DETAILED ACTION
Applicant’s reply, filed 5 February 2026 in response to the non-final Office action mailed 24 November 2025, has been fully considered. As per Applicant’s filed claim amendments claims 1-13 and 21 are pending under examination, wherein: claim 1 has been amended, claims 2 and 13 are as originally filed, claims 3-12 are as previously presented, claims 14-20 were withdrawn by previous restriction requirement, where claim 20 has since been cancelled, and claim 21 is new.
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, 10-13 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. (US PGPub 2010/0316821) in view of Uibel et al. (US PGPub 2016/0263791).
Regarding claim 1, Chang teaches multi-layer films, sheets and articles comprising a plurality of alternating or sandwiching layers (Figs, [0020]; [0026]) of plastic layers and adhesive layers, wherein the plastic layer and/or the adhesive layer comprises homogeneous mixture of a parent phase resin (instant binder), heat conductive particles, and microencapsulated phase-change materials (abstract; [0009]; [0008]-[0023]; FIGs 5, 6 and 8)(instant layered phase change composite; instant phase change layer). Chang teaches the heat conductive particles include boron nitride powders ([0012]) and the phase-change materials include paraffins, hydrocarbons, fatty acids, etc. ([0015]-[0018]). Chang further teaches methods of forming the multi-layered laminates ([0027]-[0030]).
As can be seen, at least, at Figures 5, 6B and 6C, Chang teaches layered structures comprising sandwiched layers of the adhesive composition and layers of metal or plastics. Noting Figure 5 (see [0050] for figure discussion): Chang teaches a middle plastic layer 501 sandwiched by two adhesive layers 502 which are sandwiched by two outer plastic layers 503 (where, for example, the middle layer 501 + outer plastic layer 503 reads on instant first and second capping layers, and/or the outer plastic layers 503 also read on instant first and second capping layer located on opposing sides of the adhesive layer 502; etc.). Similarly noting Figures 6B and 6C (see [0051] for figure discussion): adhesive layer 601 is sandwiched by outer layers 602 which may be plastic or metal (outer layers 602 readable over instant first and second capping layers).
Chang teaches the above noted plastic layer and/or the adhesive layer comprising homogeneous mixtures of a parent phase resin, heat conductive particles (i.e. boron nitride), and microencapsulated phase-change materials. Chang does not specifically teach aligning the boron nitride particles. However, Uibel teaches similar thermal management materials comprising the combination of a polymer base material and boron nitride particles (abstract; [0001]). Uibel teaches it is known that boron nitride particles tend to align themselves as plane-parallel to the surface of the obtained part which is disadvantageous as the resulting through-plane thermal conductivity is low which leads to low heat dissipation ([0022]-[0023]).Uibel teaches that high through-plane thermal conductivity, the thermal conductivity measured in the direction perpendicular to the plate plane ([0042]), can be obtained while still maintaining in-plane thermal conductivity by aligning the boron nitride platelets substantially perpendicular to the plate surface ([0001]; [0034]; [0043]; [0056]-[0058]; [0063]; [0067]; see Fig 5; Fig 6a-6b)(instant aligned). Uibel and Chang are analogous art and are combinable because they are concerned with the same field of endeavor, namely thermal management materials comprising boron nitride. At the time of filing a person having ordinary skill in the art would have found it obvious to align the boron nitride particles of Chang as taught by Uibel and would have been motivated to do so in order to obtain a thermal management material/article having high through-plane thermal conductivity in addition to still having good in-plane thermal conductivity and thus improved thermal dissipation.
Regarding claim 2, Chang in view of Uibel renders obvious the layered/sandwiched structures as set forth above and as noted Change teaches the phase-change materials include paraffins, hydrocarbons, fatty acids, etc. ([0015]-[0018]).
Regarding claim 3, Chang in view of Uibel renders obvious the layered/sandwiched structures as set forth in claim 1 above and Chang further teaches the phase-change material is selected depending on the operating conditions of the intended end-use of the structures and the desired latent heat of fusion and thermal energy storage properties ([0015]; [0049]), whose usability range can be adjusted over a wide-range depending on what is selected ([0018]-[0019]). Chang exemplifies layers comprising amounts of the phase-change microcapsules of 55% and 40% of the total weight of the layer, using a commercially available product MPCM 43D having an average particle size of 10-20 microns (see examples).
Chang does not teach the amount of phase change material in terms of volume %. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of phase change material and would have been motivated to do so in order to obtain the desired latent heat of fusion and thermal energy storage properties of the layer(s) suitable for the selected end-use. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Regarding claim 4, Chang in view of Uibel renders obvious the layered/sandwiched structures as set forth in claim 1 above and Chang further teaches the phase-change material is selected depending on the operating conditions of the intended end-use of the structures, and exemplifies the known range of paraffins from sub-ambient temperatures to greater than 60ºC ([0015]), further teaching the usability range can be adjusted over a wide-range depending on what is selected ([0018]-[0019]; see also examples 2-6 using MPCM 43D a commercial product having a phase change temperature of 43ºC).
Regarding claim 5, Chang in view of Uibel renders obvious the layered/sandwiched structures as set forth in claim 1 above and Chang further teaches both hexagonal boron nitride ([0012]) (instant hexagonal boron nitride platelets) and parent resins including polystyrene, butadiene copolymers, etc. ([0009]).
Regarding claim 6, Chang in view of Uibel renders obvious the layered/sandwiched structures as set forth in claim 1 above and Chang further teaches the conductive particles are selected in order to achieve effective and efficient thermal conductivity ([0011]). Chang exemplifies layers comprising amounts of the conductive particles, including hexagonal boron nitride specifically, of 10%, ~60%, 64.9%, etc. of the total weight of the layer (see examples).
Chang does not teach the amount of boron nitride/conductive particles in terms of volume %. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of conductive particles and would have been motivated to do so in order to obtain an effective and efficient thermal conductivity of the layer(s) suitable for the selected end-use. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Regarding claim 8, Chang in view of Uibel renders obvious the layered/sandwiched structures as set forth in claim 1 above and Chang further teaches that any variation of the number and thickness of the layers can be made ([0022]), that each layer can have a different thickness ([0023]), and that the thickness of each layer is preferably at least 5 microns up to about 10,000 microns (=from 0.005 mm up to 10mm) and the thickness of the overall multilayer article is less than about 20,000 microns (=less than 20 mm).
Regarding claim 11, Chang in view of Uibel renders obvious the layered/sandwiched structures as set forth in claim 1 above and Chang further teaches that the conductive particles are selected in order to achieve effective and efficient thermal conductivity ([0011]) and exemplifies achieved thermal conductivities of multilayered structures from of 0.4, 1 and 10 W/m·K (examples [0060]-[0063]). Chang further teaches the phase change materials are selected to obtain a desired latent heats of fusion and thermal energy storage properties ([0015]; [0049]) and exemplifies achieved heats of fusion of 70, 85 and 90 kJ/kg (examples [0060]-[0063]).
While Chang directly teaches values that meet the claimed heat of fusion and the claimed thermal conductivity, it is also noted that a chemical composition and its properties are inseparable, regardless of the testing method relied upon. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “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.”; MPEP 2112.01)).
Regarding claim 10, Chang in view of Uibel renders obvious the layered/sandwiched structures as set forth in claim 1 above and, as noted, Chang teaches the plastic and the adhesive layers are both comprised of the combination of base/parent resin, phase change materials, and conductive particles (capping layers comprise conductive particles). Change teaches the conductive particles are selected in order to achieve effective and efficient thermal conductivity ([0011]). Chang exemplifies layers comprising amounts of the conductive particles, including hexagonal boron nitride specifically, of 10%, ~60%, 64.9%, etc. of the total weight of the layer (see examples).
Chang does not teach the amount of boron nitride/conductive particles in terms of volume %. However, given that Chang teaches the layer also comprises the base/parent resin and the conductive particles, it is held that the amounts of hexagonal boron nitride of Chang will be both greater than 0 vol% and less than 100 vol% and therefore the recitation is deemed met by Chang, absent evidence to the contrary.
Regarding claims 12-13, Chang in view of Uibel renders obvious the layered/sandwiched structures as set forth in claim 1 above and Chang further teaches article structures ([0007]) including batteries, casings, hollow articles, supercapacitors, sleeves, etc. ([0001]; [0006]-[0007]).
Regarding claim 21, Chang in view of Uibel renders obvious the layered/sandwiched structures as set forth in claim 1 above. As noted above Uibel teaches the boron nitride particles are aligned substantially perpendicular and further demonstrates Figures 5, 6a and 6b (instant average angle of 0 to 45º measured relative to a direction perpendicular to the broad surface of the layer).
Claims 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. (US PGPub 2010/0316821) in view of Uibel et al. (US PGPub 2016/0263791) as set forth above, and further in view of Lee et al. (WO 2014/208930 A1).
Regarding claim 7, Chang in view of Uibel renders obvious the layered/sandwiched structures as set forth in claim 1 above and Chang further teaches the parent phase resin/plastics layers can be varied to achieve a desired thickness and to obtain layers where the phase change materials and conductive particles are well distributed therein ([0022]-[0023]; [0050]; [0052]). Change exemplifies layers comprising amounts of the resins of 40% and 35% of the total weight of the layer(s) (see examples).
Chang does not teach the amount of resin/plastic in terms of volume %. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of base resin and would have been motivated to do so in order to obtain a layer able to well-disperse the conductive particles and phase change materials and to achieved the desired thicknesses of layer(s). A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Chang teaches the parent resin for the adhesive layer can be selected from suitable compoundable resins ([0009]) but does not specifically teach epoxy resins. However, Lee teaches similar multilayered heat discharging articles comprising adhesive resin layers and protective resin layers (abstract; pg2; pg6-7). Lee teaches that the polymer based material of the adhesive layers is selected to both enhance attachment of layers and to enhance effective heat transfer (pg6 ln 7-10), where suitable polymers include epoxy resins (pg6 ln 13-16). Lee and Chang are analogous art and are combinable because they are concerned with the same filed of endeavor, namely multi-layered heat transfer articles comprising both adhesive and outer plastic/protective layers. At the time of filing a person having ordinary skill in the art would have found it obvious to select epoxy resin as taught by Lee as the adhesive layer parent resin of Chang and would have been motivated to do so as Lee teaches epoxy resins are suitable for providing both enhanced attachment of respective layers but also is suitable for enhancing effective heat transfer.
Regarding claim 9, Chang in view of Uibel renders obvious the layered/sandwiched structures as set forth in claim 1 above and Chang further teaches the parent phase resin/plastics for the plastic layer can be selected from suitable compoundable resins including polyethylene terephthalates, etc. ([0009]) but does not specifically teach epoxy resins.
However, Lee teaches similar multilayered heat discharging articles comprising adhesive resin layers and protective resin layers (abstract; pg2; pg6-7). Lee teaches that the polymer based material of the protective layers is selected to not only offer protection but to also improve heat discharge properties, provide anti-detachment functions and to improve insulation (pg6 ln 22-30), where suitable polymers include epoxy resins, polyethylene terephthalates, etc. (pg7 ln 1-2). Lee and Chang are analogous art and are combinable because they are concerned with the same filed of endeavor, namely multi-layered heat transfer articles comprising both adhesive and outer plastic/protective layers. At the time of filing a person having ordinary skill in the art would have found it obvious to select epoxy resin as taught by Lee as the polymer material of the plastic layers of Chang and would have been motivated to do so as Lee a) teaches epoxy resins are suitable for providing protection, improved heat discharge properties, improved insulation and prevent detachments and b) as Lee teaches epoxy resins are equivalent and interchangeable with polyethylene terephthalate and it is held that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable (See In re Ruff 118 USPQ 343 (CCPA 1958; MPEP 2144.06).
Response to Arguments/Amendments
The 35 U.S.C. 102(a)(1) rejection of claims 1-2, 4-5, 8 and 10-13 as anticipated by Chang (US PGPub 2010/0316821) and the 35 U.S.C. 103 rejections of claims 3 and 6 as unpatentable over Chang, and of claims 7 and 9 as unpatentable over Chang in view of Lee (WO 2014/208930 A1) are withdrawn as a result of Applicant’s filed claim amendments. Applicant’s arguments are substantially directed to the new limitation(s) recited in independent claim 1, met by the new grounds of rejection set forth above as necessitated by said new limitation(s).
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.
Correspondence
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/JANE L STANLEY/Primary Examiner, Art Unit 1767