DETAILED ACTION
Applicant’s reply and request for continued examination (RCE), filed 8 April 2026 in response to the Advisory action mailed 23 April 2026 and the Final Office action mailed 11 February 2026, has been entered and fully considered. As per Applicant’s filed claim amendments claims 1-5 and 8-13 are pending, wherein: claims 1, 8 and 11 have been amended, claims 2-5, 9-10 and 12 are as previously presented, claims 6-7 have been cancelled by this and/or previous amendment(s), and claim 13 is new.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8 May 2026 has been entered.
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.
Claim 13 is 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.
Regarding claim 13, the claim as written is indefinite. Claim 1, from which claim 13 depends, recites/requires that the ratio of scale-shaped thermally conductive material, with respect to the total mass of ‘granular + scale-shaped’ thermally conductive material, is 15 mass% or more and 40 mass% or less. As such the claim 13 limitation that recites the radio wave absorber claimed has a ‘higher thermal conductivity’ than a radio wave absorber whose ratio of scale-shaped thermally conductive material, with respect to the total mass of ‘granular + scale-shaped’ thermally conductive material, is 15 mass% or more and 40 mass% or less, renders unclear the instantly claimed invention. It is not clear how a radio wave absorber having the claimed and required ratio of thermally conductive material can have a higher thermal conductivity than a radio wave absorber having the claimed and required ratio of thermally conductive material.
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 1-5 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ohkoshi et al. (US PGPub 2016/0164187) in view of Aoyagi et al. (US PGPub 2011/0165410).
Regarding claims 1, 5 and 8-11, Ohkoshi teaches radio wave absorbers comprising a radio wave absorber film (instant film shape) formed on a substrate (abstract; [0009]; [0022])(instant film shape). Ohkoshi teaches the radio wave absorber film ([0025]-[0028]) is formed from a radio wave absorber paste ([0009]; [0094])(instant paste) comprising at least one selected from ε-Fe2O3 crystal and ε-MxFe2-xO3 crystal where x is greater than 0 and less than 2 and wherein the crystal has the same crystalline structure and space group of ε-Fe2O3 ([0029]-[0031]; [0040]). Ohkoshi further teaches that heat resistant compounds such as silica, alumina and zirconia can also be present ([0068])(instant thermally conductive material).
Ohkoshi teaches the radio wave absorbers, as noted, and both teaches the inclusion of heat resistant compounds, such as silica, alumina and zirconia ([0068]), as well as further additives ([0092]). Ohkoshi does not specifically teach a combination of granular and scale-shaped thermally conductive materials, where the scale-shaped thermally conductive material is 15 mass% or more and 40 mass% or less of the combination total (claim 1), and does not specifically teach the combination of granular alumina and scale-shaped boron nitride (claims 1 and 8), or a content of 30-300 parts per 100 parts absorber material (claim 9). However, Aoyagi teaches similar polymer films comprising a polymer binder and heat conductive fillers (abstract) which may be laminated onto metals ([0011]) and which are suitable for use in electromagnetic wave shields ([0067]). Aoyagi teaches that when the polymer films comprise 30-60 wt% of the fillers in a combination of a plate-like filler and a spherical filler, where the spherical filler is present at 25-70 wt% of the combination total ([0019]; =30-75 remainder plate-like filler), the resultant film will have excellent thermal conductivity properties, heat resistance, dimensional stability, adhesive properties and will present a flat surface ([0011]; [0019]; [0067]). Aoyagi teaches the plate-like filler is boron nitride having a plate-like or scaly shape ([0020]) and teaches the spherical filler is aluminum oxide ([0021]). Aoyagi and Ohkoshi are analogous art and are combinable because they are concerned with the same field of endeavor, namely filled polymer films which may be laminated to metal substrates and suitable for the same uses of electromagnetic wave shielding. At the time of filing a person having ordinary skill in the art would have found it obvious to include the combination of fillers of Aoyagi in the films of Ohkoshi and would have been motivated to do so as Ohkoshi invites further additives as well as heat resistant compounds and further as Aoyagi teaches including the combination of scaly boron nitride and spherical alumina will result in films having excellent thermal conductivity properties, heat resistance, dimensional stability, adhesive properties and will present a flat surface ([0067]).
Regarding claims 2-4 and 12, Ohkoshi in view of Aoyagi renders obvious the radio wave absorbers as set forth in claim 1 above and further teaches the inclusion of carbon nanotubes ([0077])(also readable over thermally conductive materials above) and a polymer (instant binder resin) into which the components are uniformly dispersed ([0081]-[0087]).
Regarding claim 13, Ohkoshi in view of Aoyagi renders obvious the radio wave absorbers as set forth in claim 1 above. Note the above set forth 112(b) rejection of this limitation. Ohkoshi teaches radio wave absorbers comprising the combination of a radio wave absorber material and heat resistant compounds including alumina, etc. and Aoyagi renders obvious the combination of granular aluminum oxide and scale-shaped boron nitride fillers in ratios as claimed as advantageous for use in electromagnetic wave shielding compositions (see above). Absent evidence to the contrary it is held that the radio wave absorber rendered obvious by Ohkoshi in view of Aoyagi will necessarily have a thermal conductivity as claimed. It is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Response to Arguments/Amendments
The 35 U.S.C. 103 rejection of claims 1-6 and 8-12 as unpatentable over Ohkoshi (US PGPub 2016/0164187) in view of Aoyagi (US PGPub 2011/0165410) is maintained. Applicant’s arguments (Remarks, pages 4-6) have been fully considered but were not found persuasive.
Applicant admits Aoyagi teaches overlapping ranges but argues that no motivation is provided to “limit’ that range to the instantly claimed range. It is noted Aoyagi is not required to teach the entire claimed range, nor does Aoyagi have to provide motivation to modify the taught range beyond the portion(s) of the claimed ranges already met, as admitted by Applicant, by Aoyagi.
As noted in the above rejection: Aoyagi teaches that when the polymer films comprise 30-60 wt% of the fillers in a combination of a plate-like filler and a spherical filler, where the spherical filler is present at 25-70 wt% of the combination total ([0019]; =30-75 remainder plate-like filler), the resultant film will have excellent thermal conductivity properties, heat resistance, dimensional stability, adhesive properties and will present a flat surface ([0011]; [0019]; [0067]). Aoyagi overlaps with and renders taught the instantly claimed ratio range.
Regarding Applicant’s assertion of criticality of the range and unexpected results. As was noted in the Advisory action, Applicant’s presented arguments to unexpected results are not persuasive as the presented data is neither commensurate with the instant claims nor demonstrative of the entire claimed range or of unexpectedness (MPEP 716.02(d)). Notably the graph provided demonstrates neither end points of the claimed range (claimed range being 15-40 mass%, graph “plateau” demonstrating 18 mass%, 27 mass% and 36 mass%), does not demonstrate values just outside of each end point, and fails to establish/explain the conductivity values with respect to the remainder of the required components (notably the iron oxide). It is further noted that the graph is stated as comparing results from inventive examples 1-7 and 10, however: examples 1-3 are alumina-only (i.e. granular-only) and as such are not a fair comparison to demonstrate properties of a combination of alumina(granular)+BN(scaly); and example 10 is BN-only (i.e. scale-only) and as such is not a fair comparison to demonstrate properties of a combination of alumina(granular)+BN(scaly). The results are further not commensurate as the instant claim 1 does not link ‘granular’ to alumina and ‘scale’ to BN. In sum, no range criticality is evidenced from the provided examples and graph and no demonstration of unexpectedness is derivable therefrom.
Applicant’s argument that it is outside the scope of routine optimization to narrow the range of Aoyagi of 25-70 wt% to the instant range. The 25-70 wt% of Aoyagi is a teaching of the range of spherical filler (see rejection), which is a range which overlaps with the instant inferred (but not directly claimed) range of 85-60 mass% granular. No optimization is required nor was optimization relied upon. Again, the criticality of the claimed ratio range of scale-shaped filler has not been demonstrated and regardless, is met by Aoyagi.
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
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