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 .
Status of the Claims
Claims 1-9 are currently pending.
Response to Amendments
Applicant’s amendments filed 10/23/2025 have been entered.
Claims 1, 2, and 5 have been amended.
The Section 112(b) rejection on claim 5 has been withdrawn in view of Applicant’s amendments.
The Section 103 rejections on claims 1-9 have been withdrawn in view of Applicant’s amendments and arguments.
New Section 103 rejections have been implemented upon further search and consideration of the amended claims.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hoshiyama et al. (WO 2020/153377 A1 with US 2022/0073805 A1 as the English equivalent) in view of Saga (US 2009/0152491 A1).
Regarding claims 1-9,
Hoshiyama teaches a crosslinked thermally conductive (heat-conducting) resin sheet (Hoshiyama: abstract; par. 0010 and 0092) comprising: a liquid elastomer resin (Hoshiyama: par. 0010 and 0058); and thermally conductive particles with a shape that is not limited to but may be non-spherical (plate-shaped) or spherical (Hoshiyama: par. 0078). The heat-conducting resin sheet has a heat (thermal) conductivity (may be considered heat of 7 W/m·K or more, which is within the claimed range of 5 W/m·K or more, and a compressive strength (may be considered compressive strength B) of 1500 kPa or less as measured at a compression rate of 1 mm/min (Hoshiyama: par. 0010 and 0149).
The non-spherical (plate-shaped) particle oriented at an angle of 60° or more with respect to the surface of the sheet (may be considered a major axis of the particle) and has an aspect ratio of 5 or more (corresponds to the claimed aspect ratio of a filler of 5 or more and has an average particle size of from 0.1 to 300 µm, which overlaps with the claimed 1 to 400 µm (Hoshiyama: par. 0010, 0075-0076, 0081-0082, 0090, and 0112). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
The spherical particles may have an average particle size of from 0.1 to 300 µm, which overlaps with the claimed 1 to 100 µm (Hoshiyama: par. 0010 and 0074-0076). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Hoshiyama further teaches the shape of the thermally conductive particles is not limited and may be non-spherical (plate-shaped) or spherical and the content may be adjusted depending on the shape of the filler (Hoshiyama: par. 0077-0078). However, Hoshiyama is silent towards the volume ratio of the thermally conductive plate-shaped particle to the thermally conductive spherical particles being from 30/70 to 90/10 or the volume of the total volume of the particles being 30 to 90% by volume or the volume of the plate-shaped particles being 15 to 50%.
Saga teaches thermally conductive (heat-conducting) resin sheet comprising: a thermally conductive plate-shaped particle, a thermally conductive spherical particle, and a polymer (a resin) (Saga: abstract; par. 0011-0015). The thermally conductive plate-shaped particle is present from 2 to 50 % by volume, which overlaps with the claimed 15 to 50% by volume (Saga: par. 0009). The thermally conductive spherical particles is present from 7 to about 65 % by volume (Saga: par. 0008). The total volume of the particles is thus the addition of the two % by volume ranges and would overlap with the claimed 30 to 90% by volume. The volume ratio of plate-shaped particles to spherical-shaped particles is from 10 to 90 and 70 to 30 which overlaps with the claimed 30/70 to 90/10 (Saga: par. 0010). The filler proportions improve thermal conductivity properties while balancing flowability for forming the desired heat-conducting resin sheet (Saga: par. 0003).
Hoshiyama and Saga are in the corresponding field of spherical and plate-shaped thermal conductive fillers for use in heat-conducting resin sheets. Thus, one of ordinary skill in the art configure the particles of Hoshiyama to be within the claimed % by volume and volume ratios to provide improved thermal conductivity while balancing flowability as taught by Saga.
Hoshiyama and Saga are silent towards the claimed compressive strength B/compressive strength A ratio or compressive strength C/compressive strength B ratio under the claimed conditions or the claimed heat resistance of 5 K/W or less under 10% compression.
However, Hoshiyama and Saga teaches the disclosed and claimed heat-conducting resin sheet having the claimed resin composition, spherical, and plate-shaped particle structure and structure/compositions and the disclosed proportions and the claimed thermal conductivity and compressive strength. Thus, the thermal conducting resin sheet would be expected to exhibit the claimed properties, such as the compressive strength ratios when tested in the claimed manner and the claimed heat resistance when tested in the claimed manner. When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
Response to Arguments
Applicant’s arguments filed 10/23/2025 regarding the Hoshiyama reference alone with the amended % by volume is moot as the rejection has been withdrawn.
Applicant argues that Hoshiyama generally envisions a higher amount of thermally conductive plate-shaped particles than claimed and cites the Examples and par. 0087 that provides a preferable mass% of 60 or more.
The argument that Hoshiyama teaches away from the claimed proportion is not found persuasive as the given amounts in Hoshiyama is in mass%, not volume %, and even if they were volume % they are preferable embodiments which does not constitute a teaching away from the broader disclosure. “Nonpreferred disclosures can be used. A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims.” In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960). A reference is not limited to the disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972); see also Susi, 440 F.2d at 446 n.3 (explaining that disclosed examples do not necessarily constitute a teaching away from a reference’s broader disclosure). Furthermore, Hoshiyama teaches the shape of the thermally conductive particles is not limited and may be non-spherical (plate-shaped) or spherical and the content may be adjusted depending on the shape of the filler (Hoshiyama: par. 0077-0078). Thus, Hoshiyama, does not explicitly teach away from a particular volume %, such as the claimed volume %.
Applicant argues that the claimed heat-conducting resin sheet exhibits superior and unexpected results such as favorable thermal conductivity and flexibility, and efficient suppression of the increase in stress when the sheet is compressed quickly.
The argument is not found persuasive as the claims do not provide a nexus to the Examples in the specification that allegedly exhibit the improved results. It is noted that the burden of Applicant to provide data displaying comparative data displaying the alleged unexpected result is unobvious and of both statistical and practical significance. See MPEP 716.02(b). It is further noted that in order to establish unexpected results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d) II. Additionally, the claims must be commensurate in scope with the proffered data to provide a nexus between the claims and the data establishing evidence of unexpected results. See MPEP 716.02(d). The claims are not commensurate in scope for at least the following reasons: the specific resin (a liquid elastomer), and the compositions for the plate-shaped and spherical particles (boron nitride and alumina/aluminum nitride/ aluminum hydroxide) are not in claim 1.
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.
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/TRAVIS M FIGG/Primary Examiner, Art Unit 1783