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 .
This action is responsive to Applicant’s amendment/remarks filed on 15 July 2026.
The rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over Fukasawa (US-20200216738-A1) is maintained in view of amendments/arguments.
The double patenting of claims 6 provisionally rejected as being unpatentable over claim 4-10 of copending Application No. 18/271,129 is withdrawn in view of abandonment.
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 19 May 2026. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
Response to Amendment & Arguments
Applicant’s arguments filed on 15 July 2026 have been fully considered but they are not persuasive.
Applicant argues Fukasawa does not provide a basis for a narrower selection of the claimed maximum point ranges (see page 6). Applicant’s argument is unpersuasive. As such, Fukasawa teaches hexagonal boron nitride (hBN) powder comprising primary particles aggregates (para 0014) with the particle size peaks A of 0.1 to 20 μm, B of 20 to 200 μm, and C of 45 to 150 μm (paras 0014 and 0016), which overlaps the claimed first, second, and third maximum points. Furthermore, Fukasawa teaches that peak A, B, C progressively increase in size (Table 2, Examples 1-3, after treatment), thereby reading on the claimed gradual size increase.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP §2144.05(I). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference is not limited to the working examples, see In re Fracalossi, 215 USPQ 569 (CCPA 1982). As such, the teaching of Fukasawa, when combined with general knowledge in the art, render the claimed feature obvious.
Applicant argues the claimed invention has enhanced performance ratings of “A” and “B” regarding insulation properties and thermal conductivity within the claimed maximum point ranges, and the “C” rating outside these ranges (see page 5-6). Applicant’s argument is unpersuasive. As stated above, the peak ranges disclosed in Fukasawa overlap with the first, second, and third maximum points of the claimed invention. Therefore, such an overlap in ranges constitutes a prima facie case of obviousness and selecting the overlapping portion of these ranges would have been obvious to a person having ordinary skill in the art.
Furthermore, the Applicant’s reliance on the “A”, “B”, and “C” rating system is misplaced. Because these performance ratings lack numerical definitions or objective metrics in the instant specification, thus it cannot be verified whether these classifications represent materially different characteristics or properties.
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) MPEP 716.02
A greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) MPEP 716.08(a).
In response to applicant's argument that the reference fails to show certain features of the
invention, it is noted that the features upon which applicant relies (i.e., insulation property and heat conductivity) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 6 is rejected under 35 U.S.C. 103(a) as being unpatentable over Fukasawa (US-20200216738-A1).
With regard to claim 6, Fukasawa teaches a heat dissipation sheet by forming and curing the composition (para 0169); wherein the composition comprises a hexagonal boron nitride powder (hBN hereinafter) and a resin (Abstract).
Fukasawa further teaches the hBN powder comprises an aggregate of primary particles of hBN (para 0014); wherein the particles have a peak A of 0.1 to 20 μm, peak B of 20 to 200 μm, and peak C of 45 to 150 μm (paras 0014 and 0016), thereby overlapping the claimed maximum points (peaks). Fukasawa further teaches that peak A, B, C are gradually larger than one another (Table 2, Examples 1-3, after treatment).
Fukasawa does not teach the claimed heat dissipation sheet to the degree of specificity as to be anticipatory.
However, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP §2144.05(I). Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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