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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “where F0 represents a maximum load obtained by allowing a 90-gram iron ball to fall freely from a height of 400 mm to a support board horizontally disposed, and F1 represents a maximum load obtained by allowing the iron ball to fall freely from the height to a structure including the composite material disposed on the support board”. The reference maximum load would change depending on whether a relatively soft (e.g. flexible foam) or hard (stainless steel) material is used. The scope of the claim is therefore indefinite as the identity of the support board is not identified within the claim.
As claims 2-13 depend from claim 1, they are rejected for the same issue discussed above.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). Claim 10 recites “wherein the composite material is a non-foam body”. The ordinary meaning the term “foam” is a substance with open/closed cells or pores. Since the composite material comprises voids, they are “foams” in the ordinary sense of the word. The specification provides no clear express re-definition of the term that clearly delineates what distinguishes a “foam” from the void-containing composites claimed. Therefore, the intended scope of the claim is unclear.
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.
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.
Claim(s) 1-4, 6-8, and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirabayashi (JP2012-153774A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claim 1, Hirabayashi teaches silicone rubber compositions with voids and thermally conductive additive (Abstract), construed as composite material. The thermally conductive additive can be various inorganic materials (¶ 21). The voids are created via addition of organic resin hollow filler (¶ 14-15) construed as a plurality of voids surrounded by the solid portion of the silicone rubber composition.
Hirabayashi indicates the sponges have a thermal conductivity of 0.15 W/mK or more (¶ 31), a thickness on the order of 2 mm (¶ 59), and the hollow fillers have diameters spanning 200 microns or less (¶ 14). While not providing P3 measurements, much like the examples of the present specification Hirabayashi uses a silicone elastomer material as a foam matrix. Moreover, Hirabayashi indicates the rubber sponges have low hardness, light weight, and small compression set (¶ 11), indicating a relatively high degree of impact absorption. Accordingly, the position is taken that a P3 value of 70-90% is necessarily exhibited by the sponges of Hirabayashi in the absence of evidence to the contrary. The conductivity and void diameters taught by Hirabayashi overlap those claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Hirabayashi suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Hirabayashi. See MPEP 2123.
Regarding Claim 2, Hirabayashi satisfies (ii) of claim 1. Since claim 2 only further limits option (i) of claim 1, Hirabayashi meets the claim.
Regarding Claims 3 and 4, Hirabayashi indicates the sponges have a thermal conductivity of 0.15 W/mK or more (¶ 31) and a thickness on the order of 2 mm (¶ 59). The conductivity values taught by Hirabayashi overlap those claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Hirabayashi suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Hirabayashi. See MPEP 2123.
Regarding Claims 6, 11, and 13, Hirabayashi teaches an embodiment where void diameter is roughly 90 microns, the mean particle size of thermally conductive particle is 7 microns, and the void volume is 20% (¶ 60-63, Table 3), equivalent to a P0 of about 257.
Regarding Claims 7 and 8, Hirabayashi teaches the hollow fillers are microspheres (Table 1), suggesting the plurality of voids have substantially similar spherical outer shapes.
Regarding Claim 10, the sponges of Hirabayashi are construed as “non-foam” bodies.
Regarding Claim 12, Hirabayashi teaches embodiments where the inorganic particles have aspect ratios spanning 1.0-1.4 (¶ 22).
Allowable Subject Matter
Claims 5 and 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759