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. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 30 December 2025. A preliminary amendment was filed on 20 February 2026 amending claims 12 and 18. Claims 1-24 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 25 September 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I (product claims 1-11) in the reply filed on 20 February 2026 is acknowledged. Applicant further notes that claims 12 and 18 have been amended and argues that these now read on Group I.
However, claims 12-17 and claims 18-24 (Groups II and III) are still distinct from Group I for the reasons noted in the Restriction/Election Requirement mailed on 30 December 2025. The product as claimed in Group I could be made by another and materially different process than those specified in Groups II and III. Claims 12-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings received on 25 September 2023 are acceptable.
Claim Rejections - 35 USC § 102
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 1-3, 5-9 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hattori (U.S. Pub. 2010/0132871).
Regarding claim 1, Hattori discloses a thermal diffusion sheet comprising a graphite sheet and thermally conductive layers attached to both principal surfaces of the graphite sheet, see abstract and p. 2, [0024]. As shown in the Examples in Table 2 on p. 5, the adhesive force decreases after exposure to elevated temperatures. Note that the adhesive strength is measured under JIS Z0237 at an initial temperature and after heating to 100 °C for 168 hours, see p. 5, [0076]. The Initial adhesive strength of Example 1 is 3.2 N/cm and the adhesive strength after heating is 3.0 N/cm, thus the adhesive force decreases long with a temperature rise as claimed. Note that the graphite sheet reads on a thermal conductive sheet as claimed.
Regarding claim 2, Hattori teaches that the thermal diffusion sheet is attached to a radiator plate, see p. 2, [0024]. Thus the structure is radiator plate – adhesive layer 1 – graphite sheet – adhesive layer 2. The radiator plate reads on the claimed thermal conductive sheet, the graphite sheet reads on the claimed base member. See FIG. 2 and description at p. 3, [0046].
Regarding claim 3, as noted in the Examples in Table 2 on p. 5, the adhesive force decreases after exposure to elevated temperatures.
Regarding claim 5, the thermal diffusion sheet includes a layer of graphite, see p. 2, [0024].
Regarding claims 6 and 7 and 9, Hattori describes applying the double sided adhesive thermal diffusion sheet between a radiator and light bars including LEDs as shown in FIGS. 6A and 6B and described at p. 5, [0079]. Thus the thermal conductive sheet is positioned between a heat generator (the light bars) and a heat radiator as claimed. As shown in the Examples in Table 2 on p. 5, the adhesive force decreases after exposure to elevated temperatures. The thermal conductive sheet includes two adhesive layers present on either side of a graphite sheet, see p. 2, [0024].
Regarding claim 8, as noted in the Examples in Table 2 on p. 5, the adhesive force decreases after exposure to elevated temperatures.
Regarding claim 11, the thermal diffusion sheet includes a layer of graphite, see p. 2, [0024].
Claim Rejections - 35 USC § 102/103
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 6-10 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Lee (U.S. Pub. 2016/0145474) or alternately under 35 U.S.C. § 103 as being obvious over Lee.
Regarding claim 1, Lee discloses optical components 10 and 20 which are adhered together by adhesive layers 2a, 2b, 2c, and 2d as shown in FIG. 2A and described at p. 4, [0064]. The adhesive sheet has an adhesive strength that is decreased by heating to 70-90 °C, see p. 4, [0064-0065]. The optical component may be a light emitting device, plasma display, or others, see p. 2, [0031], reading on a thermal conductive sheet. This anticipates the claim.
Regarding claims 2 and 3, layer 10 reads on the claimed thermal conductive sheet, layers 2a and 2c read on the claimed adhesive layers, and layer 2b reads on the claimed base member. The adhesive force between layers 2b and 2c is reduced by heating as shown in FIG. 2B.
Regarding claim 4, Lee teaches that the adhesive strength is reduced upon heating to 70 °C or more, see p. 2, [0023] and p. 4, [0065]. The peel strength is measured by JIS Z0237 after being heated to 90°C for 20 minutes, see p. 6, [0086]. Table 2 at p. 7 notes the peel strength of the example materials at 23 °C and at 90 °C, and the adhesive power is reduced by more than 75%. For instance, in Example 1, the adhesive power is reduced form 6.5 N/25 mm at 23 °C to 0.3 N/25 mm at 90 °C. This is about a 95% reduction in adhesive power.
While Lee specifies evaluating the adhesive after heating to 90 °C in the method descried at p. 6, [0086], Lee specifically mentions that the adhesive strength is decreased by heating to 70 °C to 90 °C as noted above. It is expected that a similar large reduction in adhesive power is desired and will be obtained after heating to 70 °C rather than 90 °C as described in the Examples, as this allows for the components to be separated (see p. 2, [0024]). Otherwise, the reference would not be suitable for its intended purpose of having a significant adhesive reduction at the specified temperature. Thus, it would have been obvious to one having ordinary skill in the art that Lee suggests a similar large reduction in adhesive power at 70 °C.
Lee teaches that the purpose of having the adhesive strength reduced at elevated temperatures is to suppress the optical components adhered by the adhesive layers from being destroyed by heating, see p. 4, [0064]. Thus the components may be reworked.
Regarding claim 6-9, Lee discloses optical components 10 and 20 which are adhered together by adhesive layers 2a, 2b, 2c, and 2d as shown in FIG. 2A and described at p. 4, [0064]. The adhesive sheet has an adhesive strength that is decreased by heating to 70-90 °C, see p. 4, [0064-0065]. The optical component may be a light emitting device, plasma display, polarizer, or others, see p. 2, [0031], reading on a heat generator and a heat radiator. The adhesive layers 2a and 2c read on the claimed adhesive members and layer 2b reads on the claimed thermal conductive sheet. The adhesive layer 2b necessarily has some level of thermal conductivity.
Regarding claim 10, Lee teaches that the adhesive strength is reduced upon heating to 70 °C or more, see p. 2, [0023] and p. 4, [0065]. The peel strength is measured by JIS Z0237 after being heated to 90°C for 20 minutes, see p. 6, [0086]. Table 2 at p. 7 notes the peel strength of the example materials at 23 °C and at 90 °C, and the adhesive power is reduced by more than 75%. For instance, in Example 1, the adhesive power is reduced form 6.5 N/25 mm at 23 °C to 0.3 N/25 mm at 90 °C. This is about a 95% reduction in adhesive power.
While Lee specifies evaluating the adhesive after heating to 90 °C in the method descried at p. 6, [0086], Lee specifically mentions that the adhesive strength is decreased by heating to 70 °C to 90 °C as noted above. It is expected that a similar large reduction in adhesive power is desired and will be obtained after heating to 70 °C rather than 90 °C as described in the Examples, as this allows for the components to be separated (see p. 2, [0024]). Otherwise, the reference would not be suitable for its intended purpose of having a significant adhesive reduction at the specified temperature. Thus, it would have been obvious to one having ordinary skill in the art that Lee suggests a similar large reduction in adhesive power at 70 °C.
Lee teaches that the purpose of having the adhesive strength reduced at elevated temperatures is to suppress the optical components adhered by the adhesive layers from being destroyed by heating, see p. 4, [0064]. Thus the components may be reworked.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Chen (U.S. Pub. 2018/0198099) describes a self-adhesive tape for batteries which is both heat conducting and heat-expanding which reduces the adhesive force.
Akiyama (U.S. Pub. 2017/0158916) describes an adhesive tape for an electronic device which has an adhesive power that decreases when heated.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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