DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/16/2025 has been entered.
Claim Rejections - 35 USC § 102
Claim(s) 1-2, 4, and 8-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inagaki et al. (US 4,427,823).
Regarding claims 1-2 and 10:
Inagaki discloses a coating composition comprising (A) a polyfunctional acrylic-type carboxylic acid ester monomer, (B) a polymerization initiator, and (C) an inorganic solid filler (abstract; 1:7+; 2:65-3:16). Monomer (A) has two or more unsaturated bonds (3:50+). Initiator (B) comprises radical initiators (6:45+). Suitable fillers (B) include talc, kaolinite (i.e., kaolin), pyrophyllite, and sericite (7:54-8:10). Although Inagaki teaches other components may be used, the invention only requires components (A), (B), and (C), which meets the requirements of the present claims (“consisting of”) (9:45+). The composition is in the form of a paste (11:32+). The composition is applied to a substrate and cured, which the examiner considers to meet the claimed “sheet”.
While there is no disclosure that Inagaki’s cured coating is a “radiation sheet “as presently claimed, Applicant's attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e., a radiation sheet, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is a cured material made from a polymerizable monomer, a radical initiator, and a layered silicate identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 4:
Monomer (A) comprises di(meth)acrylates of glycols (4:38+).
Regarding claims 8-9:
The examiner submits Inagaki’s adhesive sheet is a radiation sheet as presently claimed for the reasons provided above. The examiner further submits the claimed preamble of a “heat dissipation plate” does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is a cured material made from a polymerizable monomer and a layered silicate identical to that set forth in the present claims is capable of performing the recited purpose or intended use. The examiner interprets the “heat generation source” to be an intended use for the heat dissipation plate, and is not required to be present to meet the claimed invention.
Claim Rejections - 35 USC § 103
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inagaki et al. (US 4,427,823).
Regarding claims 5-6:
Inagaki discloses a composition and a cured product thereof as previously explained. The composition contains 0.001-20 parts of component (B) relative to 100 parts by weight of component (A) (6:38+). The composition contains 5-250 parts of component (C) relative to 100 parts by weight of component (A) to provide the desired hardness and adhesive strength (7:46+; 9:7+). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amount of inorganic filler, including over values presently claimed, to provide the desired hardness, adhesive strength, and other properties for a given end use.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Inagaki (US 4,427,823) discloses a composition and a cured product thereof as previously explained. The cured coated film is about 0.1-50 µm (12:43+). Nothing of record indicates it would have been obvious to modify the teaching of the reference to arrive at thicknesses of 400-2500 µm as presently claimed (which minimum is eight times greater than the maximum value taught by Inagaki).
Kitagawa (WO 2013/061830; citations refer to the machine translation mailed 3/21/2025) discloses a thermally conductive pressure-sensitive adhesive composition and a sheet of the same [abstract; 0001]. The composition comprises (A1) a (meth)acrylic acid ester polymer, (α1) a (meth)acrylic acid ester monomer, (B) a thermally conductive filler, (D) a polyfunctional monomer, and (E) an epoxy compound [0008]. The composition further comprises a polymerization initiator [0050; 0067]. The filler can be selected from a group that includes kaolin [0077]. The polyfunctional monomer (D) comprises polyfunctional (meth)acrylates including ethylene glycol di(meth)acrylate, etc. [0074]. Given that Kitagawa teaches the polyfunctional (meth)acrylates are used in combination with monofunctional monomers and further requires the use of epoxy compound (E), the teaching does not meet the requirements of the exclusive language used in present claim 1 (“A radiation sheet consisting of a cured material of a curable paste consisting of a polymerizable monomer (A)…wherein the polymerizable monomer (A) consists of one or more compounds selected from the group consisting of polyfunctional monomers having two or more ethylenic unsaturated double bonds”).
Newly cited Hamada (US 2018/0112115) is made of record. Hamada discloses a heat-dissipating foam sheet comprising (A) acrylic resin, and (B) thermally conductive particles [abstract; 0001; 0012-0015]. Acrylic resin (A) is formed by polymerizing a monomer containing a (meth)acrylate, such as butyl (meth)acrylate [0018-0020]. Polyfunctional (meth)acrylates may be used in addition to the monofunctional monomers [0022]. The resin is formed with a polymerization initiator [0039]. Particles (B) comprise talc [0024]. Given that Hamada teaches the polyfunctional (meth)acrylates are used in combination with monofunctional monomers, the teaching does not meet the requirements of the exclusive language used in present claim 1 (“A radiation sheet consisting of a cured material of a curable paste consisting of a polymerizable monomer (A)…wherein the polymerizable monomer (A) consists of one or more compounds selected from the group consisting of polyfunctional monomers having two or more ethylenic unsaturated double bonds”).
Response to Arguments
Applicant’s arguments with respect to the claims 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. See the discussion of Kitagawa under the Allowable Subject Matter above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787