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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/25/2026 has been entered.
Declaration Under 37 C.F.R. § 1.132
The declaration under 37 CFR 1.132 filed 02/06/2026 has been considered, but is rendered moot in view of the new 35 U.S.C. 103 rejections of claims 1-3, 6-10, and 12-22.
Response to Amendment
In response to the amendment received 02/06/2025, the following rejections have been withdrawn from the previous office action:
35 U.S.C. 103 rejections of claims 1-3, 6-10, and 12-22
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 6-9, 12-18 and 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20220262702A1, hereafter Sato, in view of Published Application US20040131823A1, hereafter Rodgers.
Regarding claim 1, Sato discloses a method of forming a composite article ([0008] forming thermally conductive sheet), comprising:
forming a first extrudate ([0046] forming molded block by extrusion), wherein the first extrudate comprises an organic polymer and hexagonal boron nitride (hBN) particles ([0044] binder resin 2 with first thermally conductive filler 3; [0027] hexagonal boron nitride);
wherein an amount of the hBN particles is at least 10 vol% and not greater than 37 vol% based on the total volume of the composite body ([0030] content of first thermally conductive filler 3 may be preferably 20-27% by volume), and an in-plane thermal conductivity of the composite body is at least 3 W/mK ([0038] 4 W/m*K or more).
Sato is silent on forming a second extrudate, wherein the second extrudate comprises an organic polymer and hBN particles;
combining the first extrudate and the second extrudate to form a composite body including two layers; and
conducting a layer multiplying procedure on the composite body, the layer multiplying procedure comprising dividing and recombining the composite body to form a multi-layer composite body.
In the analogous art of thermally conductive composite manufacturing, Rodgers discloses forming a first extrudate and a second extrudate ([0014] using duplex extruder 10 with first extruder 12 and second extruder 14), wherein the first extrudate and second extrudate comprise an organic polymer and thermally conductive filler particles ([0014] polymers 28 and 30; filled polymer could be used in both extruders);
combining the first extrudate and the second extrudate to form a composite body including two layers ([0014] polymers 28 and 30 formed into a bilayer in extruder die 16); and
conducting a layer multiplying procedure on the composite body ([0014], Fig 2, bilayer fed through series of multi-layering die inserts 18, each doubling number of layers in the extrudate), the layer multiplying procedure comprising dividing and recombining the composite body to form a multi-layer composite body ([0014] Fig 2, bilayer passes through multi-layering die inserts 18 to form multi-layered system 40).
Rodgers further discloses that filled polymers could be used in both extruders, and in this case, the multilayer extrusion would assist with the alignment of filler particles within the layers ([0014]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to modify the invention of Sato with the layer multiplication procedure as described above of Rodgers in order to more easily align the hBN particles in the composite and improve the anisotropic properties of the sheet.
Regarding claim 2, Rodgers further discloses wherein the layer multiplying procedure comprises using at least two layer multiplying elements and wherein each layer multiplying element doubles an amount of layers in the multi-layer composite body (Fig 2 at least 3 multi-layering dies 18, [0016] number of multi-layering dies determines the number of layers in the multi-layered system).
Regarding claim 3, Rodgers further discloses wherein the multi-layer composite body comprises at least 16 layers (Fig 2 at least 3 multi-layering dies 18, [0016] number of multi-layering dies determines the number of layers in the multi-layered system; thus, starting with 2 layers and doubling 3 times, 16 layers).
Regarding claim 6, Sato further discloses wherein the amount of the hBN particles in the multi-layer composite body is at least 10 vol% and not greater than 35 vol% based on the total volume of the multi-layer composite body ([0030] content of first thermally conductive filler 3 may be preferably 20-27% by volume).
Regarding claim 7, Sato further discloses wherein an average particle size (D50) of the hBN particles is at least 1 micron and not greater than 60 microns ([0028] 10µm or more and 50µm or less).
Regarding claim 8, Sato further discloses wherein an average aspect ratio of length to thickness of the hBN particles is at least 5 ([0029] aspect ratio of 10-100).
Regarding claim 9, Sato does not explicitly disclose wherein the average aspect ratio of the hBN particles is 7 to 50.
However, Sato discloses wherein the average aspect ratio of the hBN particles is 10 to 100 ([0029]), which overlaps with the claimed range of 7 to 50. 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 (I))).
Regarding claim 12, Sato further discloses wherein the organic polymer comprises a thermoplastic polymer ([0018] polyethylene).
Regarding claim 13, Sato further discloses wherein the thermoplastic polymer includes a polyethylene ([0018] polyethylene).
Regarding claim 14, Sato further discloses wherein the organic polymer comprises a polymerizable polymer including functional groups ([0021] polyorganosiloxane with vinyl group).
Regarding claim 15, Sato further discloses wherein the polymerizable polymer is a silicone polymer comprising vinyl groups ([0021] polyorganosiloxane with vinyl group).
Regarding claim 16, modified Sato further discloses wherein a March-Dollase orientation parameter η of the hBN particles in an in-plane direction of the multi-layer composite body is at least 50% (Sato, [0047] thermally conductive filler 3 is oriented along the flow direction when extruded from a die; Rodgers [0014] multilayer extrusion assists with alignment of filler particles). One of ordinary skill in the art would recognize the preferred orientation direction is parallel to the plane of the layer, as is the case in Rodgers, which applicant states in [0033]. The claimed 50% or greater would thus correspond to between 45 and 90 degrees to the thickness direction. Since modified Sato utilizes layer multiplication as disclosed by Rodgers, the hBN particles would be oriented by both extrusion and multiplication along the thickness direction, which would be at least over the required 45 degrees or greater in relation to the preferred orientation direction, which is parallel to the plane of the layer. Therefore, modified Sato teaches wherein a March-Dollase orientation parameter η of the hBN particles in an in-plane direction of the multi-layer composite body is at least 50%
Regarding claim 17, Sato further discloses wherein a thickness of the multi-layer composite body is at least 10 microns ([0040] average thickness of thermally conductive sheet 1 is 0.05 mm or more (50 µm)).
Regarding claim 18, modified Sato further discloses wherein a thickness of each layer of the multi-layer composite body is at least 0.5 microns (Rodgers [0016] greater than or equal to about 0.01 millimeter).
Regarding claim 20, modified Sato is silent on wherein the method is adapted to be continuously forming the multi-layer composite body.
Rodgers discloses wherein the method is adapted to be continuously forming the multi-layer composite body (Fig 2, [0014] using duplex extruder, the examiner notes extrusion is by nature an inherently continuous process).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to further modify the method of Sato to be continuously forming the multi-layer composite body in order to improve the efficiency of the production of the multilayer composite.
Regarding claim 21, Sato further discloses wherein an average particle size (D50) of the hBN particles is at least 5 microns and not greater than 50 microns ([0028] 10µm or more and 50µm or less).
Regarding claim 22, Sato further discloses wherein the first extrudate and the second extrudate further comprise a surfactant ([0036] sheet may further contain other components, such as a dispersant).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20220262702A1, hereafter Sato, in view of Published Application US20040131823A1, hereafter Rodgers, as stated above for claim 1, and further as evidenced by Published Application US20110192588A1, hereafter Suzuki.
Regarding claim 10, modified Sato is silent on wherein a thickness of the hBN particles is at least 0.05 microns and not greater than 5 microns. However, since Sato discloses the aspect ratio of the particles to be 10-100 ([0029] aspect ratio of 10-100) and the average particle size to be 10μm-50μm ([0028] 10µm or more and 50µm or less), it can be seen that the thickness of the hBN particles of Sato could result in a range that overlaps with the claimed range of 0.05 microns to 5 microns (for example, an aspect ratio of 10 would mean a particle dimension that is 10 times the thickness, so a particle with a dimension of 10µm would have a thickness of 1µm at an aspect ratio of 10).
Sato further discloses that the particle size is not limited and may be appropriately selected according to the purpose ([0028]).
The particle thickness constitutes a result-effective variable, since, as stated by Suzuki in [0101] as particle size increases compared to the thickness of the sheet up to matching the sheet thickness, thermal conductivity increases. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the present invention, to have determined the optimum value of the particle thickness in order to obtain the desired thermal conductivity through routine experimentation in the absence of a showing of criticality (MPEP 2144.05).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published Application US20220262702A1, hereafter Sato, in view of Published Application US20040131823A1, hereafter Rodgers as stated above for claim 1, and further as evidenced by Ashby (Ashby, Michael F.. (2023). Materials and Sustainable Development (2nd Edition) - Appendix A: Material Property Data. (pp. 461). Elsevier. Retrieved from https://app.knovel.com/hotlink/pdf/id:kt013CRYIK/materials-sustainable/material-property-data) and Wypych (Wypych, George. (2016). Handbook of Fillers (4th Edition) - 2.1.20 Boron Nitride. ChemTec Publishing. Retrieved from https://app.knovel.com/hotlink/pdf/id:kt0111AXK1/handbook-fillers-4th/boron-nitride).
Regarding claim 19, Sato further discloses wherein the organic polymer comprises a thermoplastic polymer ([0018] polyethylene), and that a present second thermally conductive filler may be alumina ([0032]).
Sato is silent on an electric volume resistivity of the multi-layer composite body being at least 1.0E+12 Ω⋅m.
Ashby discloses the electrical resistivity of polyethylene to be 3.1 x 1023 micro ohm*cm (page 21), and Wypych discloses the electrical resistivity of boron nitride to be 1 x 1015 ohm*cm (page 128) and aluminum oxide to be 1 x 1016 ohm*cm (page 128).
However, the materials and methods and structure of the combination of Sato and Rodgers are similar to the claimed materials, methods, and structure and thus, the product has similar properties, which would be well within the claimed range that is further substantiated by the known electrical resistivities of polyethylene and boron nitride and alumina as evidenced by Ashby and Wypych. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same (MPEP 2112 (V)).
Response to Arguments
Applicant's arguments filed 0 have been fully considered but they are rendered moot in view of the new 35 U.S.C. 103 rejections of claims 1-3, 6-10, and 12-22.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY HEMINGWAY whose telephone number is (571)272-0235. The examiner can normally be reached M-Th 6-4.
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/T.G.H./Examiner, Art Unit 1754
/SUSAN D LEONG/Supervisory Patent Examiner, Art Unit 1754
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