DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments, filed 20 November 2025, with respect to the obviousness-type double patenting rejection have been fully considered and are persuasive. The application used in the rejection has been abandoned. Accordingly, the obviousness-type double patenting rejection has been withdrawn.
Applicant's arguments filed 20 November 2025 have been fully considered but they are not persuasive. Applicant argues that the prior art of Wada teaches a different method from the instant claims and uses comparative example 1 to argue this results in different properties. Specifically, the applicant argues and attempts to use comparative example 1 to show that when there is no preheating and pressurizing then the claimed D/W ratio is not attained. However, while comparative example 1 does not use a preheating and pressing the teachings of Wada differ from the comparative example. As shown in Wada [0040] there is a 75°C preheat and the embossing roll for pressurization. This appears to differ from comparative example 1 which states there is no preheating or pressurization. Therefore, the arguments are not persuasive and the rejection is maintained.
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, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Wada et al. (EP 3522689, from the IDS filed 20 May 2024, hereinafter referred to as “Wada”).
As to Claim 1: Wada teaches a heat dissipation sheet having a silicone resin and thermal conductive filler (Abstract). Wada further teaches that the amount of thermal conductive filler is preferably in the range of 240-730 parts by mass with respect to 100 parts by mass of the silicone resin which is a range of about 12-40 mass% silicone resin and 60-88 mass% thermal conductive filler [0030] and specifically teaches a ratio of 22% silicone to 78% thermal conductive filler (Table 1, Examples 1-7).
Wada does not teach the Feret diameter of the thermal conductive filler.
However, Wada teaches that the heat dissipation sheet is formed by a step pf mixing the components together, forming a layer on a glass cloth, preheating the sheet at a temp lower than the curing temperature and pressurizing the sheet, and a curing step of curing the preheated sheet to a temperature equal to or higher than the curing starting temperature [0039]. These steps are substantially similar to that of the method taught in the instant specification for example 1. Therefore, the claimed effects and physical properties, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claims 4 and 5: Wada renders obvious the heat dissipation sheet of claim 1 (supra). Wada further teaches that the thermal conductive filler is preferably an aggregate form of hexagonal boron nitride [0031].
Conclusion
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 ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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.
/Andrew J. Oyer/Primary Examiner, Art Unit 1767