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 .
Claim Objections
Claims 1, 2, 6-10, and 16-25 are objected to because of the following informalities:
Regarding claim 1, in line 13, “highly” should be inserted before thermally conductive. This change keeps all the phrases regarding the filler the same throughout the claim set.
Regarding claims 2, 6-10, and 16-25, these claims depend from an objected to claim and include all of the limitations thereof. Therefore, they are also subject to the objection.
Appropriate correction is required.
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 1, 2, 6-10, and 16-25 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.
Regarding claim 1, lines 9-11 in claim 1 do not make sense and it appears some words are missing. This section begins with the amount by weight of the highly thermally conductive filler with respect to 100% by weight of the total amount of the organic polymer particles and the highly thermally conductive filler particles. This makes sense. However, then the claim refers to something being uniformly dispersed using a pulverizer or a mixer. The Office assumes this is the organic polymer particles and the highly thermally conductive filler. This section is simply unclear as it is currently phrased. For the purpose of further examination, the weight percentages will be based on 100% by weight of both the organic polymer particles and the highly thermally conductive filler; and that a pulverizer or mixer is used to uniformly disperse the filler and the polymer particles.
Regarding claim 6, claim 6 recites the limitation "the thermoplastic polymer particles" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted to refer to the organic polymer particles containing a thermoplastic polymer of claim 1.
Regarding claim 7, claim 7 recites the limitation "the thermoplastic polymer particles" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted to refer to the organic polymer particles containing a thermoplastic polymer of claim 1.
Also, claim 7 recites the limitation "the thermoplastic resin particles having crystallinity and/or aromaticity" in lines 3-5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as thermoplastic resin particles having crystallinity and/or aromaticity (removing the definite article the).
Also, in lines 5 and 6 of claim 7, the claim recites a thermoplastic elastomer including a non-particulate shape. It is unclear what the phrase “a non-particulate shape” means and the instant specification provides little guidance. Does this phrase refer to a shape other than the powder that is obtained and used for the molding; or does this phrase mean a non-solid component? For the purpose of further examination, a non-particulate shape will refer to any shape or form which is not the powder used for the molding. This interpretation is taken from the end of ¶109 of the instant specification which states that for the thermoplastic elastomer SEBS and the fluorine-based elastomer, a pellet was pulverized and used. The pellet is being interpreted as the non-particulate shape.
Regarding claim 8, claim 8 recites the limitation "the thermoplastic polymer particles" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted to refer to the organic polymer particles containing a thermoplastic polymer of claim 1.
Regarding claim 9, claim 9 recites the limitation "the thermoplastic polymer particles" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted to refer to the organic polymer particles containing a thermoplastic polymer of claim 1.
Regarding claim 10, this claim recites that the organic polymer particles contain a thermosetting elastomer. However, claim 1 requires the presence of a thermoplastic polymer. It is unclear if the thermosetting elastomer is in addition to the thermoplastic polymer, or if it is in place of it, a limitation which would fail to further limit claim 1. For the purpose of further examination, this claim will be interpreted as the organic polymer particles further comprise a thermosetting elastomer.
Regarding claim 21, claim 21 recites the limitation "the thermoplastic resin" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted to refer to the thermoplastic polymer of claim 1.
Regarding claim 24, the surface electrical conductivity of the thermally conductive infinite cluster is simply a value. It is unclear if this is meant to be a distinct value or if it should be a range. In the instant specification, on page 7, lines 11-15 mimic this claim and the surface electrical conductivity is a range. For the purpose of further examination, the surface electrical conductivity of the thermally conductive infinite cluster will be interpreted as being 10-10(Ωcm)-1 or less.
Regarding claims 2, 16-20, 22, 23, and 25, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
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.
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.
Claims 1, 2, 6-10, 16-22, 24, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Takagi et al. (US 2015/0259589).
Regarding claims 1, 2, and 6, Takagi et al. teaches a high filler-loaded thermal conductive material, comprising a composition comprising 5 to 60% by weight of organic polymer particles and 40 to 95% by weight of a thermally conductive filler having a graphite-like structure, relative to 100% by weight of the total amount of those components (¶36). The organic polymer particles contain at least one of a thermoplastic resin and a thermoplastic elastomer, both of which have crystallinity and/or aromaticity (¶40). The thermally conductive filler is capable of forming a thermally conductive infinite cluster (¶36), has a concentration that is higher than or equal to the percolation threshold (¶138), and has a thermal conductivity of 10 W/mK or more (¶43, 44).
The composition is formed by mixing the organic polymer particles and thermally conductive filler particles, in powder form, by using a mixing machine and/or a pulverizing machine in order to achieve uniform mixing of the components (¶125). The composition is then subjected to press molding at a temperature higher than or equal to the deflection temperature under load, melting point, or glass transition temperature of the organic polymer (which would be between the claimed range of 150 to 400° C) and at a pressure of 1 to 1000 kgf/cm2 (0.1 to 98 MPa); and then to cooling and solidification (¶36, 37). The press molding can be carried out using known hot-pressing methods such sheet molding using hot rolls (¶135), which would produce a sheet. Example 1 teaches producing a sheet with a thickness of about 10 mm (¶198). The thermal conductivity of the high filler-loaded high thermal conductive material is 10 to 150 W/mK (¶74).
Takagi et al. does not teach that the sheet is formed in a double belt press device. However, the limitations pertaining to how the sheet is formed are product-by-process limitations. 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). In this case, there is no evidence on the record that the sheet produced by the instantly claimed is not the same as or obvious from the sheet formed in Takagi et al. using the same components, in overlapping amounts, and using a device for sheet molding using hot rolls.
Takagi et al. does not teach that the sheet has a thickness of 0.05 to 3mm or a thickness standard deviation of 0.08 mm or less. However, changes in size or proportion generally are not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). MPEP 2144.04 IV. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to optimize the thickness and standard deviation of the sheet through routine experimentation and would have been motivated to do so in order use the sheet for varied purposes/end uses.
Takagi et al. does not teach a value of a ratio of the thermal conductivity in the plane direction to a thermal conductivity in a depth direction as measured by a temperature gradient method of 15/13 to 180/59. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. a ratio of the thermal conductivity in the plane direction to a thermal conductivity in a depth direction as measured by a temperature gradient method of 15/13 to 180/59, would naturally arise and be achieved by a composition with all the claimed ingredients. "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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 7, Takagi et al. teaches using a thermoplastic resin and a thermoplastic elastomer as the organic polymer (¶161). Takagi et al. does not teach that the thermoplastic elastomer comprises a non-particulate shape, i.e., a pellet. However, it is well-known in the art that many polymers and/or elastomers are commercially sold as pellets. Further, absent evidence to the contrary, the shape of the thermoplastic elastomer is not sufficient to patentably distinguish over the prior art. The same elastomer can be used regardless of form (particulate or non-particulate) and once it is mixed with the filler, it will become a powder regardless of the form in which it started due to using a mixer or pulverizer to uniformly distribute the filler component.
Regarding claim 8, Takagi et al. teaches that the thermoplastic resin particles are at least one selected from the group consisting of polytetrafluoroethylene, polyphenylene sulfide, polyethylene terephthalate, polybutylene terephthalate, aliphatic polyamide, polypropylene, polyether sulfone, polyether ether ketone, polyphenylene ether, and polycarbonate (¶90-92).
Regarding claim 9, Takagi et al. teaches that the thermoplastic elastomer particles include at least one selected from the group consisting of a polystyrene-based elastomer, a polyamide-based elastomer, and a fluorine-based elastomer (¶93).
Regarding claim 10, Takagi et al. teaches using an uncured thermosetting resin in combination with a thermoplastic resin (¶92).
Regarding claims 16 and 17, Takagi et al. teaches that the thermally conductive filler contains at least one selected from the group consisting of natural graphite, artificial graphite, and expanded graphite (¶108).
Regarding claims 18 and 19, Takagi et al. teaches that the thermally conductive filler may include thermally conductive ceramics such as hexagonal boron nitride (¶108).
Regarding claims 20-22, the dielectric constant and the dielectric loss tangent of the thermoplastic resin and the thermally conductive filler are dependent on what the resin and filler are. Takagi et al. teaches that the sheet comprises hexagonal boron nitride and polyphenylene sulfide (Table 6, Examples 20-23). These are two of the same components desired by the instant invention (Table 2, Examples 18-26). Since the same components are used in similar amounts and the sheet is formed by a substantially similar process, i.e., press molding, the sheet, filler and polymer should all possess a dielectric constant and dielectric loss tangent within the claimed ranges.
Regarding claim 24, the thermally conductive infinite cluster is what the material becomes once the polymer and filler are mixed together. Takagi et al. teaches that when the thermally conductive filler is hexagonal boron nitride, the thermal conductivity of the high filler-loaded high thermal conductive insulating material is 5 to 50 W/mK and the surface electrical conductivity is 10-10 (Ωcm)-1 or less (¶77).
Regarding claim 25, Takagi et al. teaches using an uncured thermosetting resin in combination with a thermoplastic polymer (¶92). Takagi et al. does not teach that a deflection temperature under load or melting point of the thermoplastic polymer is equal to or lower than a curing temperature of the thermosetting resin, and a heating temperature in the double belt press device, i.e., device for forming the sheet, is a temperature higher than or equal to the deflection temperature under load or melting point of the thermoplastic polymer and equal to or lower than the curing temperature of the thermosetting resin. However, at the time of the filing of the instant invention, a person of ordinary skill in the art would know to use a heating temperature in the molding device that is higher than the melting temperature of the thermoplastic resin so that the resin will be moldable, but lower than the curing temperature of the thermosetting resin so that the resin does not cure and become unmoldable. This logic also ensures that the melting point of the thermoplastic resin is lower than the curing temperature of the thermosetting resin.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Takagi et al. (US 2015/0259589) as applied to claims 1, 18, and 19 above, and further in view of Pot et al. (US 2019/0153192).
Regarding claim 23, Takagi et al. teaches the thermally conductive sheet as set forth above. Takagi et al. does not teach that the composition comprises whisker-like ceramics. However, Pot et al. teaches a thermally conductive polymer composition comprising a thermoplastic polymer, graphite powder (¶7-9), and an additional thermally conductive filler such as ceramic fibers (¶34). Takagi et al. and Pot et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of thermally conductive compositions comprising a thermoplastic polymer and graphite. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add an additional conductive filler such as ceramic fibers, as taught by Pot et al., to the composition, as taught by Takagi et al., and would have been motivated to do so in order to further improve the thermal conductivity of the composition.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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, Mark Eashoo can be reached at 571-272-1197. 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.
/ANGELA C SCOTT/Primary Examiner, Art Unit 1767