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 .
Election/Restrictions
Applicant’s election without traverse of species (a): wherein each of the first heat transfer layer and the second heat transfer layer is a resin layer containing a filler (Claims 1 – 6 & 10 – 11) in the reply filed on April 17, 2026 is acknowledged.
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.
Claim(s) 1, 2, 5, & 11 are rejected under 35 U.S.C. 103 as being unpatentable over Tetsuya et al. (JP 2010-240871 A).
With regard to claim 1, Tetsuya et al. teach a heat transfer body (Applicant’s “heat conductor”) (14) comprising a carbon nanotube (CNT) group (2) formed substantially vertically to the surface of the substrate 1 with a thermoplastic resin layer (3) (paragraph [0023] & Figs. 2a - 2b shown below). The heat transfer body also comprises an upper thermoplastic resin layer (3) and a lower thermoplastic resin layer (3) (Figs 2a – 2b). The tips (2a/2b) of the carbon nanotubes are embedded into each of the thermoplastic resin layers (3) (i.e., does not entirely penetrate film (3)) or penetrates the film (3) (i.e., CNTs penetrate the entire thickness of the thermoplastic resin layer (3) (paragraphs [0013], [0030] - [0034], Figs. 1a – 1e).
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Each thermoplastic resin (3) may be a single layer or a laminate of two more layers, wherein the laminate may be formed of layers having different thermoplastic resins or may include metallic film (paragraph [0036]). The first layer (the side on which the tip portion of the CNT group is covered) of the laminate of two or more layers is “the” thermoplastic resin film (3) (paragraph [0036]). In other words, the tips of the CNT only penetrate the first layer of the laminate closest to the CNTs, but not the other layers of the laminate.
In the embodiment of a laminate comprising a metallic film (i.e. “a first heat transfer layer” and “second heat transfer layer”), a metallic film inherently has a higher thermal conductivity than the polymer resin layers in direct contact with the CNTS (i.e., “a first resin layer” and “a second resin layer”).
Therefore, Tetsuya et al. suggest an embodiment wherein each thermoplastic resin (3) layer is a laminate comprising a plurality of layers. For example, Applicant’s recited “a first resin layer” comprising embedded tips of CNTs and “a first heat transfer layer” as a laminate that forms an upper thermoplastic resin layer (3) and “a second resin layer” comprising embedded tips of CNTs and a “second heat transfer layer” as a laminate that forms a lower thermoplastic layer (3).
The presence of fillers in the thermoplastic resin is optional, according to the purpose. Blending of filler improves electrical and thermal conductivity (paragraph [0043] – [0044]). As such, Tetsuya et al. suggest multiple embodiments, such as all resin layers contain filler, all resin layers are free of filler, or some resin layers contain filler and other resin layers are free of filler.
In the embodiment of each thermoplastic resin layer (3) formed as laminate comprising a two or more thermoplastic resin layers (without a metallic film), including a laminate comprising a resin layer in direct contact with the CNTS that are free of filler and other resin layers farther from the CNTs that comprise filler (i.e., “first heat transfer layer” and “second heat transfer layer”), and as such, have a thermal conductivity higher than a thermal conductivity the resin layers in contact with the CNTs that are free of filler (i.e., “first resin layer” and “second resin layer”).
Therefore, based on the teachings of Tetsuya et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the amount of filler in each layer of a laminate forming each thermoplastic resin layer (3) (zero filler vs. greater than zero filler) through routine experimentation in order to achieve the desired electrical and thermal conductivity. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 2, as discussed above for claim 1, Tetsuya et al. teach the CNTs tip portions embedded in the film or the tip portion entirely penetrates the film (paragraph [0034]). In the embodiment in which the CNT tip portions are embedded into the film, the first resin layer includes a first region consisting of the first resin and free of the plurality of carbon nanotubes, the first region being between respective first tips of the plurality of carbon nanotubes and a surface of the first resin layer contacting the first heat transfer layer, the first tips facing toward the first heat transfer layer, and the second resin layer including a second region consisting of the second resin and free of the plurality of carbon nanotubes, the second region being between respective second tips of the plurality of carbon nanotubes and a second surface of the second resin layer containing the second heat transfer layer, the second tips facing toward the second heat transfer layer.
With regard to claim 5, as discussed above for claim 1, Tetsuya et al. teach embodiments in which at least some of the layers of the laminate that form the thermoplastic resin layer (3) comprises filler for increasing the thermal conductivity of the layer (i.e., “heat transfer layer(s)”).
With regard to claim 11, Tetsuya et al. teach each thermoplastic resin film (3) (comprising the embedded CNT tips) (i.e., “first resin layer” and “second resin layer”) has a thickness of 1 – 100 µm, more preferably 1 – 50 µm (paragraph [0045]), which includes Applicant’s claimed range of 1 – 30 µm. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tetsuya et al., as applied to claims 1 & 5 above, and further in view of Zhang et al. (US 2007/0240310 A1).
With regard to claim 3, Tetsuya et al. do not explicitly teach the first resin layer is thinner than the first heat transfer layer, and the second resin layer is thinner than the second heat transfer layer.
Zhang et al. teach a thermal management system (i.e., “heat conductor”) comprising a thermal transport layer (i.e., “heat transfer layer”), wherein the thickness of the thermal transport layer may be calculated based upon the required thickness of the thermal transport structure, which may depend on factors, such as dimensions of the devices, and the types of heat-generating and heat-dissipating devices. The thickness of the transport layer may also be based upon the overall thermal resistance requirement of the thermal transport structure (paragraph [0043]).
Therefore, based on the teachings of Zhang et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the thickness heat transfer layer (thermoplastic layer comprising filler) through routine experimentation in order to achieve the desired overall thermal resistance requirement. This adjustment will result in a thickness of a heat transfer layer that is different than the thickness of the thermoplastic resin layer without filler. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 4 & 6 are rejected under 35 U.S.C. 103 as being unpatentable over Tetsuya et al., as applied to claims 1 & 5 above, and further in view of Ito et al. (US 2018/0231337 A1).
With regard to claim 4, Tetsuya et al. teach any known thermoplastic in the art to have a melt viscosity at a temperature equal to or higher than the softening temperature and lower than the decomposition of 103 poise, wherein the preferred resin is a fluorothermoplastic resin (paragraph [0038]). Tetsuya et al. do not explicitly teach thermoplastic resin layer (3) (i.e., “the first resin layer and/or the second resin layer”) is formed of polyphenylene ether resin.
With regard to claim 6, Tetsuya et al. teach the other layers of the laminate may be a different thermoplastic resin than the thermoplastic resin forming the first layer comprising embedded CNT tips. Tetsuya et al. do not explicitly teach the other resin layers of the laminate (Applicant’s resin of the heat transfer layers) is formed of polyphenylene ether resin layer.
Ito et al. teach a heat conductive sheet comprising thermoplastic resin and carbon material, such as carbon nanotubes (CNTs). Known thermoplastic resins for deposition onto the surfaces of carbon nanotube heat conductive sheets include fluorine-based polymers and polyphenylene ethers (paragraph [0030]).
Therefore, based on the teachings of Ito et al., it would have been obvious to one of ordinary skill in the art to substitute the fluorothermoplastic resin taught by Tetsuya et al. with other thermoplastic resins known in the art for the same purpose, such as polyphenylene ethers. See MPEP 2144.06.II.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Tetsuya et al., as applied to claims 1 & 5 above, and further in view of Takamoto et al. (US 2012/0028380 A1).
With regard to claim 10, Tetsuya et al. teach the heat transfer sheet is used for an electronic device or electronic component (paragraph [0074]), such as a temperature sensor, pressure sensitive sensor, or anisotropic conductive film (paragraph [0075] – [0078]). Fig. 2 shows electrode layers (5) and lead wire (6).
However, Tetsuya et al. do not explicitly teach the presence of a first protective layer on a surface of the first heat transfer layer on an opposite side form the first resin layer; and a second protective layer on a surface of the second heat transfer layer on an opposite side from the second resin layer.
Takamoto et al. teach a semiconductor back surface is protected with a film in the form of a separator (release liner) on at least one surface thereof as a protective material for protecting the semiconductor back surface until it is practically used (paragraph [0087]).
Therefore, based on the teachings of Takamoto et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to apply a protective film to one or both surfaces of the laminate thermoplastic layer (3) taught by Tetsuya et al. in order to protect the heat transfer body intended for it is practically used inside an electronic device.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 2 & 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 & 6 of U.S. Patent No. 12,459,227.
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
With regard to claim 1, ’227 claims (claim 1) a substrate comprising:
A heat conduction member including a plurality of carbon nanotubes, a first resin layer provided on first ends of the plurality of carbon nanotubes, and a second resin layer provided on second ends of the plurality of carbon nanotubes, the second ends being opposite of the first ends;
A first metal layer (i.e., “a first heat transfer layer”) laminated on the first resin layer; and
A second metal layer (i.e., “a second heat transfer layer”) laminated on the second resin layer;
Wherein neither the first resin layer nor the second resin layer contains a filler, and
Wherein spaces between the first ends of the plurality of carbon nanotubes are filled with a resin constituting the first resin layer, (i.e., “embedded in first resin layer”) and spaces between the second ends of the plurality of carbon nanotubes are filled with a resin constituting the second resin layer (i.e., “embedded in second resin layer”).
‘227 do not explicitly teach the first heat transfer layer having a thermal conductivity higher than a thermal conductivity of the first resin layer and the second heat transfer layer having a thermal conductivity higher than a thermal conductivity of the second resin layer.
However, it is well known in the art that a metal layer inherently has a higher thermal conductivity than a layer of resin.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
With regard to claim 2, ‘227 claims (claim 6) a portion of the first resin layer on a side closer to the first metal layer (i.e., “the first heat transfer layer”) does not have the first ends of the plurality of carbon nanotubes embedded therein (i.e., “free of the plurality of carbon nanotubes”), and contains only a resin, and
Wherein a portion of the second resin layer on a side closer to the second metal layer (i.e., “the second heat transfer layer”) does not have the second ends of the plurality of carbon nanotubes embedded therein (i.e., “free of the plurality of carbon nanotubes”), and contains only a resin
With regard to claim 4, ‘227 claims the first resin layer and the second resin layer is formed of polyphenylene ether resin (‘227 claim 1).
Claims 1 & 3 – 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 7, & 9 of U.S. Patent No. 12,459,227.
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
With regard to claim 1, ‘227 claims (claim 1) a substrate comprising:
A heat conduction member including a plurality of carbon nanotubes, a first resin layer provided on first ends of the plurality of carbon nanotubes, and a second resin layer provided on second ends of the plurality of carbon nanotubes, the second ends being opposite of the first ends;
Wherein neither the first resin layer nor the second resin layer contains a filler, and
Wherein spaces between the first ends of the plurality of carbon nanotubes are filled with a resin constituting the first resin layer, (i.e., “embedded in first resin layer”) and spaces between the second ends of the plurality of carbon nanotubes are filled with a resin constituting the second resin layer (i.e., “embedded in second resin layer”).
‘227 claims (claim 3) a third resin layer (i.e., “a first heat transfer layer) having a thermal conductivity higher than a thermal conductivity of the first resin layer and a fourth resin layer (i.e., “a second heat transfer layer”) having a thermal conductivity higher than a thermal conductivity of the second resin layer.
With regard to claim 3, ‘227 claims (claim 7) the first resin layer is thinner than the third resin layer (i.e., “the first heat transfer layer, and the fourth resin layer (i.e., “the second resin layer”) is thinner than the second heat transfer layer.
With regard to claim 4, ‘227 claims (claim 1) the first resin layer and the second resin layer is formed of polyphenylene ether resin.
With regard to claim 5, ‘227 claims (claim 3) each of the third resin layer (i.e., “first heat transfer layer”) and the fourth resin layer (i.e., “the second heat transfer layer”) is a resin layer containing a filler.
With regard to claim 6, ‘227 claims (claim 9) the resin layer (of each of the third and fourth resin layers) is formed of polyphenylene ether resin layer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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