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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/27/2026 has been entered.
This action is responsive to Applicant’s request for continued examination and amendment/remarks filed 02/27/2026.
Claims 1-5 are currently pending.
Response to Amendment
The rejection of claims 1-4 under 35 U.S.C. 103 as being unpatentable over Ezaki et al. (WO 2016/035680 A1) in view of Shimizu et al. (WO 2018/181146 A1) as previously set forth in the Final Office action mailed 10/27/2025 is generally maintained and has been revised below.
The rejection of claims 1-4 under 35 U.S.C. 102(a)(1,2) as being anticipated by a comparative example(s) in Shimizu et al. (WO 2018/181146 A1) as previously set forth in the Final Office action mailed 10/27/2025 is generally maintained and has been revised below.
The rejections (including rejections over newly added claim 5) have been revised to utilize additional evidentiary references to support that the cited graphite material is scaly and is not an expandable graphite. See below.
Claim Rejections - 35 USC § 102 & 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Ezaki et al. (WO 2016/035680 A1) in view of Shimizu et al. (WO 2018/181146 A1) as evidenced by Graftech Grafoil Power (GFP) Pamphlet (2016) NPL. English language machine translations of Ezaki et al., Shimizu et al., and the NPL are provided with the Office’s copies of the references, and citations are with respect to the translations unless indicated otherwise.
Ezaki et al. teach thermally conductive resin compositions comprising 50-90 wt.% of a thermoplastic polyester resin (A) and 10-50 wt.% of a flake graphite (B) (abstract). Note that Ezaki et al. also refer to the flake graphite (B) as both “scale-like” and “scaly” elsewhere in the reference (e.g., p.3, p.7, claims, etc.) such that all the terms are interchangeable, i.e., the flake graphite is synonymously a scaly graphite. The compositions are useful for forming molded articles thereof (abstract & p.7) having thermal conductivity values in the resin flow direction, i.e., the plane direction, of preferably 8 W/(m∙K) or more (p.7), the same thermal conductivity as that claimed. The thermoplastic polyester resin (A) may be entirely crystalline and include polyethylene terephthalate or polybutylene terephthalate (bottom p.3 to middle p.4). The particle size of the graphite is not particularly limited but is preferably 1 to 500 microns and subsets thereof (near bottom p.7). It is also suggested additional graphites may be provided in addition to the scaly graphite (B), including combinations of flake/scaly graphites, (near top p.7). The disclosed ranges of (A) and (B) generally overlap parts by mass claimed; 50-90 wt.% polyester resin (A) overlaps the claimed 45 to 60 parts by mass (assumed to be 100 parts of (A)+(B), the only required components in the reference) and 10-50 wt.% graphite (B) as the remainder overlaps the claimed 40-55 wt.% parts by mass based on 100 parts by mass in total of (A)+(B). See also the narrower subsets of ranges of the reference’s (A) and (B) on p.6 (near bottom) and p.7 (near top). See also Example 3 providing 60 parts by mass of a polyester resin and 40 parts by mass of a flake/scaly graphite, within the claimed ranges of components (A) and (B).
Ezaki et al. fail to teach the claimed limitations that the flake/scaly graphite (B) comprises a blend of two graphites of a scaly graphite (B1) having a mean particle diameter of 250 to 400 microns and a scaly graphite (B2) having a mean particle diameter of 10 to 40 microns provided at a relative mass ratio range B1:B2 of 94:6 to 60:40.
However, Shimizu et al. similarly teach thermally conductive resin compositions comprising a thermoplastic polyester resin (A) and a graphite (C, instead of B, in this reference, which is merely terminology) (abstract). For purposes of obtaining a maximum thermal conductivity, Shimizu et al. teach it is preferable that the graphite component is a combination of flake graphite (C-1) having an average particle size between 200 to 400 microns (and subsets thereof, e.g., preferably 250 to 350 microns) and graphite (C-2) having an average particle size between 10 to 40 microns (and subsets thereof) provided at a relative mass ratio range of 100/0 to 78/22, preferably 90/10 to 78/22, (p.6), which generally overlap all the claimed parameters of the blend of two flaky/scaly graphites (B1) and (B2). Exemplary scaly graphites for the (C-1) component include a commercially available product with a specific average particle size of 300 microns (see C-1-2 on p.10). The disclosed scaly graphite (C-1-2) directly meets the claimed scaly graphite (B1) and its size and concentration. An exemplary graphite for the (C-2) component include a commercially available product, GFP-20 manufactured by Graftech, with a specific average particle size of 20 microns (see C-2-1 on p.10).
The parameters and concentration of the example’s GFP-20 (C-2-1) component meet those of the claimed scaly graphite (B2), but Shimizu et al. fails to appreciate or directly disclose the GFP-20 is a “scaly graphite” as claimed.
However, Graftech GFP-20 is known in the art to be made from natural flake graphite by crushing to a desired/specified particle size, meaning it is a flaky, i.e., scaly, graphite. The Graftech Grafoil Power (GFP) NPL (note, p.1 is in Japanese and p.2 is an English language machine translation of p.1) is an evidentiary reference that supports this rationale as the reference teach Grafoil powder (GFP), including GFP-20, is manufactured by Graftech and is made from natural flake graphite by crushing to a desired/specified particle size, meaning it is a flaky, i.e., scaly, graphite. The photos in the pamphlet also clearly demonstrate the various GFPs indeed appear flaky and/or scaly. The direct photographic depiction of the Grafoil GFP being flaky/scaly graphite serves as extrinsic evidence that fills the gap in Shimizu et al. that the cited example’s GFP-20 (C-2-1) component is indeed inherently a scaly graphite as claimed.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the blend of two scaly graphites with differing diameters (200-400 microns [and subsets/subvalues, e.g., preferably 250-350 microns or even simply 300 microns] and 10-40 microns, respectively) at the relative mass ratio of 100/0 to 78/22, preferably 90/10 to 78/22, as taught by Shimizu et al. as the scaly graphite component in Ezaki et al. in order to obtain a thermally conductive polyester resin composition having a maximized or improved thermal conductivity with a reasonable expectation of success.
The combination of references meet the claimed negative limitation that the composition is free from a polyester elastomer. The primary reference, Ezaki et al., is drawn to thermoplastic polyester resins and is entirely silent to polyester elastomers. In general, resins are rigid when cured or cast while elastomers are flexible, rubbery, or elastic after curing. If this were not enough, Ezaki et al. further teach the thermoplastic polyester resin may entirely crystalline (Id. on p.3 to 4), further distinguishing Ezaki et al.’s polyesters may be expressly non-elastomeric and do not include an elastomer. While it is noted that Ezaki et al. alternatively teach the polyester resin may include amorphous or partially crystalline or liquid crystalline which some persons skilled in the art might regard as a possibility or opening for an elastomeric polyester, these are all alternative from the cited and relied upon entirely crystalline polyester thermoplastic resins, and the reference’s disclosure of more than one alternative of polyester resin does not constitute a teaching away from the cited/relied upon crystalline polyester resin(s) because non-elastomeric, crystalline polyester resin(s) are in no way criticized, discredited, or discouraged. See In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). Also, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments such as providing a non-elastomeric, crystalline polyester resin as Ezaki et al.’s sole thermoplastic polyester resin (A). See Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
While the inventive compositions of the Shimizu et al. secondary reference indeed require a polyester elastomer (see the B component, abstract), a polyester elastomer is not incorporated into the present modification of the Ezaki et al. primary reference. The rationale of record merely takes teachings from Shimizu et al.’s specific graphite component(s) (C) and provides Shimizu et al.’s specific graphite component(s) as Ezaki et al.’s graphite component, keeping Ezaki et al.’s resin(s) as-is, in order to obtain a thermally conductive polyester resin composition having a maximized or improved thermal conductivity with a reasonable expectation of success. It is prima facie obvious to, for example, 1) provide a simple substitution of one known element (Ezaki et al.’s graphite) for another (Shimizu et al.’s blend of graphites) to obtain predictable results (maximize/improve thermal conductivity as per Shimizu et al.), 2) use a known technique (Shimizu et al.’s technique of providing a blend of two particular graphites for maximizing thermal conductivity in thermally conductive resin composition) to improve similar products in the same way (Ezaki et al.’s thermally conductive thermoplastic polyester resin- and graphite-containing composition), and 3) apply a known technique (Shimizu et al.’s technique of providing a blend of two particular graphites for maximizing thermal conductivity in thermally conductive resin composition) to a known product ready for improvement to yield predictable results (Ezaki et al.’s thermally conductive thermoplastic polyester resin- and graphite-containing composition, where the particle size of the graphite is not particularly limited and it is suggested additional graphites may be provided), etc.
Claim 5 is under 35 U.S.C. 103 as being unpatentable over Ezaki et al. (WO 2016/035680 A1) in view of Shimizu et al. (WO 2018/181146 A1) as evidenced by Graftech Grafoil Power (GFP) Pamphlet (2016) NPL as applied to claims 1-4 above, and further as evidenced by Okunaka et al (JP 2016-194046 A) and Okunaka et al. (US 2018/0223054 A1). An English language machine translation of the JP Okunaka et al. reference is provided with the Office’s copy of the reference, and citations are with respect to the translation unless indicated otherwise.
The disclosure of Ezaki et al. in view of Shimizu et al. as evidenced by the Graftech Grafoil Power (GFP) NPL is relied upon as set forth above. The rejection provides a blend of two scaly graphites with differing diameters at a certain relative mass ratio as taught by Shimizu et al. as the scaly graphite component in Ezaki et al. in order to obtain a thermally conductive polyester resin composition having a maximized or improved thermal conductivity with a reasonable expectation of success (Id.). The rejection also incorporates an evidentiary NPL reference that one of the graphite components of Shimizu et al. that is not directly disclosed as being scaly inherently has a scaly appearance as shown in a photograph of the material (Id.).
Regarding the claimed negative limitation that the scaly graphite (B) component does not contain expandable graphite, the first graphite (C-1) component, i.e., (C-1-2), of Shimizu et al. cited to meet the claimed scaly graphite (B1) appears free of expandable graphite as the reference is silent to the component containing expandable graphite. However, it is noted the second graphite (C-2) component, i.e., GFP-20 (C-2-1), of Shimizu et al. cited to meet the claimed scaly graphite (B1) is disclosed as an “expandable graphite” (see p.10).
Despite this, upon additional search and consideration of the prior art as a whole this seems to be a mistake in Shimizu et al. as other references characterize Grafoil GFP-trade named graphite powders as actually being an “expanded graphite” rather than an “expandable graphite”. Here, the evidence shows the cited Grafoil GFP powder is pulverized expanded graphite and is therefore not “expandable” (i.e., capable of expansion) because they are already expanded.
The JP Okunaka et al. reference is an evidentiary reference that supports the above finding as it teaches a thermally conductive resin composition comprising a graphite (C) component including flaky graphite, artificial graphite, or expanded graphite (abstract and p.4). JP Okunaka et al. prefers expanded graphite and indicates expanded graphite is “after expansion” (Id. on p.4). The working examples of JP Okunaka et al. utilize expanded graphite of the trade name Grafoil power GFP-100 which is a pulverized expanded graphite sheet with an average size of 0.1 mm as component (C-1) (p.10).
The US Okunaka et al. reference is an another evidentiary reference that supports the above finding as it similarly teaches a thermally conductive resin composition comprising a graphite (C) component including flaky graphite, artificial graphite, or expanded graphite (abstract and para. 0038-0040). US Okunaka et al. prefers expanded graphite and indicates expanded graphite is “after expansion” (Id. in para. 0040). The working examples of US Okunaka et al. utilize expanded graphite of the trade name Grafoil power GFP-100 which is a pulverized expanded graphite sheet with an average size of 0.1 mm as component (C-1) (para. 0117).
The two Okunaka et al. references serve as extrinsic evidence that fills the gap in Shimizu et al. that the cited Grafoil GFP-20 powder in Shimizu et al. is actually a pulverized expanded graphite and is therefore not “expandable” (i.e., capable of expansion) because they are already expanded. The two Okunaka et al. references additionally serve as extrinsic evidence that the cited Grafoil GFP powder is actually an expanded graphite that corrects and outweighs Shimizu et al.’s apparent incorrect characterization that Grafoil GFP powder is expandable. This meets the claimed negative limitation that the scaly graphite does not contain expandable graphite because expanded graphite is not an expandable graphite. Expandable graphite is an intermediate product and expanded graphite is a mutually exclusive final product thereof.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1,2) as being anticipated by Shimizu et al. (WO 2018/181146 A1) as evidenced by Graftech Grafoil Power (GFP) Pamphlet (2016) NPL. English language machine translations of Shimizu et al. and the NPL are provided with the Office’s copies of the references, and citations are with respect to the translations unless indicated otherwise.
Shimizu et al. teach thermally conductive resin compositions (abstract). Comparative Example 1 in the comparative showing of the reference consists of 54 parts by weight of a polyethylene terephthalate thermoplastic polyester resin (A), 39 parts by weight of a scaly graphite with an average particle size of 300 microns (C-1-2), and 7 parts by weight of graphite of the trade name “GFP-20” manufactured by Graftech with an average particle size of 20 microns (C-2-1) that obtains a thermal conductivity value in the “flow direction”, i.e., the plane direction, of 8.4 W/(m∙K). See Table 2 on p.21 of the original document, the key on p.9 to 10 of the machine translation, and the thermal conductivity measurement disclosure on p.11. Note that Comparative Example 1 intentionally excludes a polyester elastomer (B-1) component (see, e.g., Table 2 & the key on p.10, Id.). The disclosed scaly graphite (C-1-2) directly meets the claimed scaly graphite (B1) and its size and concentration.
The parameters and concentration of the example’s GFP-20 (C-2-1) component meet those of the claimed scaly graphite (B2), but Shimizu et al. fails to appreciate or directly disclose the GFP-20 is a “scaly graphite” as claimed.
However, Graftech GFP-20 is known in the art to be made from natural flake graphite by crushing to a desired/specified particle size, meaning it is a flaky, i.e., scaly, graphite. The Graftech Grafoil Power (GFP) NPL (note, p.1 is in Japanese and p.2 is an English language machine translation of p.1) is an evidentiary reference that supports this rationale as the reference teach Grafoil powder (GFP), including GFP-20, is manufactured by Graftech and is made from natural flake graphite by crushing to a desired/specified particle size, meaning it is a flaky, i.e., scaly, graphite. The photos in the pamphlet also clearly demonstrate the various GFPs indeed appear flaky and/or scaly. The direct photographic depiction of the Grafoil GFP being flaky/scaly graphite serves as extrinsic evidence that fills the gap in Shimizu et al. that the cited example’s GFP-20 (C-2-1) component is indeed inherently a scaly graphite as claimed.
An anticipation rejection over multiple references has been held to be proper when the extra references are cited to show that a characteristic not disclosed in the reference is inherent. See MPEP 2131.01 and Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991) (“To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.”)
In view of the foregoing, the cited comparative example amounts to a thermally conductive resin composition (and molded article thereof) comprising a polyethylene terephthalate thermoplastic polyester resin (A) and scaly graphite (B) and being free form a polyester elastomer, wherein a content of the a polyethylene terephthalate thermoplastic polyester resin (A) is 54 parts by mass and a content of the scaly graphite (B) is 46 parts by mass based on 100 parts by mass in total of the components (A) and (B), the scaly graphite comprises a scaly graphite (B1) having a mean particle diameter of 300 microns and scaly graphite (B2) having a mean particle diameter of 20 microns, a mass ratio B1:B2 is approximately 85:15, and thermal conductivity in a plane direction of a molded article obtained from the composition is 8.4 W/(m∙K), which anticipates each and every claimed limitation.
Claim 5 is rejected under 35 U.S.C. 102(a)(1,2) as being anticipated by Shimizu et al. (WO 2018/181146 A1) as evidenced by Graftech Grafoil Power (GFP) Pamphlet (2016) NPL as applied to claims 1-4 above, and further as evidenced by Okunaka et al (JP 2016-194046 A) and Okunaka et al. (US 2018/0223054 A1). An English language machine translation of the JP Okunaka et al. reference is provided with the Office’s copy of the reference, and citations are with respect to the translation unless indicated otherwise.
The disclosure of Shimizu et al. as evidenced by the Graftech Grafoil Power (GFP) NPL is relied upon as set forth above. The rejection cites a Comparative Example in Shimizu et al. as meeting each and every limitation of the prior claims as evidenced by the NPL that one of the components in the cited Comparative Example that is not directly disclosed as being scaly inherently has a scaly appearance as shown in a photograph of the material (Id.).
Regarding the claimed negative limitation that the scaly graphite (B) component does not contain expandable graphite, the scaly graphite (C-1-2) component of Shimizu et al. cited to meet the claimed scaly graphite (B1) appears free of expandable graphite as the reference is silent to the component containing expandable graphite. However, it is noted the GFP-20 graphite (C-2-1) component of Shimizu et al. cited to meet the claimed scaly graphite (B1) is disclosed as an “expandable graphite” (see p.10).
Despite this, upon additional search and consideration of the prior art as a whole this seems to be a mistake in Shimizu et al. as other references characterize Grafoil GFP-trade named graphite powders as actually being an “expanded graphite” rather than an “expandable graphite”. Here, the evidence shows the cited Grafoil GFP powder is pulverized expanded graphite and is therefore not “expandable” (i.e., capable of expansion) because they are already expanded.
The JP Okunaka et al. reference is an evidentiary reference that supports the above finding as it teaches a thermally conductive resin composition comprising a graphite (C) component including flaky graphite, artificial graphite, or expanded graphite (abstract and p.4). JP Okunaka et al. prefers expanded graphite and indicates expanded graphite is “after expansion” (Id. on p.4). The working examples of JP Okunaka et al. utilize expanded graphite of the trade name Grafoil power GFP-100 which is a pulverized expanded graphite sheet with an average size of 0.1 mm as component (C-1) (p.10).
The US Okunaka et al. reference is an another evidentiary reference that supports the above finding as it similarly teaches a thermally conductive resin composition comprising a graphite (C) component including flaky graphite, artificial graphite, or expanded graphite (abstract and para. 0038-0040). US Okunaka et al. prefers expanded graphite and indicates expanded graphite is “after expansion” (Id. in para. 0040). The working examples of US Okunaka et al. utilize expanded graphite of the trade name Grafoil power GFP-100 which is a pulverized expanded graphite sheet with an average size of 0.1 mm as component (C-1) (para. 0117).
The two Okunaka et al. references serve as extrinsic evidence that fills the gap in Shimizu et al. that the cited example’s Grafoil GFP-20 powder in Shimizu et al. is actually a pulverized expanded graphite and is therefore not “expandable” (i.e., capable of expansion) because they are already expanded. The two Okunaka et al. references additionally serve as extrinsic evidence that the cited Grafoil GFP powder is actually an expanded graphite that corrects and outweighs Shimizu et al.’s apparent incorrect characterization that Grafoil GFP powder is expandable. This meets the claimed negative limitation that the scaly graphite does not contain expandable graphite because expanded graphite is not an expandable graphite. Expandable graphite is an intermediate product and expanded graphite is a mutually exclusive final product thereof.
Response to Arguments
Applicant's arguments filed 02/27/2026 have been fully considered but they are not persuasive.
Regarding the 103 rejection based on Ezaki et al. (WO 2016/035680 A1) in view of Shimizu et al. (WO 2018/181146 A1) and the 102 rejection over Shimizu et al. (WO 2018/181146 A1), the position taken in both rejections is that Shimizu et al.’s graphite component (C-2), particularly the exemplary GFP-20 graphite manufactured by Graftech with a specific average particle size of 20 microns (see C-2-1 on p.10), meets the claimed scaly graphite (B2) component.
Applicant argues Shimizu et al.’s graphite (C-2) does not meet the claimed term of a “scaly graphite” because this interpretation is inconsistent with that in the present application’s specification. Applicant’s position is that Shimizu et al.’s (C-2) graphite component is an “expandable graphite” and that the original specification distinguishes scaly graphite from expandable graphite at [0023] of the specification. Applicant also argues the ordinary and customary meaning of the term “scaly graphite” does not include expandable graphite as expandable graphite is chemically treated so that it expands during heating whereas scaly graphite is not chemically treated and does not expand during heating.
In response, these arguments are not persuasive because there is no definition in the specification that scaly graphite (disclosed as "scale-like graphite" in the specification) includes or excludes expandable graphite. While the original specification prefers scaly graphite over a broad expandable graphite, the disclosure of what might or might not constitute scaly/scale-like graphite is incredibly broad and is not as limiting as alleged. See [0023] of the specification:
“In the present invention, the scale-like graphite (B) preferably mixed in the thermally conductive resin composition is not particularly limited, and a variety of graphite can be used, and any of natural graphite and artificially produced scale-like graphite may be used. These of the scale-like graphite may be any of being dried, fired, pulverized and/or classified. ... Expandable graphite can obtain high thermal conductivity compared with other graphite, but is brittle and reduction of the toughness is prone to occur. Further, the expandable graphite has a low bulk density and is prone to cause poor penetration during production. Therefore, from the viewpoint of handling, preferable is the scale-like graphite.”
A preference does not redefine a term such that it must be read into the claims, and it is improper to import claim limitations from the specification (such as preferences in the specification).
Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. Here, as there is no special definition assigned to “scaly graphite” in the specification (i.e., a passage along the lines of “As used herein, the term ‘scaly graphite’ means …”, or the like) that clearly puts a reader on notice the term has a special definition or meaning, the term “scaly graphite” has been given its plain meaning via its terminology and wording. The Office interprets “scaly graphite” as meaning graphite with a scaly (i.e., flaky) appearance. Any graphite that is scaly, flaky, in a scale shape, or in a flake shape with the recited parameters (concentration and mean particle diameter) meets the component. Shimizu et al.’s GFP-20 graphite (C-2-1) component manufactured by Graftech squarely meets this plain meaning of the claimed “scaly graphite”. The rejection of claims 1-4 is over the inherent shape of the cited graphite component.
While Shimizu et al. fails to appreciate or directly disclose the GFP-20 is a “scaly graphite” as claimed, the rejections of record now incorporate the Graftech Grafoil Power (GFP) Pamphlet (2016) NPL to clarify such. Graftech GFP-20 is known in the art to be made from natural flake graphite by crushing to a desired/specified particle size, meaning it is a flaky, i.e., scaly, graphite. The Graftech Grafoil Power (GFP) NPL (note, p.1 is in Japanese and p.2 is an English language machine translation of p.1) is an evidentiary reference that supports this rationale as the reference teach Grafoil powder (GFP), including GFP-20, is manufactured by Graftech and is made from natural flake graphite by crushing to a desired/specified particle size, meaning it is a flaky, i.e., scaly, graphite. The photos in the pamphlet also clearly demonstrate the various GFPs indeed appear flaky and/or scaly. The direct photographic depiction of the Grafoil GFP being flaky/scaly graphite serves as extrinsic evidence that fills the gap in Shimizu et al. that the cited GFP-20 (C-2-1) component of Shimizu et al. is indeed inherently a scaly graphite, i.e., a graphite that is scaly, flaky, in a scale shape, or in a flake shape with the recited concentration and mean particle diameter parameters, as claimed.
Applicant also cites and discusses additional references to allege the cited graphite of Shimizu et al. is not a scaly graphite (p.5 & 6 of the response). These references have been carefully considered but do not rise to a sufficient level of supporting Applicant’s position to withdraw the rejections.
The Okunaka et al. (US 2018/0223054 A1) reference cited by Applicant teaches Grafoil Powder GFP-100 is a “pulverized product of expanded graphite sheet” (para. 0117). Expanded graphite is not expandable graphite. Expandable graphite is graphite that is a treated/intercalated graphite that expands upon heating, and expanded graphite is a graphite that has already been expanded (a graphite product post-expansion of expandable graphite). Expanded graphite is not expandable because it has already been irreversibly expanded. In other words, expandable graphite is an intermediate product and expanded graphite is a mutually exclusive final product thereof.
The Graftech Grafoil reference sheet cited by Applicant (attached as pages 8-9 of the present response) is the Graftech Grafoil Power (GFP) Pamphlet (2016) NPL of record. Nowhere on the reference sheet is it indicated GFP-20 is of an expandable graphite. Instead, the reference states the powder “is made from natural flake graphite” (near top of the page) and has photos clearly demonstrating the various GFPs indeed appear flaky and/or scaly.
The Mercuri et al. (US 5,981,072) reference cited by Applicant is alleged to be of a method of manufacturing Grafoil. However, the patent is to an oxidation and corrosion resistant flexible graphite composite sheet for fire retardant and high sealability gaskets (title and col. 1). The patent’s sole claim recites, “A sealing gasket formed of a flexible roll-pressed sheet of a blended mixture of exfoliated expanded natural graphite formed by the heat expansion of intercalated natural graphite flake sized prior to heat expansion at least 80% by weight 20 by 50 mesh and unexfoliated intercalated natural graphite flake sized at least 80% by weight 50x80 mesh, the amount of the unexfoliated intercalated natural graphite in the blended mixture and the flexible sheet being from 5 to 25% by weight and said unexfoliated intercalated natural graphite containing from 500 to 4000 ppm of phosphorous.” There is no nexus between this cited patent and the GFP-20 component at issue cited in Shimizu et al.
The Toyoda NPL and partial machine translation thereof cited by Applicant (attached as pages 10-21 of the present response) reference cited by Applicant is alleged to be of another method of manufacturing Grafoil. While this NPL indicates sheet-shaped products under the trade name Grafoil is a flexible graphite sheet that is made by exfoliating or chemically treating a graphite sheet (machine translation of §2.3), there is no nexus between this cited NPL reference and the GFP-20 component at issue cited in Shimizu et al.
Applicant further argues Shimizu et al. does not consider a ratio corresponding to the presently claimed ratio.
In response, this argument is not persuasive because Shimizu et al. does teach the presently claimed ratio.
As cited in the 103 rejection based on Ezaki et al. in view of Shimizu et al., Shimizu et al. teach it is preferable that the graphite component is a combination of graphite (C-1) having an average particle size between 200 to 400 microns (and subsets thereof, e.g., preferably 250 to 350 microns, meeting the parameters of the scaly graphite B1, Id.) and graphite (C-2) having an average particle size between 10 to 40 microns (and subsets thereof, meeting the parameters of the scaly graphite B2, Id.) provided at a relative mass ratio range of 100/0 to 78/22, preferably 90/10 to 78/22, (p.6), which generally overlap all the claimed parameters of the blend of two flaky/scaly graphites (B1) and (B2). 100/0 to 78/22, preferably 90/10 to 78/22, overlaps the claimed 94:6 to 60:40 ratio.
As cited in the 102 rejection based on Shimizu et al., Comparative Example 1 consists of 54 parts by weight of a polyethylene terephthalate thermoplastic polyester resin (A), 39 parts by weight of a scaly graphite with an average particle size of 300 microns (C-1-2) meeting the parameters of the claim scaly graphite (B1), and 7 parts by weight of graphite of the trade name “GFP-20” manufactured by Graftech with an average particle size of 20 microns (C-2-1) meeting the parameters of the claimed scaly graphite (B2) (Id.). 39 parts (C-1-2) to 7 parts (C-2-1) corresponds to a mass ratio B1:B2 is approximately 85:15, which is squarely within the claimed 94:6 to 60:40 ratio.
Applicant’s arguments that Shimizu et al. teach an expanded graphite implies the reference fails to teach, suggest, or meet the negative limitation of newly added claim 5 that the scaly graphite (B) component does not contain expandable graphite.
However, the arguments are not persuasive to obviate the new grounds of rejection presented in this Office action. Despite the second graphite (C-2) component, i.e., GFP-20 (C-2-1), of Shimizu et al. is disclosed as an “expandable graphite” (see p.10), upon additional search and consideration of the prior art as a whole this seems to be a mistake in Shimizu et al. as other references characterize Grafoil GFP-trade named graphite powders as actually being an “expanded graphite” rather than an “expandable graphite”. New evidentiary references (Okunaka et al (JP 2016-194046 A) and Okunaka et al. (US 2018/0223054 A1)) are incorporated in the rejection to show the cited Grafoil GFP powder is pulverized expanded graphite and is therefore not “expandable” (i.e., capable of expansion) because they are already expanded.
The JP Okunaka et al. reference is an evidentiary reference that supports the above finding as it teaches a thermally conductive resin composition comprising a graphite (C) component including flaky graphite, artificial graphite, or expanded graphite (abstract and p.4). JP Okunaka et al. prefers expanded graphite and indicates expanded graphite is “after expansion” (Id. on p.4). The working examples of JP Okunaka et al. utilize expanded graphite of the trade name Grafoil power GFP-100 which is a pulverized expanded graphite sheet with an average size of 0.1 mm as component (C-1) (p.10).
The US Okunaka et al. reference is an another evidentiary reference that supports the above finding as it similarly teaches a thermally conductive resin composition comprising a graphite (C) component including flaky graphite, artificial graphite, or expanded graphite (abstract and para. 0038-0040). US Okunaka et al. prefers expanded graphite and indicates expanded graphite is “after expansion” (Id. in para. 0040). The working examples of US Okunaka et al. utilize expanded graphite of the trade name Grafoil power GFP-100 which is a pulverized expanded graphite sheet with an average size of 0.1 mm as component (C-1) (para. 0117).
The two Okunaka et al. references serve as extrinsic evidence that fills the gap in Shimizu et al. that the cited Grafoil GFP-20 powder in Shimizu et al. is actually a pulverized expanded graphite and is therefore not “expandable” (i.e., capable of expansion) because they are already expanded. The two Okunaka et al. references additionally serve as extrinsic evidence that the cited Grafoil GFP powder is actually an expanded graphite that corrects and outweighs Shimizu et al.’s apparent incorrect characterization that Grafoil GFP powder is expandable. This meets the claimed negative limitation that the scaly graphite does not contain expandable graphite because expanded graphite is not an expandable graphite. Expandable graphite is an intermediate product and expanded graphite is a mutually exclusive final product thereof.
Applicant could overcome the rejections of claim 5 upon a showing that the cited Grafoil GFP-20 powder expands upon heating. However, even if such a showing was performed, the rejections of claims 1-4 would still be maintained because the cited GFP-20 (C-2-1) component of Shimizu et al. is indeed inherently a scaly graphite, i.e., a graphite that is scaly, flaky, in a scale shape, or in a flake shape with the recited concentration and mean particle diameter parameters, as claimed. A graphite powder with a flaky/scaly appearance and shape (as cited/proposed in the rejections of claims 1-4) is certainly a scaly graphite under a broadest reasonable interpretation of the claims.
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 discussed above.
Correspondence
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
May 14, 2026
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