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 .
This action is responsive to Applicant's amendments/remarks filed 06/05/2026.
Claims 1-19 are currently pending and under examination.
The rejections as stated in the Non-Final Rejection filed 03/16/2026 are all withdrawn in view of the above amendments.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 18 and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 18 recites “alumina having a degree of α crystallization of higher than or equal to 80%”. Claim 19 depends from claim 18 and recites “the degree of α crystallization is higher than or equal to 110%”.
However, the instant invention does not mention “crystallization” in the specification. Instead, the instant invention discusses the equation of claim 18 and percentage as a “gelatinization ratio” (instant US Pub. Para [0026]-[0027]). Thus, claims 18 and 19 contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Appropriate correction is required.
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 18 and 19 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.
Claim 18 depends from claim 1 and recites “the thermally conductive filler comprises alumina”. However, claim 1 recites “the thermally conductive filler comprises spinel”. Therefore, it is unclear whether the claim recites alumina is spinel (which is confusing and indefinite on its own because alumina, i.e., Al2O3, is not a spinel, i.e., an AB2O4 compound); or the thermally conductive filler comprises spinel, further comprises alumina. For the purpose of compact prosecution, this limitation in claim 18 is interpreted as “the thermally conductive filler further comprises alumina…”.
Claim 19 depends from claim 18. Thus, claim 19 is also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite.
Appropriate correction is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is 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.
Claim 19 depends from claim 18 and recites “the degree of α crystallization is higher than or equal to 110%”. However, claim 18 recites “the degree of α crystallization being defined by I25.6/(I25.6 + I46) x100(%), where I25.6 and I46 are peak heights obtained from a powder X-ray diffraction spectrum at 2θ = 25.6 ᵒ and 2θ = 46 ᵒ, respectively”. The equation “I25.6/(I25.6 + I46) x100(%)” requires a value of 100% or less. Therefore, claim 19 fails to further limit the subject matter of claim 18, or fails to include all the limitations of claim 18.
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.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
1. Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kotani (JP 2017014302 A, hereinafter Kotani) in view of Sakamoto (WO 2018/194117 A1, hereinafter Sakamoto).
Regarding claim 1, the instant invention discloses that the thermally conductive filler is present unevenly, in a larger amount, in the first resin phase than in the second resin phase, and therefore, the density (filling density) of the particles of the thermally conductive filler in the first resin phase is higher than in the case where the thermally conductive filler is dispersed in both the first resin phase and the second resin phase (instant US Pub [0030]).
Kotani teaches ([0020], Fig. 1) an uncured resin composition comprising:
a first resin phase, which reads on the claimed first resin phase;
a second resin phase, which reads on the claimed second resin phase;
an inorganic filler, wherein the inorganic filler is a thermally conductive filler ([0041]).
The uncured resin composition as taught by Kotani reads on the claimed thermally conductive resin composition.
Kotani also teaches that the first resin phase and the second resin phase are phase-separated ([0016], Fig. 1).
Kotani also teaches that the inorganic filler is unevenly distributed in the first resin phase (the claimed first resin phase), it is not necessary that all of the inorganic filler is disposed inside the first resin phase, and it is acceptable for a small portion of the inorganic filler to be present in the second resin phase (the claimed second resin phase) ([0023]), which reads on the claimed thermally conductive filler in the first resin phase having a density higher than a density of the thermally conductive filler in the second resin phase.
Kotani further teaches that the inorganic filler has both thermal conductivity and electrical insulation properties ([0042]), and examples of the inorganic filler include oxides ([0043]).
Kotani does not teach that the inorganic filler comprises spinel.
However, Sakamoto teaches a spinel particle comprising magnesium atoms, aluminum atoms, oxygen atoms, and molybdenum atoms ([0023], claim 1), and the spinel particle has high thermal conductivity and good electrical insulation property ([0019], [0131]).
Sakamoto also teaches that the spinel particles are mixed with a resin to obtain a resin composition (claim 3), and the resin composition is molded to form a resin molded product for use as an insulating heat dissipation member (claim 4, [0131]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the spinel particles as taught by Sakamoto as the inorganic filler in Kotani, in order to make the resin composition having high thermal conductivity and good electrical insulation with a reasonable expectation of success, because the spinel particle has high thermal conductivity and good electrical insulation property as recognized by Sakamoto. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 2-6, 8-9, 11-12, and 14-15, Sakamoto teaches that the spinel particles preferably have a polyhedral shape ([0027]).
Kotani teaches that the first resin phase includes a thermosetting resin, preferably an epoxy resin ([0028]-[0029], [0037]), and the second resin phase includes a thermoplastic resin, preferably polyethersulfone ([0028], [0035], [0037]).
The court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Therefore, the difference between solubility parameters of a first resin and a second resin being greater than or equal to 1, would be present in the identical first resin (i.e. an epoxy resin) and the identical second resin (i.e. polyethersulfone) as taught by Kotani.
Regarding claims 7, 10, 13, and 16, the instant invention discloses that the first resin phase which is the solid phase includes the thermosetting resin which has been thermally cured; the second resin phase which is the solid phase includes a thermoplastic resin which has been cured by a temperature drop (instant US Pub. [0037]).
Kotani teaches that the uncured resin composition comprises a first resin phase, a second resin phase, an inorganic filler, and a curing agent ([0020], Fig. 1), wherein the first resin phase includes a thermosetting resin, preferably an epoxy resin ([0028]-[0029], [0037]), and the second resin phase includes a thermoplastic resin, preferably polyethersulfone ([0028], [0035], [0037]).
Kotani also teaches that the uncured resin composition is cured to obtain an insulating resin composition ([0020]). The insulating resin composition of Kotani reads on the claimed thermally conductive resin material.
Kotani also teaches that the curing agent is used to cure the epoxy resin by heating ([0031], [0068]-[0069]). Thus, the insulating resin composition of Kotani comprises a solid phase of the first resin phase (i.e. an epoxy resin).
Kotani further teaches that the uncured resin composition is heated to obtain an insulating resin composition ([0069]).
Kotani does not explicitly teach that the insulating resin composition comprises a solid phase of the second resin phase (i.e. a thermoplastic resin such as polyethersulfone).
However, the court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to expect that the insulating resin composition after curing by heat then cooled down as taught by Kotani would comprise a solid phase of the second resin phase (i.e. a thermoplastic resin such as polyethersulfone) with a reasonable expectation of success, because the property of the second resin phase which includes a thermoplastic resin such as polyethersulfone being solidified by a temperature drop as disclosed by the instant invention, would be present in the same second resin phase which includes a thermoplastic resin such as polyethersulfone as taught by Kotani. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 17, Kotani teaches that the inorganic filler is unevenly distributed in the first resin phase (the claimed first resin phase), it is not necessary that all of the inorganic filler is disposed inside the first resin phase, and it is acceptable for a small portion of the inorganic filler to be present in the second resin phase (the claimed second resin phase) ([0023]). Thus, all of the inorganic filler of Kotani can be disposed inside the first resin phase.
Figure 1 of Kotani also shows that all of the inorganic filler is disposed inside the first resin phase.
Furthermore, Kotani teaches that the first resin phase includes a thermosetting resin, preferably an epoxy resin ([0028]-[0029], [0037]), and the second resin phase includes a thermoplastic resin, preferably polyethersulfone ([0028], [0035], [0037]).
Sakamoto teaches that the spinel particles preferably have a polyhedral shape ([0027]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect that the claimed property of all of the thermally conductive filler being present in the first resin phase and no thermally conductive filler being present in the second resin phase, would flow naturally from the teaching of the combination of Kotani and Sakamoto, because the teaching of the combination of Kotani and Sakamoto provides substantially the same thermally conductive resin composition comprising the same first resin phase, the same second resin phase, and the same thermally conductive filler comprising spinel, the first resin phase and the second resin phase being phase-separated, and the thermally conductive filler in the first resin phase having a density higher than a density of the thermally conductive filler in the second resin phase as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
2. Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kotani (JP 2017014302 A) in view of Sakamoto (WO 2018/194117 A1) as applied to claims 1-17 above, and further in view of En (JP 2016028993 A, hereinafter En).
The disclosure of Kotani in view of Sakamoto is relied upon as set forth above.
Regarding claim 18, Kotani teaches that the inorganic filler can include one or more fillers, and the inorganic filler can include alumina ([0043]).
Kotani does not teach that the alumina has a degree of α crystallization of higher than or equal to 80%.
However, En teaches α-alumina fine particles containing molybdenum (claim 6), and the α-alumina fine particles have α-crystallization rate of 90% or more (claim 8), which falls within the claimed range of “higher than or equal to 80%”.
En also teaches that the α-alumina fine particles have high thermal conductivity and good abrasiveness ([0018]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the α-alumina fine particles having α-crystallization rate of 90% or more as taught by En as the alumina filler in Kotani, in order to make the alumina filler having high thermal conductivity and good abrasiveness with a reasonable expectation of success.
En further teaches that the α-crystallization rate of the α-alumina fine particles is analyzed by X-ray diffraction ([0049]).
En does not teach that the α-crystallization rate is defined by I25.6/(I25.6 + I46) x 100(%), where I25.6 and I46 are peak heights obtained from a powder X-ray diffraction spectrum at 2θ = 25.6ᵒ and 2θ = 46ᵒ, respectively.
However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect that the α-alumina fine particles of En would have α-crystallization rate of 90% or more as defined by I25.6/(I25.6 + I46) x 100(%), where I25.6 and I46 are peak heights obtained from a powder X-ray diffraction spectrum at 2θ = 25.6ᵒ and 2θ = 46ᵒ, respectively, because the α-alumina fine particles of En have α-crystallization rate of 90% or more by X-ray diffraction as recognized by En. No matter what kind of method is used to measure/define the α-crystallization rate of the α-alumina fine particles in En, it will not change the fact that the α-alumina fine particles in En have α-crystallization rate of 90% or more. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
3. Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kotani (JP 2017014302 A) in view of Sakamoto (WO 2018/194117 A1) as applied to claims 1-17 above, and further in view of Endo (JP 2016125001 A, hereinafter Endo).
The disclosure of Kotani in view of Sakamoto is relied upon as set forth above.
Regarding claim 18, Kotani teaches that the inorganic filler can include one or more fillers, and the inorganic filler can include alumina ([0043]).
Kotani does not teach that the alumina has a degree of α crystallization of higher than or equal to 80%.
However, Endo teaches that an α-alumina filler works as a thermally conductive filler, and the α-alumina has α-conversion rate of 90% or more ([0012], [0019]), which falls within the claimed range of “higher than or equal to 80%”.
Endo also teaches that the α-conversion rate of the α-alumina is determined by I25.6/(I25.6 + I46) x 100(%), where I25.6 and I46 are peak heights obtained from a powder X-ray diffraction spectrum at 2θ = 25.6ᵒ and 2θ = 46ᵒ, respectively ([0020]).
Endo also teaches that the α-alumina with α-conversion rate of 90% or more is thermally conductive and has good heat resistance ([0012]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the α-alumina having α-conversion rate of 90% or more as taught by Endo as the alumina filler in Kotani, in order to make the alumina filler having good thermal conductivity and heat resistance with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Response to Arguments
Applicant's arguments with respect to the prior rejections have been considered but are moot, because the arguments do not apply to all of the references being used in the current rejection. The current rejection utilizes new references, Sakamoto (WO 2018/194117 A1), En (JP 2016028993 A), and Endo (JP 2016125001 A), in addition to the previous reference Kotani (JP 2017014302 A) under a new ground(s) of rejection which renders obvious the instant claims.
As stated above, claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Kotani (JP 2017014302 A) in view of Sakamoto (WO 2018/194117 A1).
Conclusion
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.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
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