DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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 Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Imamura et al. (US 2019/0031566).
Regarding claim 1, Imamura discloses a large-sized silicon nitride sintered substrate, see abstract. The reference further discloses that in order to suppress the substrate to be formed from being curved or waved, a weight plate is placed on a top surface of the greensheet formed for producing the silicon nitride substrate [0076-0083], see Figures 7-10. The substrate has a main surface of a shape larger than a square having a side of a length of 120 mm or a rectangle of 150 mm x 170 mm [0019]. Note that the ranges in Imamura are considered to disclose the claimed range with “sufficient specificity” so as to anticipate the claimed range; see MPEP 2131.03 II.
While the reference does not specifically disclose the claimed thermal conductivity ratio, it is expected the disclosed silicon nitride substrate will have the same thermal conductivity variation (i.e. the claimed ratio) given the disclosed and claimed substrates are formed using the same or similar method (i.e. molding Si powder into greensheets, placing a weight on the greensheet to prevent it from being curved or waved after sintering, stacking the greensheets in a vertical frame, and nitriding the Si powder); see Imamura [0066-0091] and Applicant’s specification [0047-0052]. See also MPEP 2112.01 I: “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.”
Additionally, while the reference does not specifically disclose the claimed thermal conductivity values, given the reference discloses a substrate of the same or similar composition produced by the same or similar method, it is expected the disclosed silicon nitride substrate will have the same properties regarding thermal conductivity values; see above discussion and MPEP 2112.01 I and II.
Regarding claim 2, the reference discloses the substrate has a main surface of a shape larger than a square having a side of a length of 120 mm or a rectangle of 150 mm x 170 mm [0019]. Note that the ranges in Imamura are considered to disclose the claimed range with “sufficient specificity” so as to anticipate the claimed range; see MPEP 2131.03 II.
Response to Arguments
Applicant's arguments filed April 7, 2026 have been fully considered but they are not persuasive.
Applicant argues that the presence of uniformity is not necessarily obtained by the process of Imamura. Specifically, Applicant notes that the “reference example” in the instant application shows that, even if the conditions are met, the ratio becomes 0.83 due to difference in frame shape and the like. Applicant also argues that “large-sized” silicon nitride substrates have uneven volatilization of the sintering aid, which makes it difficult to ensure in-plane uniformity of thermal conductivity. According to Applicant, the present invention achieves a remarkable unexpected result contrary to the expectation of a person skilled in art. As such, Applicant request the withdrawal of the rejections under 35 U.S.C. 103. Examiner respectfully disagrees.
As discussed above and previously, Imamura discloses a silicon nitride substrate of a similar size made by a similar process. Note that the shape of the disclosed substrate is also similar, see Applicant’s Fig. 4 and Imamura Fig. 1. The similar processing method, size and shape disclosed by the reference are the rationale for showing inherency of the claimed properties in the prior art; see MPEP 2112 IV. Once the Examiner presents reasoning to show inherency, the burden of production shifts to the Applicant; MPEP 2112 V. In the instant case, Applicant argues that the ratio is shape dependent, but Examiner notes that the disclosed substrate has the same shape. Further, Applicant’s reference example is for a vertical frame, where the frame in Imamura has a horizontal structure similar to Applicant, see Imamura Fig. 8 and [0092] and Applicant’s specification [0056-0061]. Additionally, Applicant argues that it is typical to provide a recess to achieve high thermal conductivity for such a large size, but the reference does not teach a recess. Lastly, Examiner notes that unexpected results are not relevant to rejections under 35 U.S.C. 102.
For the above reasons, the rejections under 35 U.S.C. 102 over Imamura are respectfully maintained.
Conclusion
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 LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at (571)272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA A AUER/Primary Examiner, Art Unit 1783
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