DETAILED ACTION
This action is in response to applicant’s amendment received on 09/08/2025. Amended claims 1 and 5 are acknowledged. Claims 1-3, 5, 7 and 9-18 are pending. Claims 4, 6 and 8 are cancelled.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103:
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, 7, 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2021/0183730, herein “Wang”) in view of Kazuyuki (JPH 07336001A, machine translation attached) and Hsieh (US 2019/0003790).
Regarding claim 1, Wang discloses:
a heat dissipation member (fig. 4) [par. 0001 and 0016] comprising:
a base material (13a/13b) having a top surface configured to be in direct contact with a heat generating component (11a/11b) (fig. 4) [par. 0020]; the base material (13a/13b) including metal (copper) [par. 0020]; and
a thermal radiation ceramic material (14) that is a coating layer with which a bottom surface of the base material (13a/13b) is coated (fig. 4) [par. 0020],
(it is noted, by turning the heat dissipation member 180 degrees, the base material 13a/13b would be configured to have the bottom surface in contact with the heat generating component 11a/11b and the top surface coated by the coating layer 14), wherein
the thermal radiation ceramic material (14) contains silicon nitride and boron nitride as main components [par. 0022].
Although Wang discloses the thermal radiation ceramic material (14) comprising at least one of silicon nitride and boron nitride, Wang does not specifically disclose:
a ratio of a mass of the boron nitride to a mass of the silicon nitride and the boron nitride being 10 mass% to 40 mass%, and
the boron nitride having an average particle size of 0.05 µm to 1 µm.
Kazuyuki, also directed to a heat dissipation member (printing wiring board substrate) [par. 0001] comprising a thermal radiation ceramic material containing silicon nitride and boron nitride as main components [par. 0010] and as an obvious variation of a heat dissipation member comprising only boron nitride (h-BN) [par. 0010, lines 5-6]. Further, Hsieh, also directed to a heat dissipation member (1) comprising a base material (1) configured to be in contact with a heat source [par. 0022] wherein the base material (10 comprises silicon nitride and boron nitride [par. 0021] teaches that the use of silicon nitride (having a relatively higher heat-absorption capacity) combined with boron nitride (having a relatively higher heat-dissipation capacity) helps optimized heat transfer [par. 0021].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate into Wang the teachings of Kazuyuki and Hsieh to design the thermal radiation ceramic material with a combination of silicon nitride and boron nitride in order to optimize heat transfer, since Wang alludes to the option of using at least one of the aforementioned ceramic powders as noted above.
Hsieh discloses the weight percentages of boron nitride and silicon nitride being 30% and 20% respectively [par. 0021]. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a ratio of a mass of the boron nitride to a mass of the silicon nitride and the boron nitride being 10 mass% to 40 mass%, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In this instance, the ratio of a mass of the boron nitride to a mass of the silicon nitride and the boron nitride is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that having the proper ratio of a mass of the boron nitride to a mass of the silicon nitride and the boron nitride heat conduction is optimized. Therefore, since the general conditions of the claim, i.e. that a ratio of a mass of the boron nitride to a mass of the silicon nitride and the boron nitride is sized to optimize heat conduction, were disclosed in the prior art by Wang, it is not inventive to discover the optimum workable range by routine experimentation. Further, Kazuyuki discloses a ratio of a mass of the boron nitride to a mass of the silicon nitride and the boron nitride is 10 mass% to 40 mass% [par. 0010].
Kazuyuki acknowledges that the smaller the particle size of the powder use, the better the mechanical strength and processing accuracy [par. 0011] and alludes to the option of the particle size having a diameter of 0.5 µm to 3 µm [par. 0012].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ the boron nitride having an average particle size of 0.05 µm to 1 µm, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In this instance, the average size particle of the boron nitride particles is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that the boron nitride having an average particle size of 0.05 µm to 1 µm mechanical strength and processing accuracy are optimized. Therefore, since the general conditions of the claim, i.e. that the boron nitride particles are sized to optimized mechanical strength and processing accuracy, were disclosed in the prior art by the combination of Wang, Kazuyuki and Hsieh, it is not inventive to discover the optimum workable range by routine experimentation.
The combination of Wang, Kazuyuki and Hsieh discloses the heat dissipation member made from silicon nitride and boron nitride wherein a ratio of a mass of the boron nitride to a mass of the silicon nitride and the boron nitride is 10 mass% to 40 mass% [par. 0010], and wherein the boron nitride has an average particle size of 0.05 µm to 1 µm [par. 0012], as claimed. Since all of the structural limitations are met, then the combination of Wang, Kazuyuki and Hsieh will disclose the heat dissipation member having an average emissivity higher than or equal to 70% in wavelength regions of 3 µm to 25 µm, at temperatures up to 200°C. Per MPEP 2112 – III, it has been held that since the prior art comprises the composition being claimed, then the prior art on record will meet the limitations of the claim, in which applicant claims a composition in terms of a function, property or characteristic (average emissivity higher than or equal to 70% in wavelength regions of 3 µm to 25 µm).
Regarding claim 2, the combination of Wang, Kazuyuki and Hsieh discloses:
the boron nitride being hexagonal boron nitride [Kazuyuki, par. 0010].
Regarding claim 3, the combination of Wang, Kazuyuki and Hsieh discloses:
the thermal radiation ceramic material being a sintered body containing silicon nitride particles and boron nitride particles [Kazuyuki, par. 0010].
Regarding claim 7, the combination of Wang, Kazuyuki and Hsieh discloses:
the thermal radiation ceramic material having a thermal conductivity higher than or equal to 40 W/(m·K). Per MPEP 2112 – III, it has been held that since the prior art comprises the composition being claimed, then the prior art on record will meet the limitations of the claim, in which applicant claims a composition in terms of a function, property or characteristic (a thermal conductivity higher than or equal to 40 W/(m·K)).
Regarding claim 10, Wang discloses:
a heat sink (seen in fig. 4) comprising the heat dissipation member according to claim 1, upon modification with Kazuyuki and Hsieh.
Regarding claim 13, the combination of Wang, Kazuyuki and Hsieh discloses:
the heat dissipation member does not contain resin (in the case of Kazuyuki the resin used during the manufacturing process is removed, par. 0017-0018).
Claims 5, 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Wang, Kazuyuki and Hsieh, as it applies to claims 1-3, 7, 10 and 13, above, and further in view of Kazuo (JP 2016 216318A, Machine Translation attached).
Regarding claim 5, in the combination of Wang, Kazuyuki, and Hsieh:
Kazuyuki discloses, as it applies to claim 1, above:
the coating layer having a filler including the thermal radiation ceramic material (since, per paragraph 0052 of the instant PGPub, the filler is the thermal radiation ceramic material (printed wiring board substrate comprising silicon nitride and boron nitride)).
the combination of Wang, Kazuyuki, and Hsieh does not disclose:
the filler including a binder.
Kazuo, also directed to a thermal radiation ceramic material formed by sintering particles of silicon nitride [par. 0011] and boron nitride [par. 0048-0049] used as a thermally conductive material in a semiconductor device [par. 0084-0085] teaches that a binder component may be included in the manufacturing process of a thermally radiation ceramic material [par. 0020] for the purpose of ensuring shape retention [par. 0030].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate into the combination of Wang, Kazuyuki and Hsieh the teachings of Kazuo to have the thermal radiation ceramic material including a binder to optimize shape retention.
Regarding claim 16, the combination of Wang, Kazuyuki and Hsieh does not disclose:
the silicon nitride having an average particle size of 2 µm to 30 µm.
Kazuo teaches, however, that when the average particle size of the silicon nitride is 10 µm or less the components of the particles can be made more uniform [par. 0025]. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ the silicon nitride having an average particle size in the range of 2 µm to 30 µm claimed, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In this instance, the average size particle of the silicon nitride particles is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that the silicon nitride having an average particle size of 10 µm or less the components of the particles can be made more uniform, as taught by Kazuo. Therefore, since the general conditions of the claim, i.e. that the silicon nitride particles are sized to optimized uniformity of the particles, were disclosed in the prior art by the combination of Wang, Kazuyuki, Hsieh and Kazuo, it is not inventive to discover the optimum workable range by routine experimentation (see also MPEP 2144.05, Section II).
Regarding claim 18, the combination of Wang, Kazuyuki and Hsieh does not disclose:
the thermal radiation ceramic material containing 3 mass% to 20 mass% rare-earth oxide.
However, Kazuyuki teaches that the use of rare-earth oxides (like yttrium oxide) improves sinterability and impart a desired machinability [par. 0010], and Kazuo teaches the use of 5 parts of rare-earth materials (like yttrium oxide) in a combination of 100 parts of silicon nitride and 30 parts of boron nitride.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ the rare-earth oxide in the amount of 3 mass % to 20 mass % of the thermal radiation ceramic material, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In this instance, the amount of rare-earth oxide is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that adding rare-earth oxides improves sinterability and a desired machinability. Therefore, since the general conditions of the claim, i.e. that thermal radiation ceramic material contains a rare-earth oxide, were disclosed in the prior art by the combination of Wang, Kazuyuki, Hsieh and Kazuo, it is not inventive to discover an optimum workable range by routine experimentation.
Claims 9 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Wang, Kazuyuki and Hsieh, as it applies to claims 1-3, 7, 10 and 13, above, and further in view of Imamura et al. (US 2002/0164475, herein “Imamura”).
Regarding claim 9, the combination of Wang, Kazuyuki and Hsieh does not disclose:
a metal oxide layer on a part of a surface of the thermal radiation ceramic material.
However, forming metal oxide layers on a surface of thermal radiation ceramic materials like silicon nitride, for the purpose of optimizing a bonding interface between the thermal radiation ceramic material and a metal plate, is old and known in the art, as taught by Imamura [par. 0080 and 0083]. Therefore, it would have been obvious to one of skill in the art, before the effective filing date of the claimed invention, to incorporate into the combination of Wang, Kazuyuki and Hsieh the teachings of Imamura to have a metal oxide layer on a part of a surface of the thermal radiation ceramic material in order to optimize bonding interface between the thermal radiation ceramic material and a metal plate.
Regarding claim 14, the combination of Wang, Kazuyuki, Hsieh and Imamura discloses the metal oxide layer comprising a silicate [Imamura, par. 0083] but does not disclose the metal oxide layer being a rare-earth silicate represented by R2Si2O7, where R is a rare-earth element.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have the metal oxide layer being a rare-earth silicate represented by R2Si2O7, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 15, the recitation "the metal oxide layer being a layer formed on the surface of the thermal radiation ceramic material by oxidizing the thermal radiation ceramic material at high temperature in air" is considered to be a product by process limitation (emphasis added). MPEP 2113 clearly states "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In this instance, the product taught by the combination of Wang, Kazuyuki, Hsieh and Imamura is the same as or makes the product claimed obvious, meeting this limitation of the claim.
Claims 11 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Wang, Kazuyuki and Hsieh, as it applies to claims 1-3, 7, 10 and 13, above, and further in view of Masaaki (JP 2005026581A, machine translation attached).
Regarding claims 11 and 17, the combination of Wang, Kazuyuki and Hsieh does not disclose:
a surface of the heat dissipation member having an uneven part with a height difference greater than or equal to 25 µm or to a wavelength of infrared light to be emitted.
Masaaki, also directed to heat dissipation members (fig. 10) comprising ceramic material [par. 0014-0016 and 0028-0030] teaches that heat dissipation effect from a surface area of a ceramic containing material can be enhanced by subject the surface to an embossing or sandblasting treatment such that an uneven surface that is rougher than the wavelength of infrared rays is formed.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a surface of the heat dissipation member having an uneven part with a height difference greater than or equal to 25 µm, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In this instance, an uneven part with a height difference greater than or equal to 25 µm or to a wavelength of infrared light to be emitted is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that by having an uneven part with a height difference greater than or equal to 25 µm or to a wavelength of infrared light to be emitted, heat dissipation effect is optimized. Therefore, since the general conditions of the claim, i.e. that a surface of the heat dissipation member has at least an uneven part that is rougher than the wavelength of infrared rays, were disclosed in the prior art by the combination of Wang, Kazuyuki, Hsieh and Masaaki, it is not inventive to discover the optimum workable range by routine experimentation.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Wang, Kazuyuki and Hsieh, as it applies to claims 1-3, 7, 10 and 13, above, and further in view of Hirotsuru et al. (US 2016/0227644, herein “Hirotsuru”).
Regarding claim 12, the combination of Wang, Kazuyuki and Hsieh does not disclose:
the silicon nitride and the boron nitride of the thermal radiation ceramic material being uniformly dispersed.
However, Kazuyuki teaches that the boron component generally functions as a pore-forming agent wherein the smaller the porosity the better the mechanical strength [par. 0011], and it is known in the art that ceramic materials with high porosity exhibits lower thermal conductivity precisely due to the high porosity (see for instance, Hirotsuru, par. 0052). It would have been obvious to have the silicon nitride and the boron nitride being uniformly dispersed to have a uniformly dispersed small porosity thermal radiation ceramic material in order to optimize mechanical strength and thermal conductivity.
Response to Arguments
Applicant's arguments filed 09/08/2025 have been fully considered but they do not apply to the new grounds of rejection.
Conclusion
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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/GUSTAVO A HINCAPIE SERNA/Examiner, Art Unit 3763
/LEN TRAN/Supervisory Patent Examiner, Art Unit 3763