DETAILED ACTION
This is an Office action based on application number 18/034,801 filed 1 May 2023, which is a national stage entry of PCT/JP20201/036675 filed 24 October 2021, which claims priority to JP2020-185938 filed 6 November 2020. Claims 1-2 and 4-6 are pending.
Amendments to the claims, filed 28 April 2026, have been entered into the above-identified application.
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 .
Withdrawn Rejections
The 35 U.S.C. §112(b) rejection, made of record in the previous Office action, is withdrawn due to Applicant’s amendment.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 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.
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yoda et al. (US Patent Application Publication No US 2010/0314573 A1) (Yoda) in view of Hiraoka et al. (JP2019015885A with citations taken from the provided machine translation) (Hiraoka) and Oya et al. (US Patent Application Publication No. US 2017/0291391 A1 (Oya).
Regarding instant claims 1 and 6:
Yoda discloses a heat conductive sheet in form of a multi-layered film of two or more layers (paragraph [0069]).
Yoda further discloses that the heat conductive sheet is formed from at least a photo polymerizable component consisting of a (meth)acryl type monomer and a heat conductive filler (Claim 1).
Yoda further discloses that the content of the heat conductive filler preferably from about 400 to about 1,000 parts by mass on the basis of 100 parts by mass of the photo polymerizable component (paragraph [0048]).
Yoda further discloses that the heat conductive fillers are inclusive of inorganic compounds [0047]).
The disclosure of “two or more layers” obviates the claimed plurality of layers including a first layer and a second layer stacked in contact with each other.
The disclosure of “the content of the heat conductive filler preferably from about 400 to about 1,000 parts by mass on the basis of 100 parts by mass of the photo polymerizable component” overlaps the claimed ranges for both the first and second thermally conductive filler (i.e., 500 to 1200 parts by mass and 200 to 400 parts by mass, respectively); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Yoda further discloses that metal oxides and hydroxides are used as the heat conductive filler, said fillers are used in the form of powder and particles having spherical shapes, and the particle diameter of the filler particles can be changed in a broad range but is generally about 500 μm or below. Furthermore, Yoda discloses that relatively large particles and relatively small particles can be combined such that the small particles are arranged between the large particles and improve packing efficiency (paragraph [0046]).
Yoda further discloses that the heat conductive fillers are inclusive of aluminum hydroxide, magnesium hydroxide, and alumina (paragraph [0047]).
Yoda further discloses that, preferably, the fillers are used while dispersed uniformly in the monomer composition (paragraph [0046]).
Yoda does not disclose the claimed dispersant.
However, Hiraoka discloses a composition comprising a colorant and a dispersant (paragraph [0009]).
Hiraoka further discloses that the colorant is inclusive of inorganic pigments (paragraph [0121]).
Hiraoka teaches that by including the dispersant, the colorant can be finely dispersed and the dispersed state can be stabilized (paragraph [0133]).
Hiraoka further discloses that examples of dispersants include urethane-based dispersants and polyester phosphate-based dispersants (paragraph [0141]).
Said “polyester-based phosphate” is construed to encompass, within its scope, a linear polyester having a phosphoric acid at a terminal.
Hiraoka further discloses that the urethane-based polymer dispersants have a weight average molecular weight of 1,000 to 200,0000 (paragraph [0144]). While Hiraoka does not disclose the weight average molecular weight of the polyester phosphate-based dispersant, it would have been obvious to one of ordinary skill in the art to at least try to use one that has the same molecular weight as the urethane-based polymer dispersants based on their same intended use and effect. Furthermore, the molecular weight range disclosed by Hiraoka includes the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the dispersant of Hiraoka in the composition of Yoda. The motivation for doing so would have been to ensure that the inorganic components of Yoda are finely dispersed and the dispersion is stabilized.
Yoda does not disclose an amount of silicon carbide filler. Yoda does not explicitly disclose the particle size of the individual fillers. Yoda does not explicitly disclose the relative amounts of the individual fillers.
Regarding the amount of silicon carbide:
Oya discloses a thermal conducting sheet (Title).
Oya further discloses that the thermal conducting sheet comprises at least a low-hardness layer comprising silicon carbide and magnesium hydroxide dispersed in an acrylate polymer (paragraph [0055]).
Oya further discloses that the silicon carbide has an average particle size of 60 μm to 100 μm (paragraph [0013]).
Oya discloses that the silicon carbide is an abrasive and has a large particle size, which enables it to penetrate between layers and as an anchor, resulting in improvement of the adhesion between the layers.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary to add the silicon carbide of Oya in to the composition of Yoda. The motivation for doing so would have been to improve the adhesion between the layers composed of the composition.
As to the relative amount of the silicon carbide, since the instant specification is silent to unexpected results, the specific amount of silicon carbide is not considered to confer patentability to the claims. As the improved adhesion between layers composed of the composition is a variable that can be modified, among others, by the inclusion of an amount of silicon carbide, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of silicon carbide to obtain the desired improved adhesion (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
As to the sizes and relative amounts of the first and second alumina, the first magnesium hydroxide, the aluminum hydroxide, and the second magnesium hydroxide:
Yoda discloses that the particle diameter of the filler particles can be changed in a broad range but is generally about 500 μm or below. Furthermore, Yoda discloses that relatively large particles and relatively small particles can be combined such that the small particles are arranged between the large particles and improve packing efficiency (paragraph [0046]).
Since the instant specification is silent to unexpected results, the sizes and relative amounts of the conductive fillers are not considered to confer patentability to the claims. As the packing efficiency of the fillers is a variable that can be modified, among others, by adjusting the amount and size of the individual fillers, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amounts cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the size and relative amounts of the filler to obtain the desired packing efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
As to the claimed Na2O content of the alumina:
The prior art references are silent with regard to an amount of Na2O present in the alumina in order to carry out adequately, its intended heat conduction purpose. Therefore, one of ordinary skill in the art would readily recognize that an alumina having a low soda content is encompassed by the scope of the claims.
Therefore, it would have been obvious to combine Hiraoka and Oya with Yoda to obtain the invention as specified by the instant claims.
Regarding instant claim 2:
Yoda further discloses that the composition contains a plasticizers in addition to at least the photo polymerizable component, wherein the amount of plasticizer is generally and preferably about 40 to about 200 parts by mass on the basis of 100 parts by mass of the photo polymerizable component (paragraph [0062-0063]); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 4:
Yoda further discloses that the heat conductive sheet has an Asker C hardness of 5 to 25 (paragraph [0018])
Yoda further discloses that the heat conductive sheet has preferred heat conduction factors exceeding 2.0 (W/m·K) (paragraph [0092]).
It is noted that the ranges disclosed by Yoda overlap or include the ranges recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
It is further noted that Yoda’s disclosure of the heat conductive sheet compound having the disclosed hardness and heat conduction factors is construed to encompass an embodiment wherein at least the first layer has said hardness and heat conduction factors.
Regarding instant claim 5:
Yoda discloses a heat conductive sheet in form of a multi-layered film of two or more layers (paragraph [0069]).
The disclosure of “two or more layers” is construed to encompass an embodiment comprising at least a third layer stacked at a position in contact with the first layer on a side opposite to the second layer with the first layer interposed therebetween” as required by the claims.
Yoda further discloses that the thickness of the sheet can be changed in a broad range, but is preferably used at a thickness as small as possible from the aspects of producibility, handling property, and use for electronic appliances (paragraph [0068]).
Since the instant specification is silent to unexpected results, the specific thickness of the layers is not considered to confer patentability to the claims. As the producibility, handing property, and use for electronic appliances are variables that can be modified, among others, by adjusting the overall thickness of the heat conductive sheet and the thickness of the individual layers of the heat conductive sheet, the precise amounts would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of the individual to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yoda in view of Hiraoka, Oya, and Gitzen (US Patent No. 3,092,452) (Gitzen).
Regarding instant claims 1 and 6:
Yoda discloses a heat conductive sheet in form of a multi-layered film of two or more layers (paragraph [0069]).
Yoda further discloses that the heat conductive sheet is formed from at least a photo polymerizable component consisting of a (meth)acryl type monomer and a heat conductive filler (Claim 1).
Yoda further discloses that the content of the heat conductive filler preferably from about 400 to about 1,000 parts by mass on the basis of 100 parts by mass of the photo polymerizable component (paragraph [0048]).
Yoda further discloses that the heat conductive fillers are inclusive of inorganic compounds [0047]).
The disclosure of “two or more layers” obviates the claimed plurality of layers including a first layer and a second layer stacked in contact with each other.
The disclosure of “the content of the heat conductive filler preferably from about 400 to about 1,000 parts by mass on the basis of 100 parts by mass of the photo polymerizable component” overlaps the claimed ranges for both the first and second thermally conductive filler (i.e., 500 to 1200 parts by mass and 200 to 400 parts by mass, respectively); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Yoda further discloses that metal oxides and hydroxides are used as the heat conductive filler, said fillers are used in the form of powder and particles having spherical shapes, and the particle diameter of the filler particles can be changed in a broad range but is generally about 500 μm or below. Furthermore, Yoda discloses that relatively large particles and relatively small particles can be combined such that the small particles are arranged between the large particles and improve packing efficiency (paragraph [0046]).
Yoda further discloses that the heat conductive fillers are inclusive of aluminum hydroxide, magnesium hydroxide, and alumina (paragraph [0047]).
Yoda further discloses that, preferably, the fillers are used while dispersed uniformly in the monomer composition (paragraph [0046]).
Yoda does not disclose the claimed dispersant.
However, Hiraoka discloses a composition comprising a colorant and a dispersant (paragraph [0009]).
Hiraoka further discloses that the colorant is inclusive of inorganic pigments (paragraph [0121]).
Hiraoka teaches that by including the dispersant, the colorant can be finely dispersed and the dispersed state can be stabilized (paragraph [0133]).
Hiraoka further discloses that examples of dispersants include urethane-based dispersants and polyester phosphate-based dispersants (paragraph [0141]).
Said “polyester-based phosphate” is construed to encompass, within its scope, a linear polyester having a phosphoric acid at a terminal.
Hiraoka further discloses that the urethane-based polymer dispersants have a weight average molecular weight of 1,000 to 200,0000 (paragraph [0144]). While Hiraoka does not disclose the weight average molecular weight of the polyester phosphate-based dispersant, it would have been obvious to one of ordinary skill in the art to at least try to use one that has the same molecular weight as the urethane-based polymer dispersants based on their same intended use and effect. Furthermore, the molecular weight range disclosed by Hiraoka includes the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the dispersant of Hiraoka in the composition of Yoda. The motivation for doing so would have been to ensure that the inorganic components of Yoda are finely dispersed and the dispersion is stabilized.
Yoda does not disclose an amount of silicon carbide filler. Yoda does not explicitly disclose the particle size of the individual fillers. Yoda does not explicitly disclose the relative amounts of the individual fillers.
Regarding the amount of silicon carbide:
Oya discloses a thermal conducting sheet (Title).
Oya further discloses that the thermal conducting sheet comprises at least a low-hardness layer comprising silicon carbide and magnesium hydroxide dispersed in an acrylate polymer (paragraph [0055]).
Oya further discloses that the silicon carbide has an average particle size of 60 μm to 100 μm (paragraph [0013]).
Oya discloses that the silicon carbide is an abrasive and has a large particle size, which enables it to penetrate between layers and as an anchor, resulting in improvement of the adhesion between the layers.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary to add the silicon carbide of Oya in to the composition of Yoda. The motivation for doing so would have been to improve the adhesion between the layers composed of the composition.
As to the relative amount of the silicon carbide, since the instant specification is silent to unexpected results, the specific amount of silicon carbide is not considered to confer patentability to the claims. As the improved adhesion between layers composed of the composition is a variable that can be modified, among others, by the inclusion of an amount of silicon carbide, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of silicon carbide to obtain the desired improved adhesion (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
As to the sizes and relative amounts of the first and second alumina, the first magnesium hydroxide, the aluminum hydroxide, and the second magnesium hydroxide:
Yoda discloses that the particle diameter of the filler particles can be changed in a broad range but is generally about 500 μm or below. Furthermore, Yoda discloses that relatively large particles and relatively small particles can be combined such that the small particles are arranged between the large particles and improve packing efficiency (paragraph [0046]).
Since the instant specification is silent to unexpected results, the sizes and relative amounts of the conductive fillers are not considered to confer patentability to the claims. As the packing efficiency of the fillers is a variable that can be modified, among others, by adjusting the amount and size of the individual fillers, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amounts cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the size and relative amounts of the filler to obtain the desired packing efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Yoda does not explicitly disclose the claimed soda content of the alumina.
However, Gitzen discloses that alumina can be produced to contain less than about 0.05% soda (Na2O) (col. 1, line 21; col. 2, lines 6-8). Gitzen teaches that a soda impurity is deleterious to many applications for alumina (col. 1, lines 24-26).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use an alumina having the soda (Na2O) content of Gitzen as the alumina desired by Yoda. The motivation for doing so would have been to avoid the deleterious properties that are caused by soda impurities.
Therefore, it would have been obvious to combine Hiraoka, Oya, and Gitzen with Yoda to obtain the invention as specified by the instant claims.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are moot in light of the altered/new grounds 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 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.
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/TAM/Examiner, Art Unit 1788 07/15/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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