. 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. 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. 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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JANE L STANLEY/ Primary Examiner, Art Unit 1767 Application/Control Number: 17/695,318 Page 2 Art Unit: 1767 Application/Control Number: 17/695,318 Page 3 Art Unit: 1767 Application/Control Number: 17/695,318 Page 4 Art Unit: 1767 Application/Control Number: 17/695,318 Page 5 Art Unit: 1767 Application/Control Number: 17/695,318 Page 6 Art Unit: 1767
Prosecution Insights