DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 2, 2026, has been entered.
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.
Claims 1, 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/123788 Otsuka et al (cited by US 2019/0337803) in view of US 2018/0328677 Kim et al.
Regarding claim 1, Otsuka teaches a heat dissipation (paragraph 0002) sheet (paragraph 0004),
which is prepared by molding (paragraph 0152) a thermally conductive resin composition (paragraph 0002) prepared by blending an inorganic filler component and a resin component (paragraph 0171),
the inorganic filler component including a first inorganic filler (h-BN) and a second inorganic filler (h-BN, paragraph 0171, where the first and second inorganic fillers being the same material is not excluded by the claim),
provided that particle size distribution of the inorganic filler component includes a first maximum point attributable to the first inorganic filler and a second maximum point attributable to the second inorganic filler (paragraph 0010 and figure 5);
a particle size at the first maximum point is 40-300 microns (paragraph 0037);
a particle size at the second maximum point is 1.6% to 75% the particle size at the first maximum point (paragraph 0038, 5-30 microns); and
an accumulated amount of a frequency between a peak start and a peak end of a peak having the first maximum point is 50% or more (figure 5),
and which has a thickness of 0.050 to 10 mm (paragraph 0156), and
wherein the second inorganic filler is a clumped boron nitride particle where primary particles of hexagonal crystal boron nitride are aggregated (paragraph 0012, part I, where “clumped” and “aggregated” are not defined as mutually exclusive, distinct arrangements).
Otsuka does not explicitly teach that the particle size ratio of the second maximum point (5-30 microns) to the first maximum point (40-300 microns) is 0.30 to 0.67, or that the thickness is 0.2 mm or less. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality:
the taught range of 1.6% to 75% reads on the claimed range of 30% to 67%,
the taught range of 0.050-10 mm reads on the claimed range of 0.2 mm.
Otsuka does not explicitly the heat dissipation sheet base material or structure. Kim teaches a heat dissipating plate comprises a base material having a thickness of 1 mm (paragraph 0050), and the heat dissipation sheet has a layer structure of: a thermally conductive composition followed by the base material, followed by another layer of the thermally conductive composition (figure 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the core/cover structure of Kim in the product of Otsuka because this achieves a low coefficient of thermal expansion in the plane direction while also achieving a high conductivity in the thickness direction (paragraph 0009).
Kim does not teach that the base material has thickness of 0.05 mm or less. However, “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (MPEP 2144.04 Section IV Part A). Therefore, without a showing of criticality, the claimed dimensions do not impart patentability to the claims.
Neither Otsuka nor Kim disclose the roughness of the sheet. However, as Otsuka in view of Kim satisfies all of the previous limitations, Otsuka’s materials (h-BN) and method (packing amount and density) are indistinguishable from the claimed materials and method (as-filed spec paragraph 0040). Therefore, it is reasonable to expect that Otsuka’s sheet would also have a surface roughness of 1.5 to 3.0 microns. “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 Section I).
Regarding claim 2, Otsuka teaches that with respect to a particle size accumulation of the inorganic filler component, the accumulated amount of the frequency at the particle size of from 0 to 15 µm is less than 60% (figure 5).
Regarding claim 4, Otsuka teaches that the first inorganic filler is different from the second inorganic filler (paragraphs 0037 and 0038, where “different” may refer to filler particle size).
Response to Arguments
Applicant’s arguments with respect to the base material have been considered but are moot because the new ground of rejection, Otsuka in view of Kim, does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megha M Gaitonde whose telephone number is (571)270-3598. The examiner can normally be reached Monday-Friday 8:30 am to 5 pm.
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781
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