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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/30/2025, has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 3, 4, 7, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Mochizuki et. al., (US20160002520, herein Mochizuki), in the view of Tomoo et. al., (WO2015141797, herein Tomoo, a machine translation is being used for citation purposes) and Kenji et. al., (JP2019006895, herein Kenji, a machine translation is being used for citation purposes).
Regarding Claims 1, 3, 4, Mochizuki teaches a thermosetting resin composition [0010] comprising: thermosetting resin (A) include an epoxy resin, [0072] in the range of 1 mass % and less than or equal to 30 mass % with respect to the thermally conductive sheet as 100 mass % [0076]; curing agent (C-2) greater than or equal to 1 mass % and less than or equal to 30 mass % with respect to the thermally conductive sheet as 100 mass %; phenoxy resin (E) greater than or equal to 3 mass % and less than or equal to 10 mass % with respect to the thermally conductive sheet as 100 mass %. [0105]; hence, the epoxy resin to the resin composition without filler, is (0.01)/(0.01+0.3+0.1)=2.44% to 0.3/(0.3+0.01+0.03)=88.24%, which encompasses the claimed range; the phenoxy resin to the resin composition without filler, is (0.03)/(0.3+0.3+0.03)=4.76% to 0.1/(0.01+0.01+0.1)=83.33%, which overlaps the claimed range.
Mochizuki teaches inorganic filler material (B) includes boron nitride; secondary agglomerated particles that are formed by agglomerating primary particles of scaly boron nitride [0077, 79], reads on the thermal conductive particle. Mochizuki further teaches “the cured product of the thermally conductive sheet is obtained by heating the thermally conductive sheet at 180° C” [0066] reads on the curing process.
Mochizuki does not teach the wherein the epoxy resin (A) includes a mesogen skeleton and has a softening point of 60° C. or lower, however, Tomoo teaches 1, 6-bis (2,3-epoxypropoxy) naphthalene type epoxy resin, product name: HP-4032D” [P26; L1188] as evidenced by CAS Registry Number: 131406-13-8, structure see below, as the epoxy resin (A), reads on the epoxy resin (A) includes a mesogen skeleton with the softening point of 25° C. or lower. Mochizuki and Tomoo are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of the formation of naphthalene epoxy resin and boron nitride-based coating composition for substrates including metal foil. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mochizuki to substitute the teachings of Tomoo and provide the “1, 6-bis (2,3-epoxypropoxy) naphthalene type epoxy resin, product name: HP-4032D” [P26; L1188] into the epoxy resin and apply into the composition formation. Doing so would further achieve desirable properties of resin composition which is flexible and easy to handle before curing and has excellent adhesion and thermal conductivity at high temperatures after curing [P3; L88] as taught by Tomoo.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
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Mochizuki teaches curing agent is preferably a novolac-type phenol resin [0096], but does not explicitly teach the specific novolac-type cyanate resin, however, Kenji teaches PT30, phenol novolac-type multifunctional cyanate ester resin, manufactured by Lonza Japan Co., Ltd. [0041], reads on the novolac-type cyanate resin. Mochizuki and Kenji are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of the formation of naphthalene epoxy resin and thermo-conducting filler-based composition by using novolac-type phenol resin as curing agent, and coating to conductive surface including metal substrate. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mochizuki to substitute the teachings of Kenji and provide the PT30, phenol novolac-type multifunctional cyanate ester resin, manufactured by Lonza Japan Co., Ltd. [0041] into the curing agent selection, and further apply to the composition formation. Doing so would further improve the heat resistance and mechanical strength of the cured product of the resin composition [0044] as taught by Kenji.
Regarding thermal conductivity, the claims 1-5 are directed to a composition before being cured, however, the thermal conductivity is a property directed to the cured product, which is the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) see MPEP 2144.07.
Regarding Claim 7, Mochizuki teaches obtain the thermally conductive sheet and the cured product [0042].
Regarding Claim 8, Mochizuki does not explicitly teach the A metal base substrate comprising in the following order: a metal substrate; an insulating layer comprised of the resin sheet; and a metal layer, however, Tomoo teaches “the cured resin sheet contains a cured resin containing structural units derived from the first epoxy resin, the second epoxy resin and the curing agent, and optionally other components such as a filler” [P21; L941]; Tomoo teaches the “In Fig. 4, the cured resin sheet 102; The heat dissipation base 106 may be made of copper foil, aluminum foil, or the like; the copper plates 104” [P25; L1096], structure see below [FOR] which matches the claimed three layered metal substrates, resin, metal layer structure.
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Mochizuki and Tomoo are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that resin sheets for electronic devices. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mochizuki to add the teachings of Tomoo and provide the configuration of “the cured resin sheet contains a cured resin containing structural units derived from the first epoxy resin, the second epoxy resin and the curing agent, and optionally other components such as a filler” [P21; L941]; Tomoo teaches the “In Fig. 4, the cured resin sheet 102; The heat dissipation base 106 may be made of copper foil, aluminum foil, or the like; the copper plates 104” [P25; L1096] into the product development. Doing so would further achieve specified product development in semiconductor device manufacturing.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Mochizuki et. al., (US20160002520, herein Mochizuki), Tomoo et. al., (WO2015141797, herein Tomoo, a machine translation is being used for citation purposes) and Kenji et. al., (JP2019006895, herein Kenji, a machine translation is being used for citation purposes) as applied in claim 1 set forth above, and in the further view of Murase et. al., (JP2013006972, herein Murase, a machine translation is being used for citation purposes).
Regarding Claim 2, Mochizuki teaches inorganic filler material (B) includes boron nitride; secondary agglomerated particles that are formed by agglomerating primary particles of scaly boron nitride [0077, 79], reads on the thermal conductive particle. Mochizuki does not teach the specific range of the thermal conductive filler, however, Murase teaches “boron nitride (BN)” [0071] in the range of “5 parts by weight or more and 1,900 parts by weight or less of an inorganic filler (C) based on 100 parts by weight of the total epoxy resin.” [0019] overlaps the claimed range. Mochizuki and Murase are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of thermal conductive filler and naphthalene epoxy resin based coating composition formation for metal surface application. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mochizuki to add the teachings of Murase and add the specified thermal filler range into adhesive film. Doing so would further achieve desirable properties of “epoxy resin composition which has film-forming properties applicable to processes such as film molding and coating, and which is excellent in moldability, moisture resistance, heat resistance, electrical properties, and thermal conductivity.” [0020] as taught by Murase.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Response to Arguments
Applicant’s arguments, filed 12/30/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Mochizuki et. al., (US20160002520, herein Mochizuki), Tomoo et. al., (WO2015141797, herein Tomoo, a machine translation is being used for citation purposes) and Kenji et. al., (JP2019006895, herein Kenji, a machine translation is being used for citation purposes) as applied in the new rejection above.
In this case, Mochizuki, Tomoo and Kenji teach all of the claimed ingredients in the claimed amounts, and Mochizuki further teaches the composition as being made by a substantially similar process as set forth in the rejection above. The newly added reference_ Kenji teaches PT30, phenol novolac-type multifunctional cyanate ester resin, manufactured by Lonza Japan Co., Ltd. [0041], reads on the novolac-type cyanate resin as curing agent.
Additionally, in response to the applicant’s argument that “unexpected results” , in fact, when Examples 1-2 and Comp. Examples 1-2 from instant application specification and the Examples 1-8 from the declaration, are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. The Claim 2 is open to wherein the thermosetting resin composition includes 100% by mass to 400% by mass of the thermally conductive particles (C) with respect to a resin component (100% by mass) of the thermosetting resin composition; However, both the Examples 1-2 and Comp. Examples 1-2 from instant application specification and the Examples 1-8 from the declaration only employ a single value of the claimed ingredients, i.e., only employ the thermal conductive particle as a single value of 260 parts by mass. Hence, the thermally conductive particles range is not reasonably commensurate in scope with the claimed range. Therefore, both the Examples 1-2 and Comp. Examples 1-2 from instant application specification and the Examples 1-8 from the declaration are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767