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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/25/2025 has been entered.
The amendment filed 11/25/2025 has been entered although it is noted that claim 1 was incorrectly identified as “previously presented” although the claim included marked-up changes and thus should have been identified as “currently amended”. Given that Applicant’s accompanying remarks clearly indicate that “claim 1 is amended” (see page 12 of the response) and in the interest of compact prosecution, a Notice of Non-Compliant Amendment is not being sent by the Examiner, however, the Applicant is reminded that each claim should be provided with the correct claim identifier. Claims 4-5 have been canceled. Claims 1-3 and 6-20 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 Objections
Claim 1 is objected to because of the following informalities: on line 5, the comma after “acrylic resin” should be replaced by a semicolon given the long list of alternative compounds for the high-molecular-weight compound and to more clearly separate “and the inorganic particles” from said list of alternative high-molecular weight compounds. Semi-colons should also be considered for the last two sections (paragraphs) of claim 1 that describe the different elements of the recited formulae, e.g., to clearly separate the different complex lists of items for each different element of the different formulae. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 11-15 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 11 recites, “The composition according to claim 1, further comprising a curing accelerator,” however, given that the composition as currently recited in claim 1, particularly in light of the elected polysulfone/polyethersulfone (e.g., typically inert polymers under normal conditions) and the elected disk-like compound (e.g., a triazine compound with terminal hydroxyl functional groups), is not recited as being a “curable” composition and/or as comprising a curable compound and/or components that are curable together, it is unclear as to what is meant to be encompassed by “further comprising a curing accelerator” considering that a “curing accelerator” by definition, accelerates a curing reaction. Similarly, claim 12 recites, “A thermally conductive sheet formed by curing the composition according to claim 1,” however, given again that the composition as currently recited in claim 1, particularly in light of the elected polysulfone/polyethersulfone (e.g., typically inert polymers under normal conditions) and the elected disk-like compound (e.g., a triazine compound with terminal hydroxyl groups), is not recited as being a “curable” composition and/or is not recited as containing any curable compounds or components that are curable together, it is unclear as to what is meant to be encompassed by “curing the composition according to claim 1.” Dependent claims 13-15 do not remedy the above and hence are indefinite for the same reasons as discussed above with respect to claim 12.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 17-18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 17 and 18 recite “a ratio of a content of the high-molecular-weight compound to a content of the inorganic particles” that includes values that are outside of the required ratio as recited in amended claim 1 from which claims 17 and 18 ultimately depend. More specifically, amended claim 1 recites, “wherein a ratio of a content of the high-molecular-weight compound to a content of the inorganic particles is 0.04 to 0.12 by mass ratio” on lines 6-7; while claim 17 recites a ratio of “0.01 to 0.2” with both endpoints beyond the required ratio of claim 1, and claim 18 recites a ratio of “0.02 to 0.12” with the lower endpoint being outside of the required 0.04 endpoint of claim 1. Thus, given that claims 17 and 18 depend upon claim 2 which depends upon claim 1, claims 17 and 18 do not further claim 2 and actually contradict (or do not incorporate) the limitations of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 1-3 and 6-20 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, wherein n21X is 1 to 3, as amended, 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 (Paragraph 0284-0285); 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), and 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 amended claim 1.
However, given again 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); or Aerts (Entire document, particularly Abstract, Paragraphs 0009-0010, 0059-0068, 0075-0076, 0101-0106, and 0121-0125), 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.
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, or Aerts, 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 17-19 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, or Aerts, 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 instant claims 1-3, 6-12 and 15-20 would have been obvious over the teachings of Hitomi in view of Gotro, or Carter, or Gibbs, or Aerts 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.
Further, with respect to instant claim 13, 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 composition taught by Hitomi in view of Gotro, or Carter, or Gibbs, or Aerts, formed from the same composition as instantly claimed, to exhibit the same or similar toughness properties when measured by the 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. Hence, for the same reasons as discussed above with respect to instant claim 12, the Examiner takes the position that instant claim 13, which is dependent upon instant claim 12, would have been obvious over the teachings of Hitomi in view of Gotro, or Carter, or Gibbs, or Aerts.
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, or Aerts 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 would have been further obvious over the teachings of Hitomi in view of Gotro, or Carter, or Gibbs, or Aerts.
Response to Arguments
Applicant's arguments filed 11/25/2025 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, or Aerts. The Applicant argues that the instantly claimed mass ratio range of a content of the high-molecular-weight compound to a content of the inorganic particles of 0.04 to 0.12 by mass ratio as recited in amended claim 1 provides alleged unexpected results as evidenced by the Examples and discussed in Paragraph 0200, particularly with respect to peel strength and thermal conductivity, wherein “the Examples clearly show that the numerical range has criticality in each of the case where the peel strength of the thermally conductive sheet is more excellent when the ratio of the content of the high-molecular- weight compound to the content of the inorganic particles is 0.04 or more and the case where the thermal conductivity of the thermally conductive sheet is more excellent when the ratio is 0.12 or less,” arguing that “[f]urther, a person skilled in art would not have expected to achieve the desirable results that it is possible to produce a thermally conductive sheet having excellent peel strength and excellent thermal conductivity when the ratio of the content of the high-molecular-weight compound to the content of the inorganic particles is within the above range, as shown in the working Examples.” However, the Examiner does not find these arguments persuasive and first notes that the data relied upon by the Applicant, i.e., Examples 2, 9, 10, 11, and 14 as discussed and compared in Paragraph 0200 as referenced by the Applicant, are not commensurate in scope with the claimed invention given that all of these examples utilize a very specific disk-like compound – compound A-2; a very specific curable aromatic epoxy compound having two epoxy groups – compound D-3, wherein the instant claims do not recite a curable compound at all during a dispersant, both of which directly affect the properties of the resulting composition; and very specific thermally conductive inorganic particles – aggregation-shaped boron nitride particles with an average diameter of 40 µm, wherein it is well established in the art that boron nitride not only has a relatively high thermal conductivity in comparison to most other inorganic particles, but also differs in properties when provided in the form of aggregated particles and of a particular particle size, especially when present in a content above 60wt% as in Applicant’s referenced examples cited in Paragraph 0200 of the instant specification, as evidenced by Hill (USPN 5,681,883, Entire document, particularly Examples, Figs. 4-6); such that one skilled in the art could not reasonably extend the probative value thereof to a composition as currently claimed and particularly comprising any of the disk-like compounds as recited in instant claim 1 and/or to any inorganic particles as recited in instant claim 1, or even any inorganic oxide or inorganic nitride as recited in instant claim 9. It is further noted that multiple amounts and/or ratios change between the referenced examples such that even if the data were commensurate in scope with the instant claims, the data would be inconclusive with respect to any clear showing of criticality and/or unexpected results with respect to the ratio of high-molecular-weight compound to inorganic particles. Hence, Applicant’s arguments are not persuasive, and the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Hitomi in view of Gotro, or Carter, or Gibbs, or Aerts for the reasons discussed in detail above.
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 11/25/2025.
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