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 .
This action is responsive to Applicant’s response to election/restriction filed 07/29/2025.
Claims 1-13 are currently pending.
The Drawings filed 09/23/2022 are approved by the examiner.
The IDS statements filed 09/23/2022, 10/26/2022, 03/29/2023, 08/16/2023, 12/29/2023, and 08/29/2024 have been considered. Initialed copies accompany this action.
It is noted that, for most of the foreign patent references and non-patent literature references in foreign languages, Applicant has merely provided translations of the abstracts of the foreign patent references or a brief summary of the content of the non-patent literature references. While the references have been considered to the best of the Examiner’s ability, the contents of the references/pages in foreign languages have not been considered. Only the English language portions of the references have been considered.
Applicant’s election of Group I, claims 1-8, in the reply filed on 07/29/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102 & 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue et al. (WO 2018/181606 A1, utilizing US 2020/0031723 A1 as an English language equivalent).
As to claim 1, Inoue et al. teaches a thermal conductive member comprising a boron nitride sintered body comprising/made of boron nitride particles (abstract). The boron nitride sintered body comprises pores because it has a porosity (para. 0042; see also para. 0043 & 0049).
While Inoue et al. fail to anticipate the claimed limitation that an average pore diameter of the pores is less than 20 microns, Inoue et al. render obvious the claimed boron nitride sintered body under a prima facie case of obviousness because Inoue et al. teach the boron nitride sintered body have an average pore diameter of 0.1 to 3.0 microns (substantially overlapping the claimed range of less than 2 microns) in order to obtain a sufficient impregnation of a resin in the pores/boron nitride sintered body. 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).
As to claims 2 and 3, Inoue et al. teach the porosity of the boron nitride sintered body (equivalent to the proportion of the heat curable resin composition in a composite) may be 30-70 volume % (para. 0042), which overlaps the claimed porosity of 30-65% by volume. Bulk density may be calculated by multiplying true density (inherently 2,280 kg/m3 for BN) times (1-porosity) (see formula (2) at para. 0042 which can be rearranged to solve for bulk density). Inoue et al.’s overlapping porosity of 30-70% by volume corresponds to a bulk density range of 684 kg/m3 (i.e., 2280 x (1-0.70)) to 1,596 kg/m3 (i.e., 2280 x (1-0.30)), which overlaps the claimed bulk density of 800 to 1,500 kg/m3.
As to claim 4, Inoue et al. teach several working examples that meet the claimed thermal conductivity of 40 W/m-K or more. See the exemplary “B” materials in Table 1 which each contribute to thermal resistivities of about 0.108 to 0.150 °C/W. The exemplary thermal resistivities in Table 1 may be converted to thermal conductivity if the inverse were taken and then divided by the thickness, e.g., the thickness ranges cited in col. 7, and overlap if not lie within the claimed thermal conductivity range.
As to claim 6, Inoue et al. teach the boron nitride sintered body has a sheet shape and a thickness of less than 2 mm (para. 0033, 0053, & 0066).
As to claims 7 and 8, Inoue et al. teach a composite body comprising the boron nitride sintered body and a resin filled in at least some of the pores of the boron nitride sintered body (a resin is impregnated in the boron nitride sintered body, abstract and para. 0033 & 0044), which also reads on a heat dissipation member comprising the composite body. See also the thermal conductive member comprising the boron nitride sintered body/composite with the impregnated resin (abstract, etc.) which also reads on the heat dissipation member.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1,2) as being anticipated by Nishi et al. (US 2019/0092695 A1). Note that Nishi et al. was also earlier published as WO 2017/155110 A1, an X reference on Form PCT 210.
Nishi et al. teach a ceramic-resin composite body comprising a sintered body made of non-oxide ceramic particles and impregnated with a thermosetting resin composition (abstract). Boron nitride is Nishi et al.’s preferred and exemplary non-oxide ceramic for forming the sintered body (see para. 0047 and Table 1). In other words, Nishi et al. teach a boron nitride sintered body comprising boron nitride particles and pores (pores must be present or else the resin would not be able to be impregnated within the sintered body). The reference has examples that anticipate the claimed invention. For example, Example 1 in Table 4 is a boron nitride sintered body (AAA, see the key at Table 1) having an average pore diameter of 1.2 microns, a porosity of 42 vol. % (the proportion of the thermosetting resin composition), a bulk density of 1,322 kg/m3 (calculated by multiplying true density [inherently 2,280 kg/m3 for BN] times (1-porosity), i.e., 2280 x (1-0.42)), a thermal conductivity of 101.2 W/m-K, impregnated with a resin filled in the pores thereof and in the form of a sheet shape having a thickness of 0.320 mm (note, the reference’s “thermally conductive insulating adhesive sheet” is defined at para. 0037 as meaning the ceramic-resin composite body processed into a sheet shape – the reported thickness is that of this sheet), which fall within the ranges recited in instant claims 1-4 and 6. Example 2 in Table 4 is a boron nitride sintered body (BAA) having an average pore diameter of 0.9 microns, a porosity of 41.1 vol. %, a calculated bulk density of 1,343 kg/m3, a thermal conductivity of 93.6 W/m-K, impregnated with a resin filled in the pores thereof and in the form of a sheet shape having a thickness of 0.321 mm. Additional rationale exists over many other detailed parameters of the reference’s other working examples but will not be stated here for purposes of brevity. The reference’s composite body (containing a boron nitride sintered body and made into a thermally conductive sheet) reads on all the claimed sintered body, composite body thereof, and heat dissipation member thereof.
Regarding the orientation index of 40 or less as recited in claim 5, the claimed orientation index is presumed inherent of Nishi et al.’s exemplary boron nitride sintered bodies. Nishi et al. teach boron nitride sintered bodies with the same, if not more specific, features than that claimed (average pore diameters within the claimed range of less than 2 microns, porosity within the claimed range of 30-65% by volume, corresponding bulk densities within the claimed range of 88 to 1,500 kg/m3, and thermal conductivity values within the claimed range of 40 W/m-K, Id.; see also para. 0047 indicating providing boron nitride as the non-oxide ceramic for the sintered body obtains a thermal conductivity of at least 40 W/m-L which is equivalent and identical to the claimed thermal conductivity range of 40 W/m-K).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Nishi et al. (US 2019/0092695 A1).
The disclosure of Nishi et al. is relied upon as set forth above.
In the event Nishi et al.’s working examples are somehow deemed insufficient to anticipate the claimed orientation index of 40 or less, the claimed orientation index is alternative prima facie obvious over the teachings of Nishi et al. as the orientation index would flow naturally from the teachings of the reference.
Note that Applicant discloses at [0034] of the original specification, while the orientation index can be calculated by a peak intensity ratio I(002)/I(100) of (002) plane to (100) plane of boron nitride as measured by an X-ray diffractometer, an orientation index of 40 or less signifies a decrease or reduction in the anisotropy of thermal conducting properties (meaning a decrease or reduction in the non-uniformity in different directions of thermal conducting properties) of the boron nitride sintered body. Nishi et al. teach the sintered body is made by molding or isostatically pressing boron nitride powders and then sintering the mold/press/preform (para. 0048). Examples demonstrate the molds/pressing are conducted at a high pressure (5 to 120 MPa, para. 0078). A person of ordinary skill in the art would expect molding/pressing the precursor ceramic particles at pressures encompassed by the reference prior to sintering would result (flow naturally) in a decrease or reduction in the non-uniformity (i.e., an increase in uniformity) in different directions of thermal conducting properties, as claimed.
The remaining references listed on Forms 892, 1449, and PCT 210 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 10,487,013.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite a ceramic-resin composite body comprising a sintered body, including or made of boron nitride, with a resin impregnated in the sintered body, which reads on a boron nitride sintered body comprising boron nitride and pores, a composite body thereof, and a heat dissipation member thereof. The patented claims also recite the composite body configured into a sheet shape. While the patented claims fail to explicitly recite the average pore diameter of the sintered body’s pores, the porosity of the sintered body, the bulk density of the sintered body, thermal conductivity of the sintered body, or the thickness of the sintered body, note that the patent’s specification indicates all of these features as included by the patented invention such that the two sets of claims are obvious variants of one another. See the average pore diameter of 0.1-3.0 microns (col. 8 lines 40-43) which overlaps the claimed range. See the broad porosity range of 35-70% and preferred porosity range of 40-65% (col. 7 lines 55-60) which overlaps and falls within the claimed range, respectively; see also the bulk density calculation following the porosity disclosure at col. 8 such that bulk density could be calculated by the formula (true density of the ceramic sintered body, i.e., 2880 kg/m3 for BN)x(1-Porosity); boron nitride sintered bodies with porosities ranging about 34.2%-64.9% have the claimed bulk density. See also the exemplary average pore diameters, porosities (and corresponding bulk densities calculated from the porosities), thermal conductivities, and sheet thicknesses in Table 4 that are all within the claimed ranges. Furthermore, the claimed orientation index is either inherent from the exemplary compositions and/or would flow naturally from the patent’s specification teaching a high thermal conductivity and that the sintered body is made by molding and pressing precursor particles at pressure that would result in increasing the uniformity of thermal conductivity in all directions corresponding to the claimed orientation index property/result.
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1-4 and 6-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,034,623.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite a boron nitride sintered body with a resin impregnated in the boron nitride sintered body, which reads on a boron nitride sintered body comprising boron nitride and pores, a composite body thereof, and a heat dissipation member thereof. The patented claims also recite boron nitride sintered layer is configured as a layer, which reads on a sheet shape. While the patented claims fail to explicitly recite the average pore diameter of the sintered body’s pores, the porosity of the sintered body, the bulk density of the sintered body, thermal conductivity of the sintered body, or the thickness of the sintered body, note that the patent’s specification indicates all of these features as included by the patented invention such that the two sets of claims are obvious variants of one another. See the average pore diameter of 0.1-3.0 microns (col. 6 lines 13-16) which overlaps the claimed range. Regarding porosity, the porosity may be calculated from the proportion of the boron nitride sintered body relative to the proportion of resin in the composite (col. 5 line 34 to col. 6 line 5) and the disclosed ranges of boron nitride sintered body in the composite overlaps the claimed porosity; also note that bulk density of the boron nitride sintered body may be calculated from (true density of the ceramic sintered body, i.e., 2880 kg/m3 for BN)x(1-Porosity); boron nitride sintered bodies with porosities ranging about 34.2%-64.9% have the claimed bulk density. See the thickness ranges at col. 7 lines 45-60 which fall within the claimed range. See also the exemplary thermal resistivities in Table 1 (that may be converted to thermal conductivity if the inverse were taken and then divided by the thickness, e.g., the thickness ranges cited in col. 7) overlap if not lie within the claimed thermal conductivity range.
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1-4 and 6-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,912,011.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite a sheet comprising nitride sintered body with a porous structure and a resin impregnated into the nitride sintered body, which reads on a sintered body containing particles and pores, a composite body thereof, and a heat dissipation member thereof. The patented claims also recite the thickness of the sheet is 1.0 mm or less, which falls within the claimed thickness range. While the patented claim fails to recite the nitride sintered body is a boron nitride sintered body, the patent’s specification indicates boron nitride is the preferred material for the non-oxide ceramic (e.g., col. 9 lines 53-56). While the patented claims fail to explicitly recite the average pore diameter of the sintered body’s pores, the porosity of the sintered body, or the bulk density of the sintered body, thermal conductivity of the sintered body, note that the patent’s specification indicates all of these features as included by the patented invention such that the two sets of claims are obvious variants of one another. See the average pore diameter of 0.3-7.0 microns (col. 5 lines 41-55) which overlaps the claimed range. Regarding porosity, the porosity is regarded as the content of the resin in the composite (col. 8 lines 47-62) which may be present in various ranges which overlap the claimed porosity (col. 8 lines 27-46); also note that bulk density of the boron nitride sintered body may be calculated from (true density of the ceramic sintered body, i.e., 2880 kg/m3 for BN)x(1-Porosity) (see also col. 17 lines 1-9); boron nitride sintered bodies with porosities (i.e., resin contents) ranging about 34.2%-64.9% have the claimed bulk density. See the thermal conductivity of the nitride (preferably boron nitride) may be set to 40 W/m-K or more (col. 9 lines 57-59) which corresponds to the claimed range.
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1-4 and 6-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,083,784.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite a ceramic resin composite containing a non-oxide ceramic sintered body impregnated with a resin, which reads on a sintered body containing particles and pores, a composite body thereof, and a heat dissipation member thereof. While the patented claim fails to recite the non-oxide ceramic sintered body is a boron nitride sintered body, the patent’s specification indicates boron nitride is the preferred material for the non-oxide ceramic (e.g., col. 7 lines 8-17). While the patented claims fail to explicitly recite the average pore diameter of the sintered body’s pores, the porosity of the sintered body, the bulk density of the sintered body, thermal conductivity of the sintered body, or the thickness of the sintered body, note that the patent’s specification indicates all of these features as included by the patented invention such that the two sets of claims are obvious variants of one another. See the average pore diameter of 0.1-3.0 microns (col. 7 lines 1-3) which overlaps the claimed range. Regarding porosity, the porosity may be calculated from the proportion of the boron nitride sintered body relative to the proportion of resin in the composite (col. 6 lines 34-62) and the disclosed ranges of boron nitride sintered body in the composite overlaps the claimed porosity; also note that bulk density of the boron nitride sintered body may be calculated from (true density of the ceramic sintered body, i.e., 2880 kg/m3 for BN)x(1-Porosity); boron nitride sintered bodies with porosities ranging about 34.2%-64.9% have the claimed bulk density. See the thermal conductivity of the boron nitride may be set to 40 W/m-K or more (col. 7 lines 13-15) which corresponds to the claimed range. See the thickness ranges at col. 10 lines 55-63 which fall within the claimed range.
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 17/908,786 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a boron nitride sintered body comprising boron nitride particles, pores, a resin filled in at least some of the pores, the boron nitride sintered body having a sheet shape and a thickness of less than 2 mm, a porosity of 30-65% by volume, a bulk density of 800-1500 kg/m3, a composite body thereof, and a heat dissipation member thereof. While the copending claims fail to recite an average pore diameter, a thermal conductivity, and an orientation index of the boron nitride sintered body, note that the copending application’s specification indicates all of these features as included by the copending invention such that the two sets of claims are obvious variants of one another. See the average pore diameter of 0.1-4.0 microns and subsets thereof [0032], the thermal conductivity of the boron nitride sintered body may be 40 W/m-K or more [0037], and the orientation index of boron nitride crystals in the boron nitride sintered body may be 40 or less [0030].
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 17/908,817 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a boron nitride sintered body comprising particles, a porosity of 30-65% by volume, a bulk density of 800-1500 kg/m3, an average pore diameter of less than 5 microns, an orientation index of 20 or less, a resin filled in at least some of the pores of the boron nitride sintered body, a composite body thereof, and a heat dissipation member thereof. While not anticipatory, the copending claims overlap the scope of instant claims 1-3, 5, 7, and 8 and are merely an obvious variant of the claimed invention. Regarding the remaining limitations of instant claim 6, while the copending claims fail to recite a thermal conductivity of the boron nitride sintered body or a thickness of the boron nitride sintered body in a sheet shape, note that the copending application’s specification indicates this feature as included by the copending invention such that the two sets of claims are obvious variants of one another (see the boron nitride sintered body may be configured into a sheet shape having a thickness of less than 2 mm [0040] & [0058]).
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 17/906,772 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a boron nitride sintered body comprising boron nitride particles and pores, a porosity of 30-65% by volume, a bulk density of 800-1500 kg/m3, an orientation index of 20 or less, a sheet shape and a thickness of less than 5 mm, a resin filled in at least some of the pores of the boron nitride sintered body, a composite body thereof, and a heat dissipation member thereof. While the copending claims fail to recite an average pore diameter or a thermal conductivity, note that the copending application’s specification indicates all of these features as included by the copending invention such that the two sets of claims are obvious variants of one another. See the average pore diameter of less than 2 microns [0024] and the thermal conductivity of the boron nitride sintered body may be 40 W/m-K or more [0030].
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 17/998,690 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a composite body comprising a nitride sintered body having a porous structure and a resin impregnated into the nitride sintered body, an average pore diameter of 7 microns or less, and a proportion of pores i.e. porosity of 10-70 volume %. While the copending claims fail to recite the nitride sintered body is made out of boron nitride, note that the copending application’s specification indicates boron nitride is the preferred material for the nitride [0022]. While the copending claims fail to recite a bulk density, a thermal conductivity, and that the composite body is configured into a sheet with a certain thickness, note that the copending application’s specification indicates all of these features as included by the copending invention such that the two sets of claims are obvious variants of one another. See the calculation for bulk density from the proportion of pores [0027] (note, porosities of 34.2%-64.9% have the claimed bulk density), the thermal conductivity of the nitride (preferably boron nitride, Id.) may be 40 W/m-K or more [0030], and the composite body may have a sheet shape and a thickness of 1 mm or less [0021].
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/245,681 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a composite sheet comprising a porous nitride sintered body having a thickness less than 2 mm, resin filled in pores inside the nitride sintered body, and a composite sheet thereof, which also reads on a heat dissipation member thereof. While the copending claims fail to recite the nitride sintered body is made out of boron nitride, note that the copending application’s specification indicates boron nitride is the preferred material for the nitride [0009]. While the copending claims fail to recite a pore diameter, a porosity, or a bulk density, note that the copending application’s specification indicates all of these features as included by the copending invention such that the two sets of claims are obvious variants of one another. See the average pore diameter of 0.5-5 microns [0032], the porosity of 30-65% by volume [0034], and the calculation/relation between porosity and bulk density [0035] (note, porosities of 34.2%-64.9% have the claimed bulk density).
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/246,123 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a composite sheet comprising a porous sintered ceramic component having a thickness less than 2 mm, resin filled in pores inside the nitride sintered body, which also reads on a heat dissipation member thereof. While the copending claims fail to recite the nitride sintered body is made out of boron nitride, note that the copending application’s specification indicates boron nitride is the preferred material for the nitride [0040]. While the copending claims fail to recite a pore diameter, a porosity, or a bulk density, note that the copending application’s specification indicates all of these features as included by the copending invention such that the two sets of claims are obvious variants of one another. See the average pore size of 0.5-5 microns [0037], the porosity of 30-65% by volume [0039], the calculation/relation between porosity and bulk density [0040] (note, porosities of 34.2%-64.9% have the claimed bulk density), the preferred bulk density of 800 to 1500 kg/m3 when the ceramic is boron nitride [0041].
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/246,073 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a composite sheet comprising a porous sintered ceramic component having a thickness less than 2 mm, a resin filled in pores inside the nitride sintered body, an average pore diameter of 0.5 to 5 microns, and the nitride sintered body contains a boron nitride sintered body, which also reads on a heat dissipation member thereof. While the copending claims fail to recite a porosity, or a bulk density, note that the copending application’s specification indicates all of these features as included by the copending invention such that the two sets of claims are obvious variants of one another. See the porosity of 30-65% by volume [0029], the calculation/relation between porosity and bulk density [0030] (note, porosities of 34.2%-64.9% have the claimed bulk density), the preferred bulk density of 800 to 1500 kg/m3 when the ceramic is boron nitride [0031].
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/246,082 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a composite sheet comprising a porous sintered ceramic/nitride component having a thickness less than 2 mm, a resin filled in pores inside the nitride sintered body, an average pore diameter of 0.2 to 10 microns, which also reads on a heat dissipation member thereof. While the copending claims fail to recite the nitride sintered body is made out of boron nitride, note that the copending application’s specification indicates boron nitride is the preferred material for the nitride [0047]. While the copending claims fail to recite a porosity, or a bulk density, note that the copending application’s specification indicates all of these features as included by the copending invention such that the two sets of claims are obvious variants of one another. See the porosity of 30-65% by volume [0046], the calculation/relation between porosity and bulk density [0047] (note, porosities of 34.2%-64.9% have the claimed bulk density), the preferred bulk density of 800 to 1500 kg/m3 when the ceramic is boron nitride [0048].
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-5 of copending Application No. 18/246,096 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a composite comprising a porous sintered ceramic component and a resin filled into pores of the sintered ceramic component. While the copending claims fail to recite the sintered ceramic is made out of boron nitride, note that the copending application’s specification indicates boron nitride is the preferred material for the nitride [0045]. While the copending claims fail to recite an average pore diameter, a porosity, a bulk density, or that the sintered body is in a sheet shape with a certain thickness, note that the copending application’s specification indicates all of these features as included by the copending invention such that the two sets of claims are obvious variants of one another. See the average pore size of 0.1-5 microns [0042], the porosity of 30-65% by volume [0044], the calculation/relation between porosity and bulk density [0045] (note, porosities of 34.2%-64.9% have the claimed bulk density), the preferred bulk density of 800 to 1500 kg/m3 when the ceramic is boron nitride [0046], and the shape may be a sheet shape with a thickness of less than 2 mm [0054], [0047], & [0048].
Note that it is proper to construe a claim using the reference patent disclosure to ascertain whether a claim defines an obvious variation of an invention claimed in a reference patent. See MPEP 804, II, B, 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
August 22, 2025