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
Receipt is acknowledged of the Information Disclosure Statement filed 18 September 2023 and 21 June 2024. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5 and 6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The statement “wherein an absolute value of a difference between a particle diameter at which a cumulative amount of frequencies becomes 10% in the particle size distribution of the boron nitride powder and a particle diameter at a local minimum point between a local maximum point with the smallest particle diameter and a local maximum point with the second smallest particle diameter in the particle size distribution of the boron nitride powder is 3 to 30 μm” in claim 5 is a relative statement which renders the claim indefinite. The statement “wherein an absolute value of a difference between a particle diameter at which a cumulative amount of frequencies becomes 10% in the particle size distribution of the boron nitride powder and a particle diameter at a local minimum point between a local maximum point with the smallest particle diameter and a local maximum point with the second smallest particle diameter in the particle size distribution of the boron nitride powder is 3 to 30 μm” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Due to a lack of specificity regarding the calculation method, it is unclear which local minima and maxima should be used to determine the absolute value difference. For examination purposes, the phrase has been construed to mean that the absolute value difference between the first and second local minimum and maximum point values is 3 to 30 μm.
The statement “wherein a local maximum point adjacent to the first local maximum point is the second local maximum point, a local maximum point adjacent to the second local maximum point is the third local maximum point, and an absolute value of a difference between a particle diameter at a first local minimum point between the first local maximum point and the second local maximum point, and a particle diameter at a second local minimum point between the second local maximum point and the third local maximum point is 15 to 60 μm” in claim 6 is a relative statement which renders the claim indefinite. The statement “wherein a local maximum point adjacent to the first local maximum point is the second local maximum point, a local maximum point adjacent to the second local maximum point is the third local maximum point, and an absolute value of a difference between a particle diameter at a first local minimum point between the first local maximum point and the second local maximum point, and a particle diameter at a second local minimum point between the second local maximum point and the third local maximum point is 15 to 60 μm” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Due to a lack of specificity regarding the calculation method, it is unclear which local minima and maxima should be used to determine the absolute value difference. For examination purposes, the phrase has been construed to mean that the absolute value difference between the second and third local minimum and maximum point values is 15 to 60 μm.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention 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 35 U.S.C. 103 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 the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1-10 is rejected under 35 U.S.C. 103 as being unpatentable over Nishiyama (US 20130189514 A1) in view of Takeda (WO 2020196643 A1, already on record).
With regard to claim 1, Nishiyama teaches that the boron nitride is present as an aggregation of primary particles (para. 0073). Furthermore, Nishiyama discloses that the particle shape is not limited to, but includes, a fractured shape and an aggregated particle shape (para. 0074). Additionally, Nishiyama teaches that a silane coupling agent bonds the filler and resin, possessing a functional group attached to the filler (paras. 0108-0109).
However, Nishiyama fails to explicitly teach hexagonal boron nitride particles.
In the same field of endeavor, Takeda teaches a thermally conductive resin composition comprising aggregated hexagonal boron nitride primary particles, designed to suppress void formation while enhancing both the dielectric breakdown characteristics and thermal conductivity of the resulting heat dissipation member (Abstract).
With regard to the hexagonal shape, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to select a hexagonal shape for boron nitride particles. The person having ordinary skill in the art would expect such optimization would have been expected to improve void formation, performance, and thermal conductive properties of the base product described by Nishiyama, following the teachings of Takeda.
With regard to claim 2, Nishiyama teaches a silane coupling agent comprising an alkyl group, exemplified by 3-glycidoxypropyltrimethoxysilane, which satisfies the claimed range of 1 to 14 carbon atoms (para 0110). Furthermore, Nishiyama specifies that the selection of the silane coupling agent is not particularly restricted, provided the compound contains functional groups capable of bonding with both the resin component and the filler; consequently, conventional silane coupling agents may be employed (para 0109).
With regard to claim 3, Nishiyama fails to teach the aggregated boron nitride particles and alkyl group ratio of intensity of an infrared absorption peak.
Nishiyama teaches a method for manufacturing the filler preferably utilizes a combination of first, second, and third fillers (para. 0067). Takeda teaches the preferred volumetric distribution within the total filler composition is 1% to 15% for the first filler, from 10% to 40% for the second filler, and 45% to 80% for the third filler (para 0069). The first and second fillers are preferably comprised of boron nitride, while the third filler also includes boron nitride components (para 0072-0073). Furthermore, Nishiyama teaches the concentration of the silane coupling agent relative to the filler is preferably maintained between 0.02 mass % to 1 mass % to optimize thermal conductivity, insulation properties, and formability (para. 0114). This disclosed manufacturing process for the fillers and silane coupling agent application overlaps with the methodologies claimed in the present specification [see Method of Producing Boron Nitride Powder, paras. 0030–0032; Surface Treatment, para. 0082].
In the same field of endeavor, Takeda teaches a method for manufacturing boron nitride particles comprising a pressure nitriding firing stage and a decarburization crystallization step of boron carbide (paras. 0021-0023). Specifically, the nitriding process is ideally conducted at pressures between 0.7 and 1.0 MPa (para 0030). During decarburization and crystallization, the boron nitride is mixed with boron oxide or boric acid (in a mass ratio of 100:70–120) under pressures exceeding 5 MPa (paras 0034-0035). The boron carbide powder is prepared through a sequence of pulverization, sieving, washing, impurity removal, and drying (para 0026). This disclosed manufacturing process for boron nitride application overlaps with the methodologies claimed in the present specification [see Method of Producing Boron Nitride Powder, paras. 0033–0046].
With regard to the intensity ratio, 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 intensity ratio would be present in the identical compounds (boron nitride/alkyl group) taught by Nishiyama, following the teachings of Takeda.
With regard to claim 4, Nishiyama teaches a filler composition characterized by a multimodal distribution, preferably exhibiting at least three distinct peaks corresponding to specific volume average particle sizes: a first filler between 0.01 μm to 1 μm, a second filler between 1 μm to 10 μm, and a third filler ranging from 10 μm to 100 μm. (para 0067). The preferred particles size of the first, second, and third filler overlap those claimed. Nishiyama further teaches to optimize thermal conductivity and insulation properties, the specific particle size ratios between the filler populations. Specifically, the ratio of the second filler to the first filler is preferably 5 to 50 (para 0064), while the ratio of the third filler to the second filler is preferably 5 to 30 (para 0065).
With regard to claim 5, as stated above, Nishiyama teaches a first filler with a volume average particle size ranging from 0.01 μm to 1 μm, and a second filler with a peak volume average particle size between 1 μm to 10 μm (para 0067). The resulting absolute difference in particle size, calculated as 0.9 μm to 7 μm, overlaps with the claimed range.
With regard to claim 6, as stated above, Nishiyama teaches a second filler with a volume average particle size ranging from 1 μm to 10 μm, and a third filler ranging from 10 μm to 100 μm. (para 0067). The calculated absolute difference between these ranges, spanning 9 μm to 90 μm, overlaps the range recited in the present claims.
With regard to claim 7, Nishiyama teaches that the peak associated with the third filler corresponds to a particle size ranging from 10 μm to 100 μm (para 0067). The third filler is characterized by an estimated particle size distribution frequency half-width of approximately 20 μm to 45 μm, which overlaps with the claimed range (Fig. 19). As illustrated, the particle sizes extend beyond the 10 μm to 100 μm thresholds, thereby broadening the half-width estimation (Fig. 19).
With regard to claim 8, Nishiyama fails to teach the crushing strength of the aggregated boron nitride particles.
In the same field of endeavor, Takeda teaches aggregated boron nitride particles exhibit a crushing strength of at least 8 MPa, with an upper threshold of 30 MPa (para 0016). Takeda further teaches that maintaining a crushing strength of 5 MPa or higher is critical for preventing void formation during processing, which subsequently optimizes both the dielectric strength and thermal conductivity of the resulting composite (para 0014). Conversely, if the crushing strength of these particles falls below 5 MPa, they are susceptible to structural collapse under the mechanical stress of resin kneading or pressing, thereby diminishing the thermal performance of the material (para 0016).
With regard to the crushing strength, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to monitor the compressive strength of the aggregated boron nitride particles. The person having ordinary skill in the art would expect such optimization would have been expected to improve the void characteristics, dielectric properties, and thermal conductivity of the base product described by Nishiyama, following the teachings of Takeda.
With regard to claim 9, Nishiyama teaches a thermally conductive resin composition containing boron nitride that yields a highly conductive cured product (Figure 1, para 0005).
As stated above, Nishiyama in combination of Takeda teaches the boron nitride powder.
With regard to claim 10, Nishiyama teaches the present invention to be a cured, multilayer resin sheet which demonstrates superior thermal conductivity, adhesive strength, and insulating properties (paragraph 0008).
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.A.W./Examiner, Art Unit 1761
/TANISHA DIGGS/Primary Examiner, Art Unit 1761