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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis 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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted 16 January 2024 and 18 August 2025 have been considered by the Examiner.
Specification
The disclosure is objected to because of the following informalities:
On page 5, lines 21-31, the specification describes Fig. 1, where it states:
“Also, as shown in FIG. 1, it is favorable for silicon nitride crystal grains 2a (first silicon nitride crystal grains) that have major diameters of less than 5 µm and silicon nitride crystal grains 2b (second silicon nitride crystal grains) that have major diameters of not less than 5 µm to exist. The existence of small crystal grains and large crystal grains makes it possible for small crystal grains to exist in the gaps of the large crystal grains. As a result, the thermal conductivity and the strength can be increased. From this perspective, it is more desirable for the silicon nitride crystal grains 2b having major diameters of less than 3 µm to exist.”
There appears to be an issue with the first and second silicon nitride crystal grains (2a and 2b) as described in lines 21-25 of page 5 in comparison to what is shown in Fig. 1, shown below. Additionally, lines 30-31 of page 5 which states the “silicon nitride crystal grains 2b” as having major diameters “of less than 3 µm”, which contradict the value recited in lines 29-31, which read the silicon nitride crystal grains 2b have a major diameter of not less than 5 µm.
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Based on the Fig. 1 and the disclosure of page 5, lines 9-31, the Examiner believes the section of page 5, lines 21-25 should be amended as follows, with the examiner bolding the amended portions:
“Also, as shown in FIG. 1, it is favorable for silicon nitride crystal grains 2a (first silicon nitride crystal grains) that have major diameters of not less than 5 µm and silicon nitride crystal grains 2b (second silicon nitride crystal grains) that have major diameters of less than 5 µm to exist.”
Page 11, lines 26-33, appear to have the same issue as described above for page 5, lines 21-31. Page 11, lines 26-33 recite:
“It is favorable for the difference between the solid solution oxygen amount of the first silicon nitride crystal grains 2a and the solid solution oxygen amount of the second silicon nitride crystal grains 2b to be not more than 0.03 wt%, wherein the first silicon nitride crystal grains 2a exist in the 20 µmx20 µm unit area and have major diameters of less than 5 µm, and the second silicon nitride crystal grains 2b exist in the 20 µmx20 µm unit area and have major diameters of not less than 5 µm. ”
Based on the Fig. 1 and the disclosure of page 5, lines 9-31, the Examiner believes the section of page 11, lines 26-33 should be amended as follows, with the examiner bolding the amended portions:
“It is favorable for the difference between the solid solution oxygen amount of the first silicon nitride crystal grains 2a and the solid solution oxygen amount of the second silicon nitride crystal grains 2b to be not more than 0.03 wt%, wherein the first silicon nitride crystal grains 2a exist in the 20 µmx20 µm unit area and have major diameters of not less than 5 µm, and the second silicon nitride crystal grains 2b exist in the 20 µmx20 µm unit area and have major diameters of less than 5 µm. ”
Page 30, lines 25-29, appear to have the same issue as described above for page 5, lines 21-31. Page 11, lines 26-33 recite:
“As described above, the first silicon nitride crystal grains were silicon nitride crystal grains having major diameters of less than 5 µm. The second silicon nitride crystal grains were silicon nitride crystal grains having major diameters of not less than 5 µm.”
Based on the Fig. 1 and the disclosure of page 5, lines 9-31, the Examiner believes the section of page 30, lines 25-29 should be amended as follows, with the examiner bolding the amended portions:
“As described above, the first silicon nitride crystal grains were silicon nitride crystal grains having major diameters of not less than 5 µm. The second silicon nitride crystal grains were silicon nitride crystal grains having major diameters of less than 5 µm.”
Page 34, line 32 to page 35, line 6, appear to have the same issue as described above for page 5, lines 21-31. Page 11, lines 26-33 recite:
“Note 3
The highly thermally conductive silicon nitride sintered body according to any one of Notes 1 to 2, wherein
a first silicon nitride crystal grain having a major diameter of less than 5 µm and a second silicon nitride crystal grain having a major diameter of not less than 5 µm exist in the 20 µmx20 µm unit area, and
a difference between a solid solution oxygen amount of the first silicon nitride crystal grain and a solid solution oxygen amount of the second silicon nitride crystal grain is not more than 0.03 wt%.”
Based on the Fig. 1 and the disclosure of page 5, lines 9-31, the Examiner believes the section of page 34, line 32 to page 35, line 6 should be amended as follows, with the examiner bolding the amended portions:
“Note 3
The highly thermally conductive silicon nitride sintered body according to any one of Notes 1 to 2, wherein
a first silicon nitride crystal grain having a major diameter of not less than 5 µm and a second silicon nitride crystal grain having a major diameter of less than 5 µm exist in the 20 µmx20 µm unit area, and
a difference between a solid solution oxygen amount of the first silicon nitride crystal grain and a solid solution oxygen amount of the second silicon nitride crystal grain is not more than 0.03 wt%.”
Appropriate correction is required.
Drawings
The original drawings received on 16 January 2024 are accepted by the Examiner.
Claim Rejections - 35 USC § 112(b) or second paragraph
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 3 and 15 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 pre-AIA the applicant regards as the invention.
Claim 3 recites:
“3. The highly thermally conductive silicon nitride sintered body according to claim 1, wherein a first silicon nitride crystal grain having a major diameter of less than 5 µm and a second silicon nitride crystal grain having a major diameter of not less than 5 µm exist in the 20 µmx20 µm unit area, and a difference between a solid solution oxygen amount of the first silicon nitride crystal grain and a solid solution oxygen amount of the second silicon nitride crystal grain is not more than 0.03 wt%.”
Since the claims are read in view of the specification, and as explained above in the objection to the disclosure, there appears to be some inconsistency in the definition of the first silicon nitride crystal grain (also described as 2a) and the second silicon nitride crystal grain (also described as 2b) as described in the disclosure in the following locations, page 5, lines 21-31, page 11, lines 26-33, page 30, lines 25-29, and page 34, line 32 to page 35, line 6, and Fig. 1.
Therefore, claim 3 is rendered indefinite since it is unclear if the first silicon nitride crystal grain has a major diameter of less than 5 µm and a second silicon nitride crystal grain having a major diameter of not less than 5 µm, as recited or if the claim should read that the first silicon nitride crystal grain has a major diameter of NOT less than 5 µm and a second silicon nitride crystal grain having a major diameter of less than 5 µm, as described above based on the Fig. 1 and the disclosure of page 5, lines 9-31, specifically, lines 30-31.
For the purposes of examination claim 3 will be read as follows, emphasis added by the examiner:
“3. The highly thermally conductive silicon nitride sintered body according to claim 1, wherein a first silicon nitride crystal grain having a major diameter of not less than 5 µm and a second silicon nitride crystal grain having a major diameter of less than 5 µm exist in the 20 µmx20 µm unit area, and a difference between a solid solution oxygen amount of the first silicon nitride crystal grain and a solid solution oxygen amount of the second silicon nitride crystal grain is not more than 0.03 wt%.”
Claim 15 recites:
“15. The highly thermally conductive silicon nitride sintered body according to claim 14, wherein a first silicon nitride crystal grain having a major diameter of less than 5 µm and a second silicon nitride crystal grain having a major diameter of not less than 5 µm exist in the 20 µmx20 µm unit area, and a difference between a solid solution oxygen amount of the first silicon nitride crystal grain and a solid solution oxygen amount of the second silicon nitride crystal grain is not more than 0.03 wt%.”
Since the claims are read in view of the specification, and as explained above in the objection to the disclosure, there appears to be some inconsistency in the definition of the first silicon nitride crystal grain (also described as 2a) and the second silicon nitride crystal grain (also described as 2b) as described in the disclosure in the following locations, page 5, lines 21-31, page 11, lines 26-33, page 30, lines 25-29, and page 34, line 32 to page 35, line 6, and Fig. 1.
Therefore, claim 15 is rendered indefinite since it is unclear if the first silicon nitride crystal grain has a major diameter of less than 5 µm and a second silicon nitride crystal grain having a major diameter of not less than 5 µm, as recited or if the claim should read that the first silicon nitride crystal grain has a major diameter of NOT less than 5 µm and a second silicon nitride crystal grain having a major diameter of less than 5 µm, as described above based on the Fig. 1 and the disclosure of page 5, lines 9-31, specifically, lines 30-31.
For the purposes of examination claim 15 will be read as follows, emphasis added by the examiner:
“15. The highly thermally conductive silicon nitride sintered body according to claim 14, wherein a first silicon nitride crystal grain having a major diameter of not less than 5 µm and a second silicon nitride crystal grain having a major diameter of less than 5 µm exist in the 20 µmx20 µm unit area, and a difference between a solid solution oxygen amount of the first silicon nitride crystal grain and a solid solution oxygen amount of the second silicon nitride crystal grain is not more than 0.03 wt%.”
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 4-14, and 16-18 are rejected under 35 U.S.C. § 103 as being unpatentable over Imamura1 et al., Japanese Patent Publication, JP 2002-293642 A.
A machine-generated translation of JP 2002-293642 A accompanies this action. In reciting this rejection, the examiner will cite this translation.
Imamura1 et al. teach a silicon nitride sintered body. See Abstract and the entire specification, specifically, paragraph [0001]. Imamura1 et al. teach the silicon nitride sintered body comprises silicon nitride particle phase and a surrounding grain boundary phase. See paragraph [0018]. Imamura1 et al. teach that the silicon nitride sintered body has a thermal conductivity of at least 90 W/(m•K). See paragraph [0014]. Imamura1 et al. teach that the amount of oxygen in the silicon nitride particles is 0.1 wt% or less. See paragraphs [0015] and [0019]. Imamura1 et al. teach the silicon nitride crystal grains accounts for at least 85% of the silicon nitride sintered body. See paragraph [0018]. Imamura1 et al. teach that the silicon nitride crystal grain has a short area diameter of at most 1 µm. See paragraph [0015]. Imamura1 et al. teach that the silicon nitride crystal grain has an aspect ratio of at most 10. See paragraph [0015]. Using the short area diameter and the aspect ratio of the silicon nitride crystal grains, the resulting major diameter of the silicon nitride crystal grains would be at most 10 µm. Imamura1 et al. teach that the silicon nitride sintered body is used as a semiconductor substrate. See paragraph [0001]. Imamura1 et al. teach that the silicon nitride sintered body is used as an electronic and structural components. See paragraphs [0001] and [0031]. Imamura1 et al. teach that the silicon nitride sintered body is used as a circuit board. See paragraphs [0001], [0013], [0029], and [0030] and Figure 2. Imamura1 et al. teach that the semiconductor device comprises a circuit board having a copper circuit board, a substrate, a copper plate, and a brazing material. See paragraphs [0046]-[0048] and Figure 2. Imamura1 et al. teach that the substrate has a thickness of 0.6 mm. See paragraph [0045] and [0046].
Imamura1 et al. fail to teach that the average value of solid solution oxygen amount is in terms of a 20 µm x 20 µm unit area and the average value of major diameters and the average of aspect ratio of the silicon nitride crystal grains is in terms of a 50 µm x 50 µm unit area. However, one having ordinary skill in the art at the time the invention was filed would expect that the average value of solid solution oxygen amounts and the average value of major diameters and the average of the aspect ratios of silicon nitride crystal grains taught by Imamura1 et al. would have overlapping ranges with instant claims 1 and 2. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Imamura1 et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Imamura1 et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
As to claim 1, Imamura1 et al. teach a silicon nitride sintered body (paragraph [0001]), Imamura et al. teach the silicon nitride sintered body comprises silicon nitride particle phase and a surrounding grain boundary phase (paragraph [0018]), Imamura1 et al. teach that the silicon nitride sintered body has a thermal conductivity of at least 90 W/(m•K) (paragraph [0014]), Imamura1 et al. teach that the amount of oxygen in the silicon nitride particles is 0.1 wt% or less (paragraphs [0015] and [0019]), Imamura1 et al. teach that the silicon nitride crystal grain has a short area diameter of at most 1 µm (paragraph [0015]), Imamura1 et al. teach that the silicon nitride crystal grain has an aspect ratio of at most 10 (paragraph [0015]). By using the short area diameter and the aspect ratio of the silicon nitride crystal grains as taught by Imamura1 et al., the resulting major diameter of the silicon nitride crystal grains would be at most 10 µm, which reads on a highly thermally conductive silicon nitride sintered body, comprising silicon nitride crystal grains and a grain boundary phase, a thermal conductivity of the silicon nitride sintered body being not less than 80 W/(m•K), an average value of solid solution oxygen amounts of the silicon nitride crystal grains existing in a 20 µm x20 µm unit area in any cross section being not more than 0.2 wt%, an average value of major diameters of the silicon nitride crystal grains existing in a 50 µm x 50 µm unit area in any cross section being not less than 1 µm and not more than 10 µm, an average of aspect ratios of the silicon nitride crystal grains existing in the 50 µm x 50 µm unit area being not less than 2 and not more than 10, as recited in instant claim 1.
As to claim 2, Imamura1 et al. teach a silicon nitride sintered body (paragraph [0001]), has an amount of oxygen in the silicon nitride particles is 0.1 wt% or less (paragraphs [0015] and [0019]), which reads a solid solution oxygen amount of each of the silicon nitride crystal grains existing in the 20 µm x20 µm unit area is within a range of not less than 0.01 wt% and not more than 0.2 wt%, as recited in claim 2.
As to claim 4, Imamura1 et al. teach a silicon nitride sintered body (paragraph [0001]), Imamura1 et al. teach the silicon nitride sintered body comprises silicon nitride particle phase and a surrounding grain boundary phase (paragraph [0018]), Imamura1 et al. teach the silicon nitride crystal grains accounts for at least 85% of the silicon nitride sintered body (paragraph [0018]), which results in the surrounding grain boundary phase is at most 15%, which reads on a content of the grain boundary phase is not less than 1 mass% and not more than 20 mass%, as recited in instant claim 4.
As to claims 5-7, one of ordinary skill in the art would expect that a material with overlapping compositional components would have the relative dielectric constant of at most 10, e50-300/e50-25 of 0.9-1.2, and a e1M-300/e1M-25 of 0.9-1.2 properties as recited in claims 5-7.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 8, Imamura et al. teach a silicon nitride sintered body (paragraph [0001]), Imamura et al. teach that the silicon nitride sintered body has a thermal conductivity of at least 90 W/(m•K) (paragraphs [0014], [0018], [0036], and [0041]), which reads on the thermal conductivity is not less than 100 W/(m•K), as recited in instant claim 8.
As to claim 9, Imamura1 et al. teach that the silicon nitride sintered body is used as a semiconductor substrate (paragraph [0001]), which reads on a silicon nitride substrate using the highly thermally conductive silicon nitride sintered body, as recited in instant claim 9.
As to claim 10, Imamura1 et al. teach that the substrate has a thickness of 0.6 mm (paragraph [0045] and [0046]), which reads on the silicon nitride substrate having a thickness of the silicon nitride substrate is not less than 0.1 mm and not more than 3 mm, as recited in instant claim 10.
As to claim 11, Imamura1 et al. teach that the silicon nitride sintered body is used as a circuit board (paragraphs [0001], [0013], [0029], and [0030] and Figure 2) and Imamura1 et al. teach that the semiconductor device comprises a circuit board having a copper circuit board, a substrate, a copper plate, and a brazing material (paragraphs [0046]-[0048] and Figure 2), which reads on a silicon nitride circuit board having a silicon nitride substrate and a circuit part located on the silicon nitride substrate, as recited on instant claim 11.
As to claim 12, Imamura1 et al. teach that the silicon nitride sintered body is used as a semiconductor substrate (paragraph [0001]), Imamura1 et al. teach that the silicon nitride sintered body is used as an electronic and structural components (paragraphs [0001] and [0031]), Imamura1 et al. teach that the silicon nitride sintered body is used as a circuit board (paragraphs [0001], [0013], [0029], and [0030] and Figure 2), Imamura1 et al. teach that the semiconductor device comprises a circuit board having a copper circuit board, a substrate, a copper plate, and a brazing material (paragraphs [0046]-[0048] and Figure 2), which reads a semiconductor device having the silicon nitride circuit board and a semiconductor element mounted to the circuit part, as recited in instant claim 12.
As to claims 13 and 14, one of ordinary skill in the art would expect that a material with overlapping compositional components would have a e50-300/e50-25 of 0.9-1.2, and a e1M-300/e1M-25 of 0.9-1.2 properties as recited in claims 13 and 14.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 16, Imamura1 et al. teach that the silicon nitride sintered body is used as a semiconductor substrate (paragraph [0001]), which reads on a silicon nitride substrate using the highly thermally conductive silicon nitride sintered body, as recited in instant claim 16.
As to claim 17, Imamura1 et al. teach that the silicon nitride sintered body is used as a circuit board (paragraphs [0001], [0013], [0029], and [0030] and Figure 2) and Imamura1 et al. teach that the semiconductor device comprises a circuit board having a copper circuit board, a substrate, a copper plate, and a brazing material (paragraphs [0046]-[0048] and Figure 2), which reads on a silicon nitride circuit board having a silicon nitride substrate and a circuit part located on the silicon nitride substrate, as recited on instant claim 17.
As to claim 18, Imamura1 et al. teach that the silicon nitride sintered body is used as a semiconductor substrate (paragraph [0001]), Imamura1 et al. teach that the silicon nitride sintered body is used as an electronic and structural components (paragraphs [0001] and [0031]), Imamura1 et al. teach that the silicon nitride sintered body is used as a circuit board (paragraphs [0001], [0013], [0029], and [0030] and Figure 2), Imamura1 et al. teach that the semiconductor device comprises a circuit board having a copper circuit board, a substrate, a copper plate, and a brazing material (paragraphs [0046]-[0048] and Figure 2), which reads a semiconductor device having the silicon nitride circuit board and a semiconductor element mounted to the circuit part, as recited in instant claim 18.
Claims 1-18 are rejected under 35 U.S.C. § 103 as being unpatentable over Imamura1 et al., Japanese Patent Publication, JP 2002-293642 A in view of Imamura2 et al., Japanese Patent Publication, JP 2002-265276 A.
Machine-generated translations of JP 2002-293642 A and JP 2002-265276 A accompanies this action. In reciting this rejection, the examiner will cite this translation.
Imamura1 et al. teach a silicon nitride sintered body. See Abstract and the entire specification, specifically, paragraph [0001]. Imamura1 et al. teach the silicon nitride sintered body comprises silicon nitride particle phase and a surrounding grain boundary phase. See paragraph [0018]. Imamura1 et al. teach that the silicon nitride sintered body has a thermal conductivity of at least 90 W/(m•K). See paragraph [0014]. Imamura1 et al. teach that the amount of oxygen in the silicon nitride particles is 0.1 wt% or less. See paragraphs [0015] and [0019]. Imamura1 et al. teach the silicon nitride crystal grains accounts for at least 85% of the silicon nitride sintered body. See paragraph [0018]. Imamura1 et al. teach that the silicon nitride crystal grain has a short area diameter of at most 1 µm. See paragraph [0015]. Imamura1 et al. teach that the silicon nitride crystal grain has an aspect ratio of at most 10. See paragraph [0015]. Using the short area diameter and the aspect ratio of the silicon nitride crystal grains, the resulting major diameter of the silicon nitride crystal grains would be at most 10 µm. Imamura1 et al. teach that the silicon nitride sintered body is used as a semiconductor substrate. See paragraph [0001]. Imamura1 et al. teach that the silicon nitride sintered body is used as an electronic and structural components. See paragraphs [0001] and [0031]. Imamura1 et al. teach that the silicon nitride sintered body is used as a circuit board. See paragraphs [0001], [0013], [0029], and [0030] and Figure 2. Imamura1 et al. teach that the semiconductor device comprises a circuit board having a copper circuit board, a substrate, a copper plate, and a brazing material. See paragraphs [0046]-[0048] and Figure 2. Imamura1 et al. teach that the substrate has a thickness of 0.6 mm. See paragraph [0045] and [0046].
Imamura1 et al. fail to teach that the average value of solid solution oxygen amount is in terms of a 20 µm x 20 µm unit area and the average value of major diameters and the average of aspect ratio of the silicon nitride crystal grains is in terms of a 50 µm x 50 µm unit area. However, one having ordinary skill in the art at the time the invention was filed would expect that the average value of solid solution oxygen amounts and the average value of major diameters and the average of the aspect ratios of silicon nitride crystal grains taught by Imamura1 et al. would have overlapping ranges with instant claims 1 and 2. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Imamura1 et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Imamura1 et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
As to claim 1, Imamura1 et al. teach a silicon nitride sintered body (paragraph [0001]), Imamura1 et al. teach the silicon nitride sintered body comprises silicon nitride particle phase and a surrounding grain boundary phase (paragraph [0018]), Imamura1 et al. teach that the silicon nitride sintered body has a thermal conductivity of at least 90 W/(m•K) (paragraph [0014]), Imamura1 et al. teach that the amount of oxygen in the silicon nitride particles is 0.1 wt% or less (paragraphs [0015] and [0019]), Imamura1 et al. teach that the silicon nitride crystal grain has a short area diameter of at most 1 µm (paragraph [0015]), Imamura1 et al. teach that the silicon nitride crystal grain has an aspect ratio of at most 10 (paragraph [0015]). By using the short area diameter and the aspect ratio of the silicon nitride crystal grains as taught by Imamura1 et al., the resulting major diameter of the silicon nitride crystal grains would be at most 10 µm, which reads on a highly thermally conductive silicon nitride sintered body, comprising silicon nitride crystal grains and a grain boundary phase, a thermal conductivity of the silicon nitride sintered body being not less than 80 W/(m•K), an average value of solid solution oxygen amounts of the silicon nitride crystal grains existing in a 20 µm x20 µm unit area in any cross section being not more than 0.2 wt%, an average value of major diameters of the silicon nitride crystal grains existing in a 50 µm x 50 µm unit area in any cross section being not less than 1 µm and not more than 10 µm, an average of aspect ratios of the silicon nitride crystal grains existing in the 50 µm x 50 µm unit area being not less than 2 and not more than 10, as recited in instant claim 1.
As to claim 2, Imamura1 et al. teach a silicon nitride sintered body (paragraph [0001]), has an amount of oxygen in the silicon nitride particles is 0.1 wt% or less (paragraphs [0015] and [0019]), which reads a solid solution oxygen amount of each of the silicon nitride crystal grains existing in the 20 µm x20 µm unit area is within a range of not less than 0.01 wt% and not more than 0.2 wt%, as recited in claim 2.
As to claim 3, Imamura1 et al. fail to teach the silicon nitride sintered body has a first silicon nitride crystal grain and a second silicon nitride crystal grain.
Imamura2 et al. teach a silicon nitride sintered body. See Abstract and the entire specification, specifically, paragraph [0001]. Imamura2 et al. teach a silicon nitride sintered body is used as a substrate for use in semiconductor devices, such as circuit boards. See paragraphs [0001], [0003], [0004], [0026], and [0054]-[0056]. Imamura2 et al. teach that the silicon nitride sintered body has multiple particle diameters wherein the major diameters are in the ranges of 0.5-0.8 µm, 2.5-4.5 µm, and 7.5-10 µm. See paragraph [0017]. Imamura2 et al. teach that the silicon nitride sintered body has an aspect ratio of at most 10. See paragraph [0024]. Imamura2 et al. teach that the silicon nitride sintered body has a first silicon nitride crystal grain having an average diameter of 0.5-4.5 µm. See paragraph [0017]. Imamura2 et al. teach that the silicon nitride sintered body has a second silicon nitride crystal grain (or b particle) of 0.5-5 µm. See paragraph [0023]. Imamura2 et al. teach that the first silicon nitride crystal grains have an oxygen content of 0.01-0.5 wt%. See paragraphs [0017] and [0021]. Imamura2 et al. teach that the second silicon nitride crystal grains (b grains) have an oxygen content of 0.01-0.5 wt%. See paragraph [0023].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have a silicon nitride sintered body of Imamura1 et al. as suggested by Imamura2 et al. because the resultant silicon nitride sintered body would have the excellent sheet formability due to the particle size distribution as taught by Immura2 et al. in paragraphs [0015]-[0020]. Which reads highly thermally conductive silicon nitride sintered body having a first silicon nitride crystal grain having a major diameter of less than 5 µm and a second silicon nitride crystal grain having a major diameter of not less than 5 µm exist in the 20 µm x 20 µm unit area, and a difference between a solid solution oxygen amount of the first silicon nitride crystal grain and a solid solution oxygen amount of the second silicon nitride crystal grain is not more than 0.03 wt%, as recited in instant claim 3.
As to claim 4, Imamura1 et al. teach a silicon nitride sintered body (paragraph [0001]), Imamura1 et al. teach the silicon nitride sintered body comprises silicon nitride particle phase and a surrounding grain boundary phase (paragraph [0018]), Imamura1 et al. teach the silicon nitride crystal grains accounts for at least 85% of the silicon nitride sintered body (paragraph [0018]), which results in the surrounding grain boundary phase is at most 15%, which reads on a content of the grain boundary phase is not less than 1 mass% and not more than 20 mass%, as recited in instant claim 4.
As to claims 5-7, one of ordinary skill in the art would expect that a material with overlapping compositional components would have the relative dielectric constant of at most 10, e50-300/e50-25 of 0.9-1.2, and a e1M-300/e1M-25 of 0.9-1.2 properties as recited in claims 5-7.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 8, Imamura1 et al. teach a silicon nitride sintered body (paragraph [0001]), Imamura1 et al. teach that the silicon nitride sintered body has a thermal conductivity of at least 90 W/(m•K) (paragraphs [0014], [0018], [0036], and [0041]), which reads on the thermal conductivity is not less than 100 W/(m•K), as recited in instant claim 8.
As to claim 9, Imamura1 et al. teach that the silicon nitride sintered body is used as a semiconductor substrate (paragraph [0001]), which reads on a silicon nitride substrate using the highly thermally conductive silicon nitride sintered body, as recited in instant claim 9.
As to claim 10, Imamura1 et al. teach that the substrate has a thickness of 0.6 mm (paragraph [0045] and [0046]), which reads on the silicon nitride substrate having a thickness of the silicon nitride substrate is not less than 0.1 mm and not more than 3 mm, as recited in instant claim 10.
As to claim 11, Imamura1 et al. teach that the silicon nitride sintered body is used as a circuit board (paragraphs [0001], [0013], [0029], and [0030] and Figure 2) and Imamura1 et al. teach that the semiconductor device comprises a circuit board having a copper circuit board, a substrate, a copper plate, and a brazing material (paragraphs [0046]-[0048] and Figure 2), which reads on a silicon nitride circuit board having a silicon nitride substrate and a circuit part located on the silicon nitride substrate, as recited on instant claim 11.
As to claim 12, Imamura1 et al. teach that the silicon nitride sintered body is used as a semiconductor substrate (paragraph [0001]), Imamura1 et al. teach that the silicon nitride sintered body is used as an electronic and structural components (paragraphs [0001] and [0031]), Imamura1 et al. teach that the silicon nitride sintered body is used as a circuit board (paragraphs [0001], [0013], [0029], and [0030] and Figure 2), Imamura1 et al. teach that the semiconductor device comprises a circuit board having a copper circuit board, a substrate, a copper plate, and a brazing material (paragraphs [0046]-[0048] and Figure 2), which reads a semiconductor device having the silicon nitride circuit board and a semiconductor element mounted to the circuit part, as recited in instant claim 12.
As to claims 13 and 14, one of ordinary skill in the art would expect that a material with overlapping compositional components would have a e50-300/e50-25 of 0.9-1.2, and a e1M-300/e1M-25 of 0.9-1.2 properties as recited in claims 13 and 14.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 15, Imamura1 et al. fail to teach the silicon nitride sintered body has a first silicon nitride crystal grain and a second silicon nitride crystal grain.
Imamura2 et al. teach a silicon nitride sintered body. See Abstract and the entire specification, specifically, paragraph [0001]. Imamura2 et al. teach a silicon nitride sintered body is used as a substrate for use in semiconductor devices, such as circuit boards. See paragraphs [0001], [0003], [0004], [0026], and [0054]-[0056]. Imamura2 et al. teach that the silicon nitride sintered body has multiple particle diameters wherein the major diameters are in the ranges of 0.5-0.8 µm, 2.5-4.5 µm, and 7.5-10 µm. See paragraph [0017]. Imamura2 et al. teach that the silicon nitride sintered body has an aspect ratio of at most 10. See paragraph [0024]. Imamura2 et al. teach that the silicon nitride sintered body has a first silicon nitride crystal grain having an average diameter of 0.5-4.5 µm. See paragraph [0017]. Imamura2 et al. teach that the silicon nitride sintered body has a second silicon nitride crystal grain (or b particle) of 0.5-5 µm. See paragraph [0023]. Imamura2 et al. teach that the first silicon nitride crystal grains have an oxygen content of 0.01-0.5 wt%. See paragraphs [0017] and [0021]. Imamura2 et al. teach that the second silicon nitride crystal grains (b grains) have an oxygen content of 0.01-0.5 wt%. See paragraph [0023].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have a silicon nitride sintered body of Imamura1 et al. as suggested by Imamura2 et al. because the resultant silicon nitride sintered body would have the excellent sheet formability due to the particle size distribution as taught by Immura2 et al. in paragraphs [0015]-[0020]. Which reads highly thermally conductive silicon nitride sintered body having a first silicon nitride crystal grain having a major diameter of less than 5 µm and a second silicon nitride crystal grain having a major diameter of not less than 5 µm exist in the 20 µm x 20 µm unit area, and a difference between a solid solution oxygen amount of the first silicon nitride crystal grain and a solid solution oxygen amount of the second silicon nitride crystal grain is not more than 0.03 wt%, as recited in instant claim 15.
As to claim 16, Imamura1 et al. teach that the silicon nitride sintered body is used as a semiconductor substrate (paragraph [0001]), which reads on a silicon nitride substrate using the highly thermally conductive silicon nitride sintered body, as recited in instant claim 16.
As to claim 17, Imamura1 et al. teach that the silicon nitride sintered body is used as a circuit board (paragraphs [0001], [0013], [0029], and [0030] and Figure 2) and Imamura1 et al. teach that the semiconductor device comprises a circuit board having a copper circuit board, a substrate, a copper plate, and a brazing material (paragraphs [0046]-[0048] and Figure 2), which reads on a silicon nitride circuit board having a silicon nitride substrate and a circuit part located on the silicon nitride substrate, as recited on instant claim 17.
As to claim 18, Imamura1 et al. teach that the silicon nitride sintered body is used as a semiconductor substrate (paragraph [0001]), Imamura1 et al. teach that the silicon nitride sintered body is used as an electronic and structural components (paragraphs [0001] and [0031]), Imamura1 et al. teach that the silicon nitride sintered body is used as a circuit board (paragraphs [0001], [0013], [0029], and [0030] and Figure 2), Imamura1 et al. teach that the semiconductor device comprises a circuit board having a copper circuit board, a substrate, a copper plate, and a brazing material (paragraphs [0046]-[0048] and Figure 2), which reads a semiconductor device having the silicon nitride circuit board and a semiconductor element mounted to the circuit part, as recited in instant claim 18.
Conclusion
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
26 June 2026
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