DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment of claims 1, 6, 8 are supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 12/9/2025. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 9 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
For claim 9, the specification does not support the boron nitride comprise coupling agents.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-2, 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakakura (JP2005150362).
In setting forth this rejection a machine translation of JP2005150362 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation USPGPub.
Sakakura teaches a composition comprising 100 parts of a general purpose resin, 0.1-50 parts of a thermally conductive filler and 3-30 parts of an electrically insulating material [0010]. The general purpose resin can be polyolefin [0017]. The thermally conductive filler can be carbon nanotubes [0009]. The electrically insulating material can be alumina [0010]. A composition of 100 parts of resin, 1 part of thermally conductive filler and 10 parts of electrically insulating material equals to a composition of 90wt% of resin, 1 wt% of thermally conductive filler and 9wt% of electrically insulating material. Therefore, the contents of each components overlap the claimed range. It is noted that both electrically insulating material and thermally conductive filler read on an additive.
Claims 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakakura (JP2005150362) in view of Hanson et al (US 5,950,066).
Sakakura teaches the limitations of claim 1, as discussed above. Sakakura further teaches a highly thermally conductive sheet used as a heat dissipation material for electric and electronic devices [0001].
Sakakura does not teach an antioxidant agent like claimed.
However, Hanson discloses a thermally conductive material and teaches when the product is to be applied for use in an oxidative atmosphere or environment, thermal stability may be enhanced through the use of an antioxidant Irganox 1010, tetrakis [methylene (3,5-di-t-butyl-4-hydroxyhydrocinnamate)] methane (10:55-65). It is noted that the name disclosed in Hanson missing a term “methane” at the end. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize an antioxidant like claimed to enhance thermal stability when the device is used in an oxidative atmosphere. Additionally, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the amount of the antioxidant through routine experimentation to balance between antioxidant efficiency with cost, because the amount of the antioxidant is a result effective variable where insufficient amount may result in an insufficient thermal stability, whereas excessive amounts lead to unnecessary cost. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Response to Arguments
Applicant’s arguments have been considered but are moot in view of the new ground(s) of rejection.
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 extension fee 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 date of this final action.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763