DETAILED ACTION
Applicant’s reply, filed 12 November 2025 in response to the non-final Office action mailed 12 August 2025, has been fully considered. As per Applicant’s filed claim amendments claims 1-20 are pending, wherein: claims 1 and 5-6 have been amended, and claims 2-4 and 7-20 are as originally filed.
Claim Rejections - 35 USC § 112(d)
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.
Claim 15 is 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. Claim 1, from which claim 15 ultimately depends, recites that the phenolic compound has a triazine ring. As such the claim 15 recitation fails to further limit and is improper. 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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura et al. (JP 2014196403 A; see Clarivate Analytics machine translation for English language citations).
Nakamura teaches thermosetting resin compositions comprising an epoxy resin, a phenol curing agent, a curing/hardening accelerator, and a heat conductive inorganic filler containing secondary aggregated particles (abstract; pg2-3).
Nakamura further teaches the curing/hardening accelerator is selected from phosphorous-based compounds including triphenylphosphines and primary to tertiary substituted triphenylphosphines (instant claims 1, 3-4, 12-13 and 19) such as tris(p-methylphenyl)phosphine, tri-o-tolylphosphine (instant claim 2), tri-p-tolylphosphine, tri-m-tolylphosphine, tris(p-methoxyphenyl), etc. (pg3-4). Nakamura further teaches the heat conductive inorganic filler containing secondary aggregated particles is boron nitride, having an average particle diameter of the aggregate of 20 µm or more and 180 µm or less (pg6)(instant claims 7-8 and 16-17). Nakamura further teaches the phenol curing agent selected from well-known phenol curing agents including dicyclopentadiene cresol, etc. (pg3)(a phenolic compound readable over instant compound of molecular weight of 1,000 or less).
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 1-4 and 7-20 and Claim 6 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (JP 2014196403 A; see Clarivate Analytics machine translation for English language citations) in view of Tsuda et al. (US PGPub 2018/0208820), as evidenced by Morita et al. (JP 2013036041 A; see Clarivate Analytics machine translation for English language citations).
Regarding claims 1-4, 7-8, 12-17 and 19-20 and Regarding claim 6, Nakamura teaches thermosetting resin compositions comprising an epoxy resin, a phenol curing agent, a curing/hardening accelerator, and a heat conductive inorganic filler containing secondary aggregated particles (abstract; pg2-3).
Nakamura further teaches the curing/hardening accelerator is selected from phosphorous-based compounds including triphenylphosphines and primary to tertiary substituted triphenylphosphines (instant claims 1, 3-4, 12-13 and 19) such as tris(p-methylphenyl)phosphine, tri-o-tolylphosphine (instant claim 2), tri-p-tolylphosphine, tri-m-tolylphosphine, tris(p-methoxyphenyl), etc. (pg3-4).
Nakamura further teaches the heat conductive inorganic filler containing secondary aggregated particles is boron nitride, having an average particle diameter of the aggregate of 20 µm or more and 180 µm or less (pg6)(instant claims 7-8 and 16-17).
Nakamura teaches the thermosetting resin as set forth in claims 1-2 and 5 above and further teaches that the phenol curing agent can be selected from well-known phenol curing agents (pg3). Nakamura does not specifically teach a phenol curing agent having a triazine ring. However, Tsuda teaches similar thermally conductive resin compositions comprising an epoxy resin, a thermally conductive agglomerated boron nitride filler, and a curing agent (abstract; [0067]-[0068]; [0085]-[0090]; [0115]-[0122]). Tsuda teaches known curing agents are phenol-based curing agents ([0117]) including preferably aminotriazine novolac resins ([0120])(aminotriazine novolac resin/phenol-based curing agents for epoxy resins being evidenced by Morita, pg 6-7, as compounds whose molecular weight is 60 or more (instant 1,000 or less)). Tsuda and Nakamura are analogous art and are combinable because they are concerned with the same filed of endeavor, namely thermally conductive epoxy resin compositions comprising agglomerated boron nitride, suitable for use in heat transfer applications. At the time of filing a person having ordinary skill in the art would have found it obvious to select from the known phenol-based curing agents of Tsuda as the phenol curing agent of Nakamura and would have been motivated to do so as Nakamura invites selection of any known phenol curing agent and further as Tsuda teaches aminotriazine novolac resins are known and suitable phenol-based curing agents for use in curing epoxy resin compositions.
Regarding claims 9-11 and 18, Nakamura teaches the thermosetting resin composition set forth in claims 1 and 2 above and further teaches the composition is cured into a film or sheet (pg9-10) and may be incorporated into a power module as a sheet (pg9)(instant layer; instant disposed on device).
Response to Arguments/Amendments
The objection to the abstract of the specification is withdrawn as a result of Applicant’s filed abstract amendment.
The objection to claim 1 is withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 102(a)(1) rejection of claims 1-5, 7-14 and 16-20 as anticipated by Nakamura (JP 2014196403 A) is withdrawn as a result of Applicant’s filed claim amendments for all claims less claim 5 for which the rejection is maintained (see above).
Applicant’s amendments rewriting claim 5 as an independent claim fails to overcome an anticipatory rejection over Nakamura who teaches phenol curing agent compounds that have molecular weights of less than 1,000.
Applicant argues (Remarks, pages 10-11) that the translation of Nakamura is “incorrect” but 1) provides no certified English translation to support such a position and 2) the allegedly correct translation quoted by Applicant does not change the teaching of Nakamura i.e. that suitable and preferred phenol resins are taught by Nakamura which meet the instant limitation of a molecular weight of less than 1,000, such as dicyclopentadiene cresol. Applicant argues that because Nakamura does not explicitly limit the phenol curing agents to those having a molecular weight of less than 1,000 does not serve to negate the fact that Nakamura does teach phenol curing agents that have that property. As the rejection of claim 5 is one of anticipation, Applicant’s arguments to ‘better results’ (noting that ‘better’ is not the standard for unexpectedness) are not applicable (MPEP 706.02(b)).
The 35 U.S.C. 103 rejection of claims 6 and 15 as unpatentable over Nakamura in view of Tsuda (US PGPub 2018/0208820) is maintained as set forth above. Applicant’s arguments (Remarks, pages 9-10) have been fully considered but were not found persuasive.
Applicant argues the instant examples are demonstrative the combination of a phenolic compound with a triazine ring, an epoxy compound, a phosphine compound of Formula (1) and an inorganic nitride, is ‘important’ to achieve various effects.
Applicant argues that neither Nakamura nor Tsuda teach the entire combination. The Examiner notes the rejection is under 103 and based upon a combination of references. Applicant has provided no rebuttal as to the combination. Nakamura teaches the combination of phenolic curing agent, epoxy compound, phosphine compounds of Formula (1), and inorganic nitride to obtain a thermosetting resin composition having heat conductive properties (abstract; see rejection) and teaches that well-known phenolic curing agents are suitable. Tsuda teaches well-known phenolic curing agents, specifically suitable for thermally conductive resin composition comprising the combination of epoxy resins and boron nitride filler, include the preferred aminotriazine novolac resin curing agents. One having ordinary skill in the art having been appraised of the teachings of Nakamura would have found it obvious to look to the teachings of Tsuda for well-known phenol-based curing agents and arrive at the instant invention with a reasonable expectation of success.
Applicant is reminded that the rejection under 35 U.S.C. 103 is based upon a combination of references and that the reason or motivation to modify the prior art reference(s) may often suggest what the inventor has done, but for a different purpose or to solve a different problem. Furthermore, it is noted that it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. The motivation question arises in the context of the general problem confronting the inventor, rather than the specific problem solved by the invention (see In re Kahn, 441 F.3d 977, 987, 78 USPQ 2d 1329, 1336 (Fed. Cir. 2006); see also Cross Med. Prods., Inc. v. Medtronic Sofamore Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) one of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings; see also In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990); MPEP 2144 and 2141.01).
Further regarding Applicant’s asserted advantageous effects demonstrated by the instant examples: the Office points out that enhancing and improving upon existing properties is not necessarily equated to the generation of unexpected results. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP §716.02. Further, whether the 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. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d).
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767