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 .
The amendment filed 2/2/2026 has been entered. Claims 2-7 and 10 have been canceled. Claims 1, 8-9, and 11-12 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112(a)
Claims 1, 8-9, and 11-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a thermally conductive board comprising an electrically insulating but thermally conductive layer laminated between top and bottom metal layers, wherein the electrically insulating but thermally conductive layer satisfies an equivalence relation during X-ray irradiation between scattering intensity I and scattering vector q of I~qa, wherein the scattering vector q ranges from 0.007 Å-1 to 0.08 Å-1, and a ranges from -3.57 to -3.62, when analyzed by utilizing small-angle X-ray scattering (SAXS) at a wavelength of 0.8259Å; and the electrically insulating but thermally conductive layer comprises an epoxy resin as an electrically insulating polymer matrix and aluminum oxide and/or aluminum nitride particles as thermally conductive inorganic spherical/spheroidal filler particles dispersed therein at a packing density in the range of 0.68 to 0.72 and filling rate in the range of 86% to 90%; and particularly with a thermal conductivity ranging from 8 W/mK to 15 W/mK, and a coefficient of thermal expansion (CTE) ranging from 9 ppm/°C to 15 ppm/°C, does not reasonably provide enablement for a thermally conductive board wherein the electrically insulating but thermally conductive layer comprises any of the spherical/spheroidal particles as recited in claim 1 in combination with an epoxy resin, satisfying the above equivalence relation when analyzed by any manner and/or at any wavelength, while having any thermal conductivity and any CTE properties. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims for similar reasons as discussed in the prior office action and restated below with respect to the amended claims.
In determining whether the specification meets the enablement requirement, the Examiner considered the following factors as set forth in In re Wands: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. First, it is noted that the claimed invention is broadly recited as a thermally conductive board that appears to be defined more so based upon a combination of properties of the “electrically insulating but thermally conductive layer” and not the specific composition thereof given the open transitional language of “comprises”, the vast number of epoxy resins in the art, and the almost limitless number of possible particle combinations encompassed by the claimed spherical/spheroidal particle Markush group. Hence, the nature of the invention is very general and the amount of related prior art with regard to thermally conductive boards is extremely vast. In terms of X-ray analysis, particularly analysis by SAXS which utilizes a smaller angle to focus on longer length scales versus wide-angle X-ray scattering (WAXS) which utilizing an increased angle to probe smaller length scales, it is again noted that although SAXS can be utilized to determine qualitative and in many cases even quantitative characteristics of a given test sample, particularly when utilized with other analysis techniques (e.g. Fourier-transform infrared spectroscopy (FTIR), electron microscopy, etc.), materials other than “electrically insulating but thermally conductive” materials can exhibit a similar equivalence relation of I~qa as recited with a falling in a range of -3 to -4 given that the significance of such a values speaks to the underlying structure of the material and not the chemical, electrical and/or thermal properties thereof, or even the form of the material given that mesoporous materials of a single composition as well as liquid colloidal dispersions may exhibit such relation as evidenced by Gommes (Small-angle scattering for beginners, Entire document, particularly Sections 1-2, Fig. 4, and Table 1) and/or Oberdisse (Chapter 12 Structure Determination of Polymer Nanocomposites by Small-Angle Scattering, Entire chapter) and/or Feichtenschlager (Epoxy Resin Nanocomposites: The Influence of Interface Modification on the Dispersion Structure – A Small-Angle-X-ray-Scattering Study, Entire document), which are also representative of the state of the art and the level of one of ordinary skill in the art. It is also again noted that results from a SAXS analysis of a given sample can vary based upon the X-ray equipment utilized, the wavelength λ of the incident X-ray and/or the scattering angle (θ or 2θ) utilized which directly affect the scattering vector q range (given that q=4π sin θ/λ), the method utilized to subtract background scattering and noise, and the model and software utilized for numerical fitting of the data wherein the greater the variance between the raw data and the fitted line the less reliable the results, as evidenced by Feichtenschlager (Introduction) and/or Baniassadi (Using SAXS approach to estimate thermal conductivity of polystyrene/zirconia nanocomposite by exploiting strong contrast technique, Section 3.4) and/or Marega (A Direct SAXS Approach for the Determination of Specific Surface Area of Clay in Polymer-Layered Silicate Nanocomposites, Entire document).
In looking at the amount of direction provided by the inventor(s) and the existence of working examples, it is again noted that the specification merely discusses the equivalent relation based upon Porod’s law in light of Fresnel equations of reflection, and states that “a composite material exhibits better performance in thermal conductivity and CTE if q and the power of q are restricted to specific ranges” and “[m]oreover, if the coefficient of determination (i.e., R2, R square) for the fitting straight line is about 0.99, the reproducibility of the aforementioned thermal conductivity and CTE is much better” (see pages 5-6 of the specification as filed), however, aside from the limited working examples, all of which utilize an (unknown) epoxy resin and aluminum oxide or aluminum nitride as the thermally conductive inorganic filler in the form of a plurality of spherical/spheroidal particles, the Applicant provides no guidance as to how one skilled in the art can select from an almost infinite combination of possible epoxy resins and the recited filler particles including “any combination thereof” in order to provide a material layer that not only has well-defined, sharp/flat interfaces (e.g., as in Porod’s law), but also has values of q and the power of q “restricted” to the claimed (much narrower) range of from -3.57 to -3.62 (as amended), and is limited to a very narrow packing density range of 0.68 to 0.72 in combination with a very narrow filling rate range of 86% to 90% - a combination of which is not only dependent upon the shape and/or sphericity of the particles but also closely dependent upon the particle size distribution as well as the densities of the claimed filler(s), e.g., in general, zirconium nitride has a density of about 7.09 g/cc which is almost twice that of aluminum oxide (~4.0 g/cc) and more than twice that of aluminum nitride (~3.26 g/cc); while also being able to provide the desired thermal conductivity and CTE performance required of the present invention without conducting undue experimentation. In fact, as noted in the prior office action, Applicant provided examples C2 and C3 that appeared to meet the prior claim limitations but considered said examples as “comparative” examples, while Applicant also provided “inventive” examples that are now outside of the claimed invention, and given that the Applicant does not provide sufficient detailed information about the examples, e.g., specific epoxy resin/curing agent utilized (which directly affects the thermal conductivity of the resulting cured resin as evidenced by Nishiyama, US2014/0283972A1, Entire document, particularly the working examples as shown in Table 2), average particle size and particle size distribution of the thermally conductive filler(s) (e.g., see Nishiyama, US2016/0177024A1, Entire document), how the filler particles are mixed with the resin and whether the filler particles are subjected to any surface treatment, how the layer is formed, etc. - all of which may affect the dispersibility of the filler particles in the resin matrix and thus the resulting properties; and more particularly, specific details about the SAXS analyzer, all of the parameters utilized for the analysis including temperature of the samples, the detailed methodology utilized to obtain a, etc., the Examiner again takes the position that the Applicant fails to provide sufficient guidance to one having ordinary skill in the art as to how to make the claimed invention without conducting undue experimentation to determine whether a given system meets the claimed relation and provides required electrical and thermal properties, except perhaps as specifically disclosed in the limited working examples utilizing an electrically insulating epoxy resin as the polymer matrix, that the Examiner again notes is not clearly described, with thermally conductive aluminum oxide or aluminum nitride (the average particle size and particle size distribution of which are not clearly described) as the plurality of inorganic spherical and spheroidal filler particles dispersed therein at a packing density in the range of from 0.68 to 0.72, and a filling rate in the range of from 86% to 90%, and also having a thermal conductivity from 8 W/mK to 15 W/mK, and a coefficient of thermal expansion (CTE) from 9 ppm/°C to 15 ppm/°C.
Claim Rejections - 35 USC § 112(b)
Claims 11-12 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.
Similar to the discussion in the prior office action, claim 11 recites, “A thermally conductive gel comprising the electrically insulating but thermally conductive layer of Claim 1” (emphasis added), however, claim 1 is directed to “A thermally conductive board, comprising: a top metal layer; a bottom metal layer; and an electrically insulating but thermally conductive layer laminated between the top metal layer and the bottom metal layer” (emphasis added), so that the invention of claim 1 is not solely directed to the “electrically insulating but thermally conductive layer” but also includes top and bottom metal layers. Hence, it is unclear as to what is meant to be encompassed by the “thermally conductive gel” of claim 11, e.g., is the claim directed to just a thermally conductive gel which comprises the “electrically insulating but thermally conductive layer” and not the top and bottom metal layers that are required by claim 1 from which claim 11 depends? Or is the claim reciting that the electrically insulating but thermally conductive layer of the thermally conductive board of claim 1 is in the form of a thermally conductive gel in the thermally conductive board and thus is actually directed to the thermally conductive board comprising the electrically insulating but thermally conductive layer in the form of a “gel”?
Similarly, claim 12 recites, “A thermally conductive pad comprising the electrically insulating but thermally conductive layer of Claim 1” (emphasis added), however, it is again noted that claim 1 is directed to “A thermally conductive board” comprising the top and bottom metal layers and not just the electrically insulating but thermally conductive layer alone such that similar to claim 11 above, it is unclear as to what is meant to be encompassed by claim 12.
Claim Rejections - 35 USC § 112(d)
Claims 11-12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As noted above, claim 11 recites, “A thermally conductive gel comprising the electrically insulating but thermally conductive layer of Claim 1” (emphasis added), and hence, if the claimed “gel” is meant to comprise the electrically insulating but thermally conductive layer only and not the top and bottom metal layers as recited in claim 1 from which claim 11 depends as discussed above (which appears to be the case based upon the specification as filed), then claim 11 is rejected as failing to incorporate all of the limitations of the claim to which it refers, i.e., failing to include the “thermally conductive board” comprising the top and bottom metal layers. Similarly, claim 12 recites, “A thermally conductive pad comprising the electrically insulating but thermally conductive layer of Claim 1” (emphasis added), and hence, if the claimed “pad” is meant to comprise the electrically insulating but thermally conductive layer only and not the top and bottom metal layers as recited in claim 1 from which claim 12 depends as discussed above (which appears to be the case based upon the specification as filed), then claim 12 is similarly rejected as failing to incorporate all of the limitations of the claim to which it refers, i.e., failing to include the “thermally conductive board” comprising the top and bottom metal layers. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102/103
Claims 1, 8-9, and 11-12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nishiyama (US2014/0283972A1). Nishiyama discloses an epoxy resin composition comprising an epoxy resin having a mesogenic group, a novolac resin, and an inorganic filler; a resin sheet formed from the resin composition; as well as a laminate produced from a cured resin sheet with a metal plate or radiator plate, such as a copper plate, on one or both surfaces of the cured resin sheet; wherein a cured resin material formed from the resin composition has high thermal conductivity, is superior in insulation, and has high peel strength (Entire document, particularly Abstract; Paragraphs 0113-0119, 0143, 0172, and 0175-0176). Nishiyama discloses that the inorganic filler is an insulating inorganic compound that preferably has high thermal conductivity, with examples thereof including “aluminum oxide, magnesium oxide, boron nitride, aluminum nitride, silicon nitride, talc, mica, aluminum hydroxide, and barium sulfate”, wherein “[a]mong them, aluminum oxide, boron nitride, and aluminum nitride are preferable from an aspect of thermal conductivity” and may be used singly or in combination of two or more types (Paragraphs 0076-0077). Nishiyama discloses that “[e]xamples of the particle morphology of the inorganic filler include spherical, cataclastic, scaly and aggregated particle, and as the morphology with a good packing property spherical is preferable” (Paragraph 0078); and that inorganic filler within the average particle size range as recited in Paragraph 0078 exhibits a better packing property, if it has a broader particle size distribution, wherein “[i]n this case, a single type exhibiting a particle size distribution with a single mode, or a single type exhibiting a particle size distribution with 2 or more modes, or a mixture thereof can be used, and an inorganic filler exhibiting a particle size distribution with 3 or more modes in total is more preferable” (Paragraph 0080).
Nishiyama discloses that “the content of an inorganic filler in the resin composition may be in a range of 1 to 99 parts by mass based on the total mass of an epoxy resin, a novolac resin, and an inorganic filler as 100 parts by mass, is preferably 50 to 97 parts by mass, and more preferably 70 to 95 parts by mass,” (encompassing the claimed filling rate of from 86% to 90%) wherein “[i]f the content of an inorganic filler is in the range, higher thermal conductivity can be attained” (Paragraph 0082). Nishiyama specifically discloses working examples comprising a first copper foil or “top metal layer”, a second copper foil or “bottom metal layer”, and an electrically insulating but thermally conducive layer laminated therebetween (Examples), wherein the electrically insulating but thermally conductive layer comprises an epoxy resin and an aluminum oxide mixture as the inorganic filler, namely an α-alumina mixture available from Sumitomo Chemical Co., Ltd., comprising a mixture of aluminum oxide with an average particle size of 18 µm (AA-18) at 166.80 parts, aluminum oxide with an average particle size of 3 µm (AA-3) at 31.56 parts, and aluminum oxide with an average particle size of 0.4 µm (AA-04) at 27.05 parts (Paragraph 0136, which are inherently “α-alumina single crystals with precisely controlled particle size distribution and almost-spherical polyhedral shape” as evidenced by the attached Sumitomo Chemical Product Databook, particularly page 10; reading upon the claimed “thermally conductive filler has a plurality of spherical particles and a plurality of spheroidal particles…selected from the group consisting of…aluminum oxide” as in instant claim 1), wherein the aluminum oxide filler mixture in at least Examples 1-8 constitutes about 88.7% by mass of the resin layer, for a volume content of about 68.4% (based upon densities of the components thereof and the law of mixtures), falling within the claimed 86% to 90% range for the “filling rate” and the claimed 0.68 to 0.72 range for the “packing density” as recited in instant claim 1, and about 89% by mass and 69.1% by volume for Example 10, also falling within the claimed “packing density” and “filling rate” ranges, with Examples 1-7 specifically having a thermal conductivity, as determined by the method described in Paragraphs 0165-0168, ranging from 8.6 to 9.8 W/mK falling within the claimed range as recited in instant claim 8; and although Nishiyama does not specifically recite that the cured epoxy resin layer as the claimed “electrically insulating but thermally conductive layer” satisfies the claimed relation as recited in instant claim 1 and has a coefficient of thermal expansion (CTE) as recited in instant claim 9, the Examiner takes the position that given that the cured epoxy resin layers of Examples 1-7 comprise substantially spherical aluminum oxide filler particles in a packing density and filling rate as instantly claimed and exhibit a thermal conductivity within the claimed range, a property that allegedly results when said relation is satisfied, the claimed relation would inherently be satisfied by Nishiyama and the cured epoxy resin layers of Examples 1-7 would exhibit a CTE as instantly claimed. Hence, absent any evidence to the contrary, the Examiner takes the position that Nishiyama anticipates instant claims 1 and 8-9 as well as instant claims 11-12 given that the epoxy resin composition or layer of Nishiyama may be considered a thermally conductive “gel” or “pad” (particularly in light of the lack of clarity thereof as discussed above). Alternatively, the Examiner takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the invention taught by Nishiyama, particularly as in Examples 1-7, to satisfy the claimed relation of instant claim 1 and exhibit a CTE as recited in instant claim 9, thereby alternatively rendering claims 1, 8-9, and 11-12 obvious over Nishiyama.
Response to Arguments
Applicant's arguments filed 2/2/2026 have been fully considered but they are not persuasive and/or moot in view of the additional remarks and new grounds of rejection presented above. With respect to the rejections under 35 U.S.C. 112(a), (b), and (d), as restated above with respect to the amended claims, the Examiner notes that Applicant’s claim amendments do not address the issues as restated above in detail in the 112 rejections, wherein it is again noted that: 1) with respect to the 112(a) rejection, the Applicant fails to provide sufficient guidance other than the limited working examples as to how to make and/or use the claimed invention without conducting undue experimentation, particularly given the more narrow ranges as discussed in detail above; 2) with respect to the 112(b) rejection, claims 11 and 12 recite a thermally conductive “gel” and “pad”, respectively, “comprising the electrically insulating but thermally conductive layer of Claim 1” although Claim 1 is not directed to the layer alone but instead a thermally conductive board that includes top and bottom metal layers in addition to the electrically insulating but thermally conducive layer such that it remains unclear as to what is meant to be encompassed by claims 11 and 12; and 3) similar to 2) above, the “gel” and “pad” of claims 11 and 12, respectively, appear to only comprise the “electrically insulating but thermally conductive layer”, while claim 1, from which claims 11 and 12 (now directly) depend, is directed to a “thermally conductive board” that requires a top metal layer and a bottom metal layer in addition to the electrically insulating but thermally conductive layer, and given that the “gel” and “pad” as described in the present specification do not include the top and bottom metal layers – “limitations of the claim upon which it [i.e., claim 11 or 12] depends”, claims 11 and 12 remain rejected under 35 U.S.C. 112(d).
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 2/2/2026.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787