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 .
Information Disclosure Statement
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Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mochizuki (US 20160122503 A1).
With regard to claims 1 and 2, the phrase "in a case" is interpreted as a continent clause that is optional, see MPEP 2111.04. Mochizuki teaches a resin composition for a thermally conductive sheet, which comprises a thermosetting resin and a filler composed of secondary agglomerated particles that create a void (Abstract, Table 1). Mochizuki further specifies that the secondary agglomerated particles are preferably formed by boron nitride particles (para 0057, Examples 1-5 in Table 1). Additionally, Mochizuki teaches a method for synthesizing boron nitride particles by combining melamine borate and boron nitride powder with ammonium polyacrylate (para 0145). However, Mochizuki fails to explicitly disclose the void fraction of said boron nitride particles.
Mochizuki discloses the process of making the resin composition requires melamine borate, boron nitride powder, and ammonium polyacrylate; the mixture is stirred for two hours to prepare a slurry for spray drying granulation, with the process being conducted at an atomizer rotation speed of 15,000 rpm, an inlet temperature of 200° C, and a slurry feed rate of 5 ml/min to yield the particles (para 0145). Subsequent firing of these particles in a nitrogen atmosphere at 2000° C. for 10 hours yields the final agglomerated boron nitride particles (para 0145). This present process of manufacturing boron nitride particles overlaps with the method claimed in [instant specification Boron Nitride Particle 3, para 0031].
With regard to the fraction, the court has held that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "Where 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). See MPEP 2112.01 I. As such the property of void fraction would be present in the identical compounds (boron nitride particles) taught by Mochizuki.
With regard to claim 3, Mochizuki teaches the boron nitride particles are agglomerated within the thermally conductive sheet (para 0057).
With regard to claims 4-5, Mochizuki teaches the thermally conductive sheet is of a planar shape, satisfying the definition of a plate-like, sheet-like, film-like structure (para 0046).
Conclusion
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761