DETAILED ACTION
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 Office action is in response to the amendment filed May 15, 2026 in which claims 1, 4, 11, and 13 were amended and claim 19 was added.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-11 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over JP201316647 in view of JP2002069392.
JP teaches a thermally conductive sheet including a styrene-isobutene copolymer and a scaly hexagonal boron nitride and discloses that the plane directions of the scales of the hexagonal boron nitride particles are oriented in the thickness direction of the thermally conductive sheet (see abstract). A heat radiating device is constructed by layering a heating element and the heat conduction sheet (see abstract). Such devices include a semiconductor package, a display, a LED, or an electric lamp (see page 10, paragraph 11). The initial tack force of the thermally conductive sheet was 1.8 kPA (example 4). Furthermore, with regard to the tack force, the thermally conductive sheet is understood to be a uniform article, and thus it is considered that both sides have the same degree of tack force. The method by which the tack force is measured would be known to one skilled in the art and no unobviousness is seen in the method of measurement set forth in the claims. Furthermore, JP ‘647 teaches tack force as an index of tackiness was measured with the following apparatus and conditions. (Measurement of tack force) Equipment used: RHESCA tacking tester TAC2 Temperature: 25 C Pushing speed: 120 mm / min Pulling speed: 600 mm / min Load 490 mN (50 gf) Time: 10 seconds. From RHESCA’s website it is known that this particular tester has a 5.0 mm probe (see page 14). While JP ‘647 does not teach all of the parameters of the tester, no unobviousness is seen in this difference because JP ‘647 does teach a similar thermally conductive sheet. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
The shape of the inorganic particles is not particularly limited, and may be any of a spherical shape, a scale shape, an elliptical shape, and a rod shape. In the said heat conductive sheet, it is preferable to select the shape of the said inorganic particle according to the manufacturing method of a heat conductive sheet from a heat conductive viewpoint (see page 4, paragraphs 4 and 6). The particles are oriented in the thickness direction (see paragraph 6).
The heat conductive sheet may have a protective film on at least one of its surfaces, and preferably has a protective film on both surfaces. Thereby, the adhesive surface of a heat conductive sheet can be protected. Examples of the material for the protective film include resins such as polyethylene, polyester, polypropylene, polyethylene terephthalate, polyimide, polyetherimide, polyether naphthalate, and methylpentene film, and metals such as coated paper, coated cloth, and aluminum. Two or more kinds of these protective films may be combined to form a multilayer film, and the protective film surface may be treated with a release agent such as silicone or silica (page 10, paragraphs 1 and 2).
The method for molding the resin composition into a sheet is not particularly limited, and can be appropriately selected from commonly used methods. Among them, it is preferable that primary sheet is press-punched using a mold blade. Sheets of the punched sheets were stacked, and a temperature of 120 ° C. was sandwiched with a spacer of 80 mm in height so that the height would be 80 mm. A pressure was applied for 2 minutes to obtain a molded body. Next, an 80 mm × 150 mm laminated section of this molded body was sliced to obtain a heat conductive sheet (see page 10, paragraphs 3-8). With respect to a regular pattern, this limitation is merely a design choice. With respect to the pressing and seepage after cutting, the skilled artisan would recognize the need to press the cut sheets to remove excess binder. JP meets the limitations of the claims other than the differences that are set forth below.
JP does not specifically teach that the boron nitride are flakes. However, JP ‘392 teaches that it is well known that hexagonal boron nitride scales are in the form of flakes (see paragraph 0003). Therefore, it being obvious to one of ordinary skill in the art that when one desires hexagonal boron nitride that such compound would be in the form of flakes.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the tack force pf the present invention is 20 gf or more and that the tack value is remarkably greater than the tack value of JP ‘647.
JP ‘647 teaches a tack force of 50 gf and therefore would meet the claimed limitation of 20 gf or more. See page 14 of JP ‘647.
Regarding claim 13, Applicant argues that JP ‘647 fails to teach pressing the sheet obtained by the slicing of the mold body and that JP ‘647 fails to teach that the binder resin seeps out onto a surface of the thermally conductive sheet by the pressing.
The skilled artisan having JP’647 before him would recognize that if an excess of the binder resin is used that one would desire to remove the excess by pressing the sheet and that the excess would seep onto a surface of the thermally conductive sheet. In the end, a thermally conductive sheet is manufactured such as that taught by JP ‘647.
Claim 19 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 prior art fails to teach or suggest that the binder resin is silicone resin.
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 CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18275450/20260606
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