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 .
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.
Claim 10 is 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The recitation of “the scale-like carbon material particles having a minor diameter between 0.6 nm and 30 nm” (claim 10) is considered to be new matter. The originally filed specification, claims, and drawings have support for “The value of the average minor diameter of the scale-like carbon material is not particularly limited, but is preferably 0.6 to 30 nm, more preferably 0.6 to 15 nm“ (para 19) , but do not teach the particle size as an average minor diameter. As such, the limitations are deemed to be new matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries 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.
Claim(s) 10-12, 16-17 is/are rejected under 35 U.S.C. 103, as best understood due to indefiniteness issues, as being unpatentable over Tanaka et al. US 2015/0030835 Al in view of Wang US 9363932 B2 and SAWA US 20170009045 A1 and noting evidentiary reference KDMFAB “What is Flake Graphite? Properties, Uses, and Benefits Explained”.
Re claim 10, Tanaka et al. teach a heat conduction film comprising- a plurality of scale-like carbon material particles formed of a plurality of graphene layers (3, 5, noting, scale-like carbon material is naturally formed of a plurality of graphene layers see evidentiary reference to describe natural physical properties of materials cited in other prior art , KDMFAB; and a resin binder (4), wherein: adjacent ones of the scale-like carbon material particles are in contact with each other (para 60, fig 2, para 37), the scale-like carbon material particles are disposed such that a long axis of each of the scale-like carbon material particles is oriented in a plane direction of the film (para 62).
Tanaka et al. fail to explicitly teach size details.
Wang teach the scale-like carbon material particles having a minor diameter between 0.6 nm and 30 nm (col 11 lines 39-41) to provide graphene sheets with a specific carbon structure (col 11).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include size details as taught by Wang in the Tanaka et al. invention in order to advantageously allow a graphene composite thin film composition for use as a heat-dissipating layer.
Tanaka et al., as modified, fail to explicitly teach and a proportion of voids in a cross section perpendicular to the plane direction of the heat conduction film is 5% or more and 20% or less per unit area.
Although SAWA fails to explicitly disclose that and a proportion of voids in a cross section perpendicular to the plane direction of the heat conduction film is 5% or more and 20% or less per unit area. Since SAWA does, however, disclose that there are voids in a cross section perpendicular to the plane direction of the heat conduction film; the 5% of voids constitute a defined percentage of the voids in a cross section perpendicular to the plane direction of the heat conduction film. Therefore, the percentage of voids in a cross section perpendicular to the plane direction of the heat conduction film is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that high breaking strains of the resin composite material sheets can be attributed to the small number of voids which may act as origins of breaking, and vice versa. Therefore, since the general conditions of the claim, i.e. that a proportion of voids in a cross section perpendicular to the plane direction of the heat conduction film is a percentage per unit area, were disclosed in the prior art by SAWA, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention to provide
a proportion of voids in a cross section perpendicular to the plane direction of the heat conduction film is the plate member disclosed by SAWA having 5% or more and 20% or less per unit area.
Re claim 11, Tanaka et al. teach wherein the scale-like carbon material particles are made of graphene or graphite (see the rejection of claim 10).
Re claim 12, Tanaka et al. teach wherein an orientation rate of the scale-like carbon material particles is 42 degrees or less (Table 2).
Re claim 16, Tanaka et al. teach wherein, when a cross section perpendicular to the plane direction of the heat conduction film is observed, the scale-like carbon material is connected to the adjacent scale-like carbon material, and thus a thermally conductive network is formed from one end to another end of the heat conduction film in the plane direction (noting very close thermal proximity and thus thermal connections, fig 2, para 60, fig 2, para 37).
Re claim 17, Tanaka et al. teach wherein 50% or more of particles of the scale-like carbon material contained in the heat conduction film are in contact with the adjacent scale-like carbon material (noting all of the particles are directly and indirectly contacting and additionally thermally contacting all parts of the entire structure as it is bonded into a single piece unit, also see indefiniteness issues above) .
Claim(s) 18-20 is/are rejected under 35 U.S.C. 103, as best understood due to indefiniteness issues, as being unpatentable over Tanaka et al. US 2015/0030835 Al in view of Wang US 9363932 B2 and SAWA US 20170009045 A1 and noting evidentiary reference KDMFAB “What is Flake Graphite? Properties, Uses, and Benefits Explained” further in view of ITO et al. US 2018/0231337 Al.
Re claim 18, Tanaka et al. teach generally a heat source; and the heat conduction film according to claim 10, which is disposed in contact with the heat source (paras 2-4, noting it is well known in the art to contact a heat source to a sheet for heat dissipation).
Additionally, ITO et al. teach a heat source; and the heat conduction film according to claim 10 (in the instant combination), which is disposed in contact with the heat source (para 3) to cool a device.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include the contact as taught by ITO et al. in the Tanaka et al., as modified, invention in order to advantageously allow for prevention of overheating in a device.
Re claim 19 ITO et al. teach wherein a heat dissipator is further disposed in contact with the heat conduction film (para 3) to cool a device.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include the contact as taught by ITO et al. in the Tanaka et al., as modified, invention in order to advantageously allow for prevention of overheating in a device.
Re claim 20, ITO et al. teach wherein the heat dissipator is disposed at a position not facing the heat source with the heat conduction film interposed therebetween (noting with a heat dissipator on the opposite side of the heat source with the heat conduction film interposed therebetween, there is naturally an opposite side or face of the radiator which is not facing the heat source, Para 3)
Claim(s) 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. US 2015/0030835 Al in view of Wang US 9363932 B2 and SAWA US 20170009045 A1 and noting evidentiary reference KDMFAB “What is Flake Graphite? Properties, Uses, and Benefits Explained” further in view of MINAMIURA et al. US 20220336834 A1.
Re claim 13, Tanaka et al. , as modified, fail to explicitly teach certain mass %.
MINAMIURA et al. teach wherein a content of the resin binder is less than 50 mass% (para 100, 93) to use a binder in known proportion ratios with other conductive materials.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include certain mass %. as taught by MINAMIURA et al. in the Tanaka et al. , as modified, invention in order to advantageously allow for a composite to be made with chemical stability (para 103).
Re claim 14, Tanaka et al. , as modified, fail to explicitly teach certain mass %.
MINAMIURA et al. teach a content of the resin binder is 1 to 40 mass% (para 100, 93) to use a binder in known proportion ratios with other conductive materials.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include certain mass %. as taught by MINAMIURA et al. in the Tanaka et al. , as modified, invention in order to advantageously allow for a composite to be made with chemical stability (para 103).
Re claim 15, Tanaka et al. , as modified, fail to explicitly teach certain mass %.
MINAMIURA et al. teach wherein a content of the resin binder is 5 to 30 mass% (para 100, 93, noting a large overlap in the range with sufficient specificity MPEP 2131.03(II)) to use a binder in known proportion ratios with other conductive materials.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include certain mass % as taught by MINAMIURA et al. in the Tanaka et al. , as modified, invention in order to advantageously allow for a composite to be made with chemical stability (para 103). Additionally noting It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range to use a binder in known proportion ratios with other conductive materials.
Claim(s) 21 is/are rejected under 35 U.S.C. 103, as best understood due to indefiniteness issues, as being unpatentable over Tanaka et al. US 2015/0030835 Al in view of Wang US 9363932 B2 and SAWA US 20170009045 A1 and noting evidentiary reference KDMFAB “What is Flake Graphite? Properties, Uses, and Benefits Explained” further in view of Kim US 11084925 B2.
Re claim 21, Tanaka et al. , as modified, fail to explicitly teach an aspect ratio.
Kim teach a ratio between the minor diameter of the scale-like carbon material particles and a major diameter of the scale- like carbon material particles is between 30 and 200,000 to provide a specific matrix structural layout (col 9 lines 10-25).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include an aspect ratio as taught by Kim in the Tanaka et al., as modified, invention in order to advantageously allow for desired combination of thermal conductivity and mechanical properties (col 9).
Response to Arguments
Applicant’s arguments, see reply, filed 9/26/2025, with respect to 112 b rejection have been fully considered and are persuasive. The 112 b rejection has been withdrawn.
Applicant's arguments filed 9/26/2025 have been fully considered but they are not persuasive.
The applicant argues that Tanaka fail to teach a minor diameter. The examiner respectfully disagrees. However, the scope of claim 10 has been changed in the latest reply and therefore the examiner is now relying on Wang to teach the recited the scale-like carbon material particles having a minor diameter between 0.6 nm and 30 nm (see detailed rejection above).
The applicant argues that SAWA fail to teach a proportion of voids since SAWA teach the location to be at a surface. The examiner respectfully disagrees. Even if the proportion of voids were only at the surface the claim limitations would be met. More importantly, one of ordinary skill in the art would alter the proportion of voids in the primary reference of the primary reference with the %, and in the instant combination the claim limitations would be met. Also, a mere change of location is not considered something out of ordinary skill in the art, since it has been held that a mere reversal or rearrangement of the essential working parts of a device involves only routine skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). See MPEP 2144.04, section VI, part C. And one of ordinary skill in the art would find it obvious to try the different proportion of voids any p[lace in the composite matrix to meet the desired results of altering void percentage as taught by SAWA.
The applicant argues that SAWA teach a different diamaeter than what is required in claim 1. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Wang is relied upon to teach the diameter, and Sawa is relied upon to teach the void %.
Applicant argues the claims dependent on the independent claim(s) are allowable based upon their dependence from an independent claim. Examiner respectfully disagrees. The arguments with respect to claim 10 have been addressed above. Thus, the rejections are proper and remain.
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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/GORDON A JONES/Examiner, Art Unit 3763