DETAILED ACTION
Claim Rejections - 35 USC § 102
Claim(s) 1, 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 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 kaolinite (i.e., kaolin) (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”).
Hamada (US 2018/0112115) 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 filed 5/20/2026 have been fully considered but they are not persuasive.
Applicant argues Inagaki’s disclosure of “kaolinite” differs from the amended claims which require “kaolin” (p4). Applicant quotes from a website from Shree Ram Kaolin which states “Kaolin, known as ‘China Clay’ is a basic soft white clay […and] Kaolin is a term for a naturally occurring clay rock which is rich in kaolinite […] and is not a pure mineral like kaolinite” (p4). Applicant further argues there would be no motivation to modify Inagaki to include kaolin as claimed (p4).
The examiner maintains the rejections because the claim term of “kaolin” encompasses the “kaolinite” disclosed by Inagaki under the broadest reasonable interpretation of the claim as understood by one of ordinary skill in the art. As an initial step of the analysis, the originally filed specification provides no specific definition of the term and the claim does not further limit the material as anything other than a “layered silicate”. (As noted by Applicant, Inagaki describes kaolinite as one of “natural silicate salts” (8:4+)). Therefore, neither the specification nor the claim defines or restricts “kaolin” to refer to “naturally occurring clay rock” or that it is “not a pure mineral like kaolinite” as submitted by Applicant (citing Shree Ram Kaolin website). The term “kaolin,” however, does not only refer to kaolin clay rock. Specifically, as described by newly cited Malla (Pigments for Paper and Paperboard - 4.3 Mineralogy. 2024.), “Kaolin is a naturally occurring hydrous aluminosilicate mineral” (p73). The reference continues on pages 76-77:
Kaolin refers to both rock and mineral groups (Figure 4.2). As a rock, kaolin is composed predominantly of kaolinite and other kaolin minerals with a number of ancillary minerals, which include quartz, titanium and iron minerals, aluminum hydroxides, feldspars, micas, smectites, zircon, phosphate minerals, and organic matter [8]. As a mineral, kaolin consists of a group of minerals such as kaolinite, halloysite, dickite, and nacrite. Kaolinite is the most abundant of the kaolin group minerals and is important for commercial application including paper and paperboard, whereas halloysite is less abundant and dickite and nacrite are relatively rare. In this chapter, kaolin refers to the mineral kaolinite.
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Therefore, while the term “kaolin” does encompass the clay rock, the term also broadly refers to the mineral group that encompasses kaolinite. In other words, “kaolinite” is a species of the genus of “kaolin” the mineral group, and so the present claim encompasses the material disclosed by Inagaki.
Additionally, in the interest of compact prosecution, while a new obviousness rejection has not been made because Inagaki anticipates the claimed invention, the examiner notes that given that kaolinite is the dominant mineral of kaolin clay as demonstrated by Malla, one of ordinary skill in the art would appear to be motivated to use kaolin clay as the filler taught by Inagaki.
Applicant contrasts the results of Examples 1-17 and Comparative Examples 3-8 in the specification to demonstrate kaolin provides improved heat dissipation performance, which Inagaki does not disclose (p5).
As discussed above, the examiner submits Inagaki discloses kaolinite, which is encompassed by the present phrase kaolin, with sufficient specificity to anticipate the claimed invention. A secondary consideration such as unexpectedly improved heat dissipation performance cannot be used to overcome such a rejection. In the interest of compact prosecution, the examiner notes the Comparative Examples use materials that are not disclosed or suggested by Inagaki. Therefore, the comparative data does not represent the closest prior art. Furthermore, the inventive examples are not commensurate in scope with the claimed invention, where the claims are open to any amounts of layered silicate (C), but the examples use a combination of 30-50 parts by mass of kaolin and 50-70 parts by mass of one or more polymerizable monomers (A). One of ordinary skill in the art would expect differing thermal dissipation effects from varied amounts of filler. Therefore, the examiner maintains the rejections of record.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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
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