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 .
Applicant’s response and amendment to the claims filed on 11/26/2025 are acknowledged. The rejections and objections made in the previous office action are withdrawn in view of the amendment to the claims.
Claims 1, 3-16 are pending.
Claim Rejections - 35 USC § 102
Claims 1, 6-8, 10-11, 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobune et al. (US 2023/0295398).
Regarding claim 1: Kobune is directed to a thermally conductive sheet comprising an optional binder resin and
A first thermally conductive filler oriented in a thickness direction of the thermally conductive sheet, wherein
The thermally conductive sheet has a contact thermal resistance with regards to an adherend of 0.46 ˚C cm2/W or less in Examples 1-3 (Table 1 [0151]).
The first thermally conductive filler is flake like graphite particles and no fibrous thermally conductive filler.
Regarding claim 6: While a breakdown voltage is not mentioned, a 102 rejection is proper when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02. In the present case, Kobune discloses the same composition as that of the present invention, and therefore would be expected to have the same properties.
Regarding claim 7: The thermal resistance of Examples 1-3 is less than 2.71 ˚C cm2/W (Table 1).
Regarding claim 8: The resin includes a silicone resin ([0052])
Regarding claim 10: An electronic apparatus comprising
A heat generating body,
A heat radiating body,
And a thermally conductive sheet disposed between the heat generating body and heat radiating body is disclosed ([0105]).
Regarding claim 11: Kobune is directed to a production method for a thermally conductive sheet comprising ([0099]):
Dispersing a first thermally conductive filler in a binder resin to prepare a resin composition for forming a thermally conductive sheet
Forming a molded block from the resin composition and
Slicing the molded block into a sheet to obtain the thermally conductive sheet.
The first thermally conductive filler is oriented in a thickness direction of the thermally conductive sheet.
The thermally conductive sheet comprising an optional binder resin and
A first thermally conductive filler oriented in a thickness direction of the thermally conductive sheet, wherein
The thermally conductive sheet has a contact thermal resistance with regards to an adherend of 0.46 ˚C cm2/W or less in Examples 1-3 (Table 1 [0151]).
The first thermally conductive filler is flake like graphite particles and no fibrous thermally conductive filler.
Regarding claim 13: The first thermally conductive filler is flake like graphite particles.
Regarding claim 14: Example 1 comprises graphite flake particle size of 84 μm (Table 1).
Claims 1, 3, 6, 8-10, 12, 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ishihara et al. (US 2003/0038278).
Regarding claim 1: Ishihara is directed to a thermally conductive sheet comprising:
A binder resin
A first thermally conductive filler oriented in a thickness direction of the thermally conductive sheet ([0006], wherein
The thermally conductive filler is a flaky thermally conductive filler of hexagonal boron nitride ([0005])
Example 1 comprises 100% by weight of flaky hexagonal boron nitride as the thermally conductive filler.
Ishihara doesn't specifically recite a contact thermal resistance with regard to an adherend. However, the composition produced in Ishihara is substantially identical to the composition produced in the instant invention.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Ishihara suggests a thermally conductive sheet that has a contact thermal resistance within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 3: A second thermally conducive filler is disclosed including aluminum oxide (alumina) and aluminum nitride ([0061]).
Regarding claim 6: Ishihara doesn't specifically recite a breakdown voltage. However, the composition produced in Ishihara is substantially identical to the composition produced in the instant invention.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Ishihara suggests a thermally conductive sheet that has a contact thermal resistance within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 8: A binder resin of a silicone resin is disclosed in Example 1.
` Regarding claim 9: Thermally conducive fillers of alumina, aluminum nitride, and boron nitride are disclosed.
While Ishihara doesn’t mention a single resin composition simultaneously comprising the aforementioned components in a single composition, it would have been obvious to have selected such a composition since Ishihara discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.
Regarding claim 10: Fig. 1 illustrates a thermally conductive sheet between a heat sink (heat radiating body) and heater (heat generator body).
Regarding claims 12, 15-16: The flakey thermally conductive filler is hexagonal boron nitride having an average particle size of 50 μm or more in size.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ishihara as applied to claim 1 above, and further in view of Kang et al. (US 2021/0391636).
Regarding claim 4: Ishihara doesn’t specifically mention an insulating coating.
Kang is directed to a thermally conductive sheet comprising a filler including boron nitride which contains an insulating coating ([0118] [0121] Kang). One skilled in the art would have been motivated to have included an insulating coating utilizing the boron nitride to reduce the disturbance, weakening, or interference of communication
wireless signals and improve the heat dissipation performance ([0129] Kang). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected an insulating coated boron nitride as the thermally conductive filler of choice in Ishihara to arrive at claim 4 of the present invention.
Regarding claim 5: Insulating coated boron nitride are disclosed in Kang ([0121] Kang). Boron nitride flakes are disclosed in Ishihara.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764 h