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 .
The amendment filed 8/24/2026 has been entered. Claims 4-5, 12-13, and 17-18 have been canceled. Claims 1-3, 6-11, 14-16, and 19-20 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 1-3, 6-11, 14-16, and 19-20 are 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. Claim 1 has been amended to recite, “A thermally conductive sheet formed by using a composition containing (i) a disk-like compound, (ii) a high-molecular-weight compound…and (iii) inorganic particles” (emphasis added), however, the claim does not recite how the composition is being used or how the sheet is “formed by using” said composition or even whether the claimed thermally conductive sheet is actually formed from said composition versus for example, “using” the composition to form a mold that is then used to form the thermally conductive sheet such that the thermally conductive sheet is not directly formed from said composition. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claims 2-3, 6-11, 14-16, and 19-20 do not remedy the above and hence are indefinite for the same reasons.
Claim Rejections - 35 USC § 103
Claims 1-3, 6-11, 14-16, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hitomi (WO2019/013299A1, please refer to US2020/0148931A1 as an English language translation for the WO document for the below cited sections) in view of Gotro (USPN 5,827,907) or Carter (US2007/0196619A1), or Gibbs (WO2019/169360A1), for generally the reasons recited in the prior office action and restated below with respect to the amended claims wherein it is again noted that Hitomi similarly teaches a thermally conductive material comprising a disk-like compound that may be the same compound as represented by the instantly claimed D16, wherein n21X may be 0 to 3 such that the claimed structure, as elected, is fully encompassed by the teachings of Hitomi and would have been obvious to one having ordinary skill in the art given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
As discussed in the prior office action, Hitomi teaches a composition for forming a thermally conductive material, a cured sheet formed therefrom, and a device comprising a thermally conductive layer containing the thermally conductive material disposed on the device (Abstract, Paragraphs 0021-0023, 0060, and 0298, Examples), wherein the composition comprises a disk-like compound as instantly claimed, particularly a compound represented by Formula (D16) as in the claimed invention (Paragraphs 0027, 0085, and 0169-0197); an inorganic substance such as inorganic particles of inorganic oxide, or inorganic nitride such as boron nitride (Paragraphs 0019-0020, 0256-0268, 0272-0279); a curing accelerator such as triphenylphosphine, 2-ethyl-4-methylimidazole, and 1-benzyl-2-methylimidazole (Paragraph 0284-0285, reading upon the claimed “at least one compound selected from the group consisting of a triphenylphosphine and an imidazole compound” as in amended claim 11); and a crosslinking compound having a group reacting with the reactive groups of the disk-like compound, particularly an epoxy compound (Abstract, Paragraphs 0016-0017, 0198-0249); and although Hitomi teaches that the crosslinking compound may have substituents which based upon the general teachings of Hitomi with respect to substituents may be sulfonyl groups (Paragraphs 0038-0040, and 0199-0246), and that the composition “may contain other components in addition to the cured substance of the specific disk-like compound and the crosslinking compound” (Paragraph 0253), Hitomi does not teach that the composition contains a thermoplastic resin, particularly a polysulfone or polyethersulfone (Entire document, particularly as noted above and Examples), in a ratio of a content thereof to a content of the inorganic particles of 0.04 to 0.12 by mass ratio as recited in instant claim 1, and that the resulting cured sheet has a toughness parameter of 30 MPa·% or greater when measured by the claimed Text method 1 as recited in amended claim 1.
However, it is again noted that it is well established in the art that a small amount of thermoplastic resin, such as within the claimed range of instant claims 7-8 and 20, may be added to a curable thermosetting resin composition such as an epoxy, phenolic, melamine and/or triazine curable resin composition (e.g., a curable composition as in Hitomi) to improve toughness and/or mechanical properties thereof, as is well established in the art and particularly with respect to polysulfone and/or polyethersulfone resin as evidenced by Gotro (Entire Background section; Col. 3, line 44-Col 4; Col. 9, line 27-Col. 10, line 60); or Carter (Abstract, Paragraphs 0015-0020, 0037, 0041, 0050, 0056, 0099-0100, 0115, Examples); or Gibbs (Abstract; Page 3, line 7-Page 7, line 25; Page 9, lines 1-25; Pages 12-14); each of which teaches a curable/thermosetting resin composition comprising a thermosetting resin such as an epoxy, phenolic, melamine and/or triazine resin (e.g. as in Hitomi) and inorganic fillers such as boron nitride (e.g. as in Hitomi, also naturally has high thermal conductivity), wherein each reference teaches adding a small amount of thermoplastic resin, particularly a polysulfone or polyethersulfone, as a toughener or additive to improve mechanical properties of the cured resin, reading upon the thermoplastic resin as in instant claims 1-3 and 16.
Further, given that Hitomi teaches that the content of cured substance of the disk-like compound and the crosslinking agent with respect to the total mass of the thermally conductive material is preferably 5% to 95% by mass (Paragraph 0249), or more specifically, the content of the disk-like compound with respect to the total solid content in the composition is preferably 5% to 95%, more preferably 10% to 90%, and even more preferably 15% to 80% by mass (Paragraph 0275); and the content of the crosslinking compound with respect to the total solid content in the composition is preferably 5% to 95% by mass, more preferably 10% to 90% by mass, and even more preferably 15% to 80% by mass (Paragraph 0276); while the content of inorganic substance with respect to the total mass of the thermally conductive material is preferably 30% to 95% by mass, more preferably 35% to 90% by mass, and even more preferably 40% to 90% by mass, with all of the working examples utilizing 60% by mass; with the curing accelerator present in a content of preferably 0.01 to 30% by mass, even more preferably 0.01 to 10% by mass with respect to the total solid content in the composition (Paragraph 0286); Hitomi provides a clear teaching and/or suggestion that the content of additional components, such as a thermoplastic resin as noted above, based upon the above preferred ranges and the exemplified 60% by mass of inorganic substance may range from 0 to about 10% by mass for a ratio of 0 to about 0.16 encompassing and thus rendering obvious the instantly claimed mass ratio range of 0.04 to 0.12.
Hence, the Examiner maintains her position that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to add a thermoplastic resin such as a polysulfone and/or polyethersulfone resin, e.g. a known toughening agent(s) in the art, to the curable resin composition taught by Hitomi to improve the toughness and/or mechanical properties of the cured resin as is conventional in the art as evidenced by Gotro, or Carter, or Gibbs, in amounts as taught therein and/or as suggested by the teachings of Hitomi reading upon the content ratios as recited in instant claims 1, 6, and 19 as well as the content ranges as recited in instant claims 7-8 and 20, and/or in an amount to provide the desired toughness and/or mechanical properties for a particular end use given that the content thereof directly affects the toughness and/or mechanical properties as taught by Gotro, or Carter, or Gibbs, such that absent any clear showing of criticality and/or unexpected results with respect to the claimed invention, the Examiner maintains her position that the claimed invention as recited in amended claims 1-3, 6-11, 15-16, and 19-20 would have been obvious over the teachings of Hitomi in view of Gotro, or Carter, or Gibbs, given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to use a known technique to improve similar devices in the same way, and that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the cured composition taught by Hitomi in view of Gotro, or Carter, or Gibbs, formed from the same composition as instantly claimed, to exhibit the same or similar toughness properties when measured by the claimed test method of the instant invention, wherein it is again noted that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to determine the desired amount of thermoplastic resin toughener to provide the desired toughening properties for a particular end use of the thermally conductive sheet taught by Hitomi given the reasonable expectation of success.
With respect to instant claim 14, as noted above, Hitomi also teaches a device comprising a thermally conductive layer disposed thereon wherein the thermally conductive layer contains the thermally conductive material as discussed above, and given that Hitomi teaches that the device and the thermally conductive material “may be bonded to each other by the heating and the like performed for permanently curing the thermally conductive material” (Paragraph 0299) and that “the thermally conductive material can also be used as an adhesive having thermal conductivity” (Paragraph 0306), wherein the thermally conductive material may be made into a thick film/sheet having a thickness of equal to or greater than 400 µm (Paragraphs 0059-0060), and the claimed invention does not require the “adhesive layer” to be formed from a different material than the thermally conductive material, the Examiner takes the position that the claimed invention would have been obvious over the teachings of Hitomi in view of Gotro, or Carter, or Gibbs, given that the thick sheet taught by Hitomi may be viewed as having sections or sublayers wherein the surface section or sublayer close to the device and adhering thereto is equated to the claimed “adhesive layer” as broadly recited in instant claim 15. Alternatively, given that the use of an intervening adhesive layer to “bond” two components to one another wherein Hitomi teaches that the device and the thermally conductive material “may be bonded to each other by the heating and the like”, the claimed invention as recited in instant claim 14 would have been further obvious over the teachings of Hitomi in view of Gotro, or Carter, or Gibbs.
Response to Arguments
Applicant's arguments filed 8/24/2026 have been fully considered but they are not persuasive with respect to the obviousness rejection over Hitomi in view of Gotro, or Carter, or Gibbs. The Applicant argues that “the toughness parameter is associated with a physical property of a bulk portion of a thermally conductive sheet excluding its interfaces with other members, while the peel strength is a characteristic associated with adhesion between the thermally conductive sheet and other members” and that “[t]hus, one of ordinary skill in the art [allegedly] could not expect that a physical property of a bulk portion correlates with physical properties of interfaces in the thermally conductive sheet,” arguing that “[h]ence, the invention according to the amended claims of the present application, where the toughness parameter is equal to or greater than a predetermined value, thereby exhibiting the effect of excellent peel strength of the thermally conductive sheet, [allegedly] would not have been obvious from Hitomi or the other documents (Gotro, Carter, and Gibbs) cited in the Action” (see page 12 of the response). However, the Examiner respectfully disagrees and again notes that Hitomi in view of Gotro, or Carter, or Gibbs, clearly teaches a thermally conductive material/composition and cured thermally conductive sheet formed therefrom as in the instantly claimed invention, including all of the components and in contents as instantly claimed, and given that the claimed properties including the claimed toughness parameter directly result from “using” or more particularly from curing the claimed composition (e.g., in the presence of a curing agent as in the working examples of the instant specification), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the cured thermally conductive sheet formed from the composition taught by Hitomi in view of Gotro, or Carter, or Gibbs, which is the same composition as instantly claimed, to exhibit the same or similar toughness properties when measured by the claimed Test method 1 of the instant invention, such that absent any clear showing of criticality and/or unexpected results, the Examiner maintains her position that the claimed invention would have been obvious over the combined teachings of the cited prior art references, especially given that contrary to Applicant’s arguments, it is well established in the art that addition of a thermoplastic toughening agent into a thermoset resin can not only improve the toughening/mechanical properties of the resin but also improve the peel strength of the resin as evidenced by Gotro (Examples), or Carter (Paragraph 0124), or see also the Background section of Aspin (US2010/0108259A1, Paragraph 0009), or Brantseva (Modification of epoxy resin by polysulfone to improve the interfacial and mechanical properties in glass fibre composites. II. Adhesion of the epoxy-polysulfone matrices to glass fibres, Entire document, particularly Abstract, Results and Discussion, and Conclusions).
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 8/24/2026.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
