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 .
The preliminary amendment filed 12/07/2022 is entered.
Claims 1-14 are currently pending.
The Drawings filed 12/07/2022 are approved by the examiner.
Information Disclosure Statement
The IDS statements filed 03/14/2023 and 11/08/2023 have been considered. Initialed copies accompany this action.
However, note that the information disclosure statements fail to comply with 37 CFR 1.98 for a variety of reasons:
First, note that 37 CFR 1.98(a)(2) requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. However, no copy of foreign reference cite no. 5 of the IDS filed 03/14/2023 has been provided. Accordingly, the reference has not been considered.
Also, note that 37 CFR 1.98(a)(3) requires a concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each publication that is not in the English language. However, regarding foreign reference cite no. 4 of the IDS filed 03/14/2023, the provided copy of the reference is in a foreign language with no English translation. Accordingly, the content of the reference has not been considered. Additionally, regarding foreign reference cite nos. 6 and 9 of the IDS filed 03/14/2023 and 1 of the IDS filed 11/08/2023, only the abstracts of the references are in English with the remainder of the reference being in a foreign language. Accordingly, only the abstracts of these references have been considered.
Claim Rejection - 35 USC § 112 & Claim Interpretation
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 5 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 pre-AIA the applicant regards as the invention.
Claim 5 recites the limitation "wherein shaped composite materials are precisely-shaped." However, the term "shaped composite materials" lacks sufficient antecedent basis in the claims, which renders the claim indefinite. Note that parent claim 1 recites "shaped composite particles" not "shaped composite materials". It is unclear if the term "shaped composite materials" refers to the parent claim's particles or some other material.
Appropriate correction/clarification is required.
For purposes of further examination and compact prosecution (or else claim 5 would not be compared relative to prior art), the term “shaped composite materials” is construed as if it recited “the shaped composite particles”.
For additional purposes of claim interpretation, it is noted page 2 of the specification sets forth a definition for the claimed term “precisely-shaped” recited in claim 5 – “The term 'precisely-shaped' as applied to a composite particle means that the composite particle has an outer surface corresponding in shape to a mold used in its manufacture.”
However, note that the definition introduces/raises a description of how the composite particle is made rather than what its structure actually is and is therefore a “product-by-process” limitation. Product-by-process limitations are not limited to the recited steps except to the extent they suggest structure of the product. Here, a precisely-shaped composite particle merely requires the composite particle's shape or morphology could be obtained (i.e., that it is capable of being obtained) from a molding process but does not actually require a molding process occur or be present. It is not a question of ‘is a prior art composite particle's shape obtained by actually manufacturing it using a mold?’ but rather ‘could a prior art composite particle's shape be obtained by a mold?’ or, stated differently, ‘is the obtained shape capable of being obtained by a mold?’ See MPEP 2113.
Claim Rejections - 35 USC § 102 & 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lodyga et al. (US 7,976,941 B2).
As to claims 1-4, 6, and 7, Lodyga et al. teach a composition, preferably a thermal management or thermally conductive composition, comprising boron nitride agglomerated particles loaded into a polymer selected from polyester, epoxy, polyamide, or silicone where the boron nitride agglomerated particles are at a concentration of about 30-80 wt.% of the composition (abstract, col. 1 lines 24-32, and col. 10 lines 14-32). The fact that the boron nitride agglomerated particles are loaded and blended into a polymer (Id.) means that the boron nitride agglomerated particles are clearly dispersed in the polymer. The boron nitride agglomerated particles are composed of irregular non-spherical hexagonal boron nitride platelet particles bound together, i.e., retained, by an organic binder (col. 4 lines 24-46 and col. 5 line 61 to col. 6 line 24). A platelet shape (a plate/flake/disc-shaped material) intrinsically has an aspect ratio of at least 1.5 (or else it would be merely circular- or oval-shaped). If this were not enough, Lodyga et al. teach boron nitride powder with the tradename PT 120 is a preferred boron nitride with a platelet morphology for the boron nitride agglomerated particles (col. 13), which is well-known in the art to have an aspect ratio of about 36, clearly within the claimed aspect ratio of at least 1.5. Please also note that a platelet is synonymous with a flake. The boron nitride agglomerates read on the claimed shaped composite particles comprising thermal filler particles having an aspect ratio of at least 1.5 retained in an organic binder matrix. Regarding the claimed limitation that the hardenable binder precursor is polymerizable, epoxies and silicones are certainly polymerizable.
While the cited teachings of the reference do not sufficiently meet all of the claimed limitations (e.g., the concentration ranges and, optionally, if the cited teachings require some picking and choosing of embodiments with one another rather than being at-once envisaged/present in the reference) under the meaning of anticipation, the claimed limitations are nevertheless obvious over the cited teachings of the reference under a prima facie case of obviousness.
At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive within the claimed limitations from the cited teachings reference with a reasonable expectation of successfully obtaining a thermally conductive composition because Lodyga et al. clearly teach provision of boron nitride agglomerates made of hexagonal boron nitride platelets bound by an organic polymer at relative weight amounts of 20-70/0.5-10 and then dispersed/blended with a polymer at a concentration of 20-70 wt.% of the composition. Since Lodyga et al. teach the boron nitride agglomerates have a powder tap density of about 0.3-0.8 g/cm3 (col. 9 lines 16-21) and the polymers typically have certain ranges of density known to persons of ordinary skill in the polymer arts, e.g., epoxy is known to have a density typically spanning about 1 to 1.5 g/cm3 and silicone is known to have a density typically spanning about 1 to about 2.3 g/cm3, the disclosed concentration of boron nitride agglomerated particles in the polymer encompasses the claimed 10-95 vol.% of shaped composite particles dispersed in the hardenable binder precursor. A similar rationale is true for the claimed limitation that the thermal filler particles (the platelet shaped hexagonal boron nitride particles) comprise from about 50 to 99 percent by volume of the shaped composite particles because boron nitride particles typically have a density of about 2.1 g/cm3 and acrylic resins (a preferred organic binder for binding the boron nitride platelets in the boron nitride agglomerates, see, e.g., col. 5 & 6) typically have a density of about 1.1-1.2 g/cm3 and Lodyga et al. teach the two are blended in amounts of 20-70 wt.% of the boron nitride particles and 0.5-10 wt.% of the binding polymer (see, e.g., col. 4) which means there is clearly a majority or clearly may be a majority (both by weight and by volume) of the boron nitride platelet particles in the boron nitride agglomerates.
As to claim 5, Lodyga et al. teach the boron nitride agglomerates have a spherical shape (e.g., abstract), which sufficiently meets the claimed limitation the shaped composite particles are precisely-shaped as such a shape could be obtained by a mold.
As to claim 8, regarding the claimed limitation the shaped composite particles are deformably compressible, the disclosed agglomerated particles of the reference meets the claimed limitation because there is certainly some magnitude of pressure where/when the agglomerated particles would be deformed. If placed in a hydraulic press the agglomerated particles, like nearly every other existing material, would certainly deform. If this were not enough, the claimed limitation would nevertheless flow naturally from the teachings of the reference since the disclosed agglomerated particles are composed of the same components as the claimed shaped composite particles (thermally conductive boron nitride platelets/flakes retained by an organic binder).
As to claim 9, as described and cited above, Lodyga et al. teach the composition is a thermal management or thermally conductive composition comprising the boron nitride agglomerated particles loaded into a polymer (Id.). Discussion of the polymer that it is melt-processable, thermoplastic, and/or an epoxy or silicone (i.e., thermosetting polymer) (e.g., col. 10 lines 14-20) would be readily understood by a person of ordinary skill in the art as meaning the composition is certainly hardened in its application. See also at col. 9 line 51+ where it is discussed the final composition is in the form of a composite.
As to claims 10 and 11, Lodyga et al. teach the blend of the boron nitride agglomerated particles loaded into a polymer has a thermal conductivity of at least 1 W/m-K, preferably 5 to 10 W/m-K, or even higher (col. 10 lines 43-50), which meets the claimed thermal conductivities of at least 1.0 W/m-K and at least 2.5 W/m-K.
As to claim 12-14, the composition/composite is provided such that it connects (i.e., is sandwiched between) a heat source and a heat sink (col. 10 lines 1-13). The heat source generates heat and is thus a generator. The heat source is an electronic device such as an integrated circuit (Id. in col. 10).
Claims 1, 2, and 4-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ito et al. (JP 2015-003980 A). Citations to Ito et al. are with respect to the Office’s supplied English language machine translation of reference unless specified.
As to claims 1, 2, 4, and 6-8, Ito et al. teach a thermally conductive resin composition comprising heat conductivity imparting material including 20-90 vol.% of an easily deformable aggregate (D) and 10-80 vol.% of a binder resin (E) (abstract, technical field, and p.9). Details to the identity of the binder resin (E) reveal it is a curable, polymerizable, and/or hardenable polymer/resin (p.11), which clearly meets the claimed hardenable binder precursor. The components of the thermally conductive resin composition are stirred and mixed together (middle of p.12), meaning the easily deformable aggregate (D) is clearly dispersed in the binder resin (E). The easily deformable aggregate (D) comprises heat conductive particles (A), a non-spherical carbon material (J), and an organic binder/adhesive (B) and has an average particle diameter of 2 to 100 microns (bottom of p.3). The non-spherical carbon material (J) assists with heat conduction and is preferably either fibrous carbon material or plate-like carbon material having an aspect ratio of 10 to 1,000 (middle of p.6). A fibrous material (a material with a length significantly longer than its width) intrinsically has an aspect ratio of at least 1.5, and a plate-like material with an aspect ratio of 10 to 1,000 clearly has an aspect ratio well in excess of at least 1.5, as claimed. If this were not enough, see also the Examples which employ carbon nanotubes as the non-spherical carbon material (J), such as Example 8 which employs a scale-like graphene powder with an average aspect ratio of 3,000 as well as Example 9 which employs carbon nanotubes with an average fiber length of 2 microns and an average fiber diameter of 11 nm, which corresponds to an aspect ratio of about 182. Please also note that a plate- or scale-like material, especially one with the disclosed aspect ratio(s), is synonymous with a flake. The organic binder/adhesive (B) tethers and binds the heat conductive particles (A) and carbon material (J) (bottom of p.6). The disclosed easily deformable aggregate (D) component reads on the claimed shaped composite particles comprising thermal filler particles having an aspect ratio of at least 1.5 (the non-spherical carbon material (J)) retained in a binder matrix (the organic binder/adhesive (B)) and is present within the claimed range of 10-95 vol.% (20-90 vol.%, Id.). If the name/terminology of the easily deformable aggregate (D) was somehow deficient in meeting the broad claim limitation that the shaped composite particles are deformably compressible, Ito et al. further teach the disclosed easily deformable aggregate (D) also easily changes/deforms when a force is applied to it (see p.3 to p.5).
The cited teachings of the reference anticipate the claimed limitations.
In the event the cited teachings of the reference are not deemed to sufficiently meet the claimed limitations under the meaning of anticipation (e.g., if the cited teachings are somehow independent embodiments that require picking and choosing embodiments with one another rather than being at-once envisaged/present in the reference and/or if any range(s) overlap instead of fall within), the claimed limitations are nevertheless obvious over the cited teachings of the reference under a prima facie case of obviousness. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive within the claimed limitations from the cited teachings reference with a reasonable expectation of successfully obtaining a thermally conductive composition because Ito et al. clearly teach provision of shaped composite particles (an easily deformable aggregate (D)) comprising a thermally conductive particles having an aspect ratio of at least 1.5 retained/tethered/bound by a binder matrix and then formulating those shaped composite particles with a hardenable/curable binder resin/precursor (E) at a concentration of 20-90 vol% in order to obtain a thermally conductive resin composition.
As to claim 5, the bottom of p.8 and the Examples in Ito et al. teach the easily deformable aggregate (D) has a relatively round and uniform particle diameter obtained by spray drying a precursor blend to form the easily deformable aggregate (D) composite particles, which sufficiently meets the claimed limitation the shaped composite particles are precisely-shaped as such a shape and/or size could be obtained by a mold.
As to claim 9, Ito et al. teach a thermally conductive member (H) or heat conductive sheet is obtained from curing/hardening the heat conductive resin composition (G) (p.11 & 12). This is also demonstrated in the Examples of Ito et al.
As to claims 10 and 11, the Examples of Ito et al. demonstrate the hardened/cured composition has a thermal conductivity of 5 W/m-K and greater, which meets the claimed thermal conductivities of at least 1.0 W/m-K and at least 2.5 W/m-K.
As to claim 12-14, the heat conductive sheet is disposed between a heat source and a heat sink (p.13). The heat source generates heat and is thus a generator. It is abundantly clear elsewhere in the reference that the heat source inherently includes or may be selected to include an electronic device or electronic part including an integrated circuit (technical field and p.9).
Prior Art Cited But Not Applied
The following prior art is made of record and not relied upon but is considered pertinent to Applicant's disclosure and/or evidence to support the above ground(s) of rejection:
JP 2016-098301 A is a cited reference of interest that teach and serves as extrinsic evidence boron nitride powder PT 120 is well-known in the art to have an aspect ratio of about 36 (see portion bridging p.12-13 of the translation and the Table at [0075] of the original document).
The remaining references listed on Forms 892 and 1449 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
October 10, 2025