CTNF 18/590,248 CTNF 82754 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restrictions 08-25-01 AIA Applicant’s election without traverse of Species V, FIG. 17A-20B in the reply filed on April 21, 2026 is acknowledged. Applicant states in the reply claims 1-3, 6-8, 19-20 reads upon the elected species. 08-06 AIA Claim s 4-5, 9-18 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species , there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 21, 2026 . Information Disclosure Statement 06-49-07 AIA The information disclosure statement filed February 28, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. No copy of JP2013-175508 provided. No copy of JP2016-157928 provided. No copy of HAMASAKI, H. & HIRAHARA, K., (2023) The van der waals cohesive force between two carbon nanotubes provided . No copy of Alexander I. Zhbanov, Evgeny G. Pogorelov, and Yia-Chung C Van der Waals Interaction between Two Crossed Carbon Nanotubes ACS Nano 2010 provided. No copy of What are carbon nanotubes? https://www.understandingnano.com/what-are-carbon-nanotubes.htm. (2012, Novembe 10) provided. Drawings 06-36 AIA The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the first direction and second direction in claims 1, 2, 20 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Specification 07-44 The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required. Regarding claims 1, 2, and 20. Claims 1, 2, and 20 recite the limitation “first direction” and “second direction”. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claim 20 is 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. Regarding claim 20. Claim 20 recites the limitation “a first direction” in the third paragraph of the claim language. Claim 20 depends upon claim 1 which also states “a first direction” in the claim language. It is not clear to the examiner if “a first direction” of claim 20 is the same or different “a first direction” of claim 1. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (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. 07-15 AIA Claim s 1-3, 6-8 and 20 are rejected under 35 U.S.C. 102( a)(1)/102(a)(2 ) as being anticipated by Dubin et al (U.S. 2004/0150100) with UnderstadingNano.com (https://www.understandingnano.com/what-are-carbon-nanotubes.html 2013) and Zhbanov et al. (Van der Waals interaction between Two Crossed Carbon Nanotubes (2010)) as supporting evidence . Regarding claim 1. Dubin et al disclose a heat dissipating substrate (FIG. 12) comprising: a substrate (FIG. 12, item 40; [0034]) in a quadrangular shape (FIG. 12, shows item 40 is in quadrangular shape), comprising a first main surface (FIG. 12, top of item 40) and a second main surface (FIG. 12, bottom of item 40) opposite to the first main surface (FIG. 12, top of item 40); heat dissipators (FIG. 12, items 48) arrayed (Title: Carbon Nano-tube Arrays) along a first direction (FIG. 12, left to right), and embedded in the substrate (FIG. 12, item 40), made of a carbon material ([0034], i.e. carbon nanotubes 48); and the plurality of surfaces (FIG. 12, top and bottom of item 48) of the heat dissipators comprising a third main surface (FIG. 12, top of item 48) located on the first main surface side (FIG. 12, top of item 40) in a thickness direction (FIG. 12, up and down) and a fourth main surface (FIG. 12, bottom of item 48) opposite to the third main surface (FIG. 12, top of item 48), wherein the heat dissipators (FIG. 12, items 48) have a first heat dissipator (FIG. 12, item 48 on right) and a second heat dissipator (FIG. 12, item 48 on left), the thickness direction (FIG. 12, up and down) is a second direction (FIG. 12, up and down), Dubin et al appears to not specifically recite: the carbon material in which six-membered rings are connected by a covalent bond and each of a plurality of surfaces are bonded by van der Waals forces, both of the first heat dissipator and the second heat dissipator have anisotropy of thermal conductivity, the thermal conductivity of the first heat dissipator in the first direction is higher than either the thermal conductivity of the first heat dissipator in the second direction or the thermal conductivity of the second heat dissipator in the second direction, the thermal conductivity of the first heat dissipator in the second direction is lower than either the thermal conductivity of the first heat dissipator in the first direction or the thermal conductivity of the second heat dissipator in the first direction, in the first direction, the thermal conductivity of the substrate is lower than the thermal conductivity of the first heat dissipator, in the second direction, the thermal conductivity of the substrate is higher than the thermal conductivity of the heat dissipators. However, as evidenced in “What are Carbon Nanotubes”, a carbon material (i.e. carbon nanotubes 48) in which six-membered rings are connected by a covalent bond (First paragraph, i.e. Carbon nanotubes are composed of carbon atoms linked in hexagonal shapes, with each carbon atom covalently bonded to three other carbon atoms) and as evidenced in “Van der Waals interaction between Two Crossed Carbon Nanotubes”, each of a plurality of surfaces are bonded by van der Waals forces. Therefore, Dubin et al inherently discloses a carbon material in which six-membered rings are connected by a covalent bond and each of a plurality of surfaces are bonded by van der Waals forces. Furthermore, Dubin et al discloses that the substrate is made of aluminum oxide ([0034], the aluminum oxide layer 40) and the heat dissipators are made of a carbon material ([0034], i.e. carbon nanotubes 48). Applicant’s originally filed specification in paragraphs [043] heat dissipators are made of a carbon material and further states for a material for a substrate in [0046] such as aluminum oxide. Therefore, Dubin et al inherently discloses a carbon material in which six-membered rings are connected by a covalent bond and each of a plurality of surfaces are bonded by van der Waals forces, both of the first heat dissipator and the second heat dissipator have anisotropy of thermal conductivity, the thermal conductivity of the first heat dissipator in the first direction is higher than either the thermal conductivity of the first heat dissipator in the second direction or the thermal conductivity of the second heat dissipator in the second direction, the thermal conductivity of the first heat dissipator in the second direction is lower than either the thermal conductivity of the first heat dissipator in the first direction or the thermal conductivity of the second heat dissipator in the first direction, in the first direction, the thermal conductivity of the substrate is lower than the thermal conductivity of the first heat dissipator, in the second direction, the thermal conductivity of the substrate is higher than the thermal conductivity of the first heat dissipator. "Products of identical chemical composition cannot 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. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.") MPEP 2112.01 II. Regarding claim 2. Dubin et al discloses all the limitations of the heat dissipating substrate according to claim 1 above. Dubin et al further discloses wherein the heat dissipators (FIG. 12, item 48) have, in a longitudinal sectional view (FIG. 12) in a direction in which the heat dissipators are arrayed (FIG. 12), Dubin et al appears to not specifically recite: greater heat conduction in the thickness direction than a direction perpendicular to the thickness direction However, Dubin et al discloses that the heat dissipators are made of a carbon material ([0034], i.e carbon nanotubes 48), the same as Applicant’s originally filed specification in paragraphs [043] heat dissipators are made of a carbon material. Therefore, Dubin et al inherently discloses greater heat conduction in the thickness direction than a direction perpendicular to the thickness direction. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP 2112.01 II. Regarding claim 3. Dubin et al discloses all the limitations of the heat dissipating substrate according to claim 1 above. Min et al further discloses wherein the substrate (FIG. 12, item 40) has a rectangular shape (FIG. 12), and the heat dissipators (FIG. 12, item 48) are arrayed in a longitudinal direction of the substrate in a plan view (FIG.12). Regarding claim 6. Dubin et al discloses all the limitations an device comprising the heat dissipating substrate according to claim 1 above. Dubin et al further discloses an electronic element (FIG. 10, item 22) mounted on a mounting portion (FIG. 10, item 20) of the electronic element mounting substrate (FIG. 12); and a wiring board or an electronic element housing package (FIG. 12, item 68; [0034]) on which the electronic element mounting substrate (FIG.1A, 12) is mounted. Regarding claim 7 . Dubin et al discloses all the limitations of the electronic module comprising the electronic device according to claim 6 above. Dubin et al further discloses and a module substrate (FIG. 10, item 60) to which the electronic device (FIG. 10, item 22) is connected . Regarding claim 8. Dubin et al discloses all the limitations of the heat dissipating substrate according to claim 2 above. Dubin et al further discloses wherein the substrate (FIG. 12, item 40) has a rectangular shape (FIG. 12 shows item 40 is rectangular shape), and the heat dissipators (FIG. 12, item 48) are arrayed (Title: Carbon Nano-tube Arrays) in a longitudinal direction (FIG. 12 shows item 48 arrayed in longitudinal direction) of the substrate (FIG. 12, item 40) in a plan view (FIG. 12). Regarding claim 20 . Dubin et al discloses all the limitations of the heat dissipating substrate according to claim 1 above. Dubin et al further discloses wherein the substrate (FIG. 6 and 12, item 40) includes a first hole (FIG. 6 and 12, item 42 on right) in which the first heat dissipator (FIG. 6 and 12, item 48 on right) is embedded ([0028]-[0029]) and a second hole (FIG. 6 and 12, item 42 on left) in which the second heat dissipator (FIG. 12, item 48 on left) is embedded ([0028]-[0029]) The first hole (FIG. 6 and 12, item 42 on right) is separated from the second hole (FIG. 6 and 12, item 42 on left) and adjacent to the second hole (FIG. 6 and 12, item 42 on left) in the first direction (FIG. 6 and 12, left to right) the substrate includes a first portion (FIG. 12, 6 and item 40) positioned between (FIG. 6 and 12, item 40 is position between item 42 on right side and item 42 on left side) the first hole (FIG. 6 and 12, item 42 on right) and the second hole (FIG. 6 and 12, item 42 on left) in a first direction (FIG. 12, left to right). Dubin et al appears to no specifically recite in the first direction, the thermal conductivity of the first portion is lower than the thermal conductivity of the first heat dissipator, in the second direction, the thermal conductivity of the first portion is higher than the thermal conductivity of the first heat dissipators. However, Dubin et al discloses that the substrate is made of aluminum oxide ([0034], the aluminum oxide layer 40) and the heat dissipators are made of a carbon material ([0034], i.e. carbon nanotubes 48), same materials as Applicant’s originally filed specification in paragraphs [043] heat dissipators are made of a carbon material and further states for a material for a substrate in [0046] such as aluminum oxide. Therefore, Dubin et al inherently discloses in the first direction, the thermal conductivity of the first portion is lower than the thermal conductivity of the first heat dissipator, in the second direction, the thermal conductivity of the first portion is higher than the thermal conductivity of the one of heat dissipators. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP 2112.01 II. The limitation wherein the substrate includes a first hole in which the first heat dissipator is embedded and a second hole in which the second heat dissipator is embedded, the first hole is separated from the second hole and adjacent to the second hole in the first direction, a first position positioned between the first hole and the second hole in a first direction is a product by process limitation in a device claim. As long as the limitation of the substrate, the first heat dissipator and the second heat dissipator is met, the product by process limitation is met. "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016) . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-22-aia AIA Claim s 19 is rejected under 35 U.S.C. 103 as being unpatentable over Dubin et al (U.S. 2004/0150100) as applied to claim 1 above, and further in view of Min et al (U.S. 2016/0249445) . Regarding claim 19. Dubin et al discloses all the limitations of the heat dissipating substrate according to claim 1 above. Dubin et al further discloses further comprising a plurality of mounting portions (FIG. 9, item 22) disposed on the first main surface (FIG. 9, item 20) so as to overlap each of the heat dissipators (FIG. 1A, item 110) and Dubin et al fails to explicitly disclose each of the plurality of mounting portions is separated from each a plurality of the metal layers by the substrate. However, Min et al teaches each of the plurality of mounting portions (FIG. 1A, item 131; [0067], i.e. , the metal pattern that is in contact with the first via V 1 is referred to as the first metal pattern 131) is separated from each a plurality of the metal layers (FIG. 1A, item 134) by the substrate (FIG. 1A, item 100). Since Both Dubin et al and Min et al teach using carbon as heat transfer material, it would have been obvious to one having ordinary skill in the art of semiconductors before the effective filing date of the claimed invention to have combined the electronic mounting substrate as disclosed in Dubin et al with the each of the plurality of mounting portions is separated from each a plurality of the metal layers by the substrate as disclosed by Min et al. The use of the metal pattern that is in contact with the first via is referred to as the first metal pattern in Min et al provides for improved heat management (Min et al, Abstract) . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Morita et al (U.S. 11,570,882) Substrate For Mounting Electronic Element, Electronic Device, And Electronic Module Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT E BAUMAN whose telephone number is (469)295-9045. The examiner can normally be reached M-F, 9-5 CST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Benitez can be reached at 571-270-1435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /S.E.B./Examiner, Art Unit 2815 /JOSHUA BENITEZ ROSARIO/Supervisory Patent Examiner, Art Unit 2815 Application/Control Number: 18/590,248 Page 2 Art Unit: 2815 Application/Control Number: 18/590,248 Page 3 Art Unit: 2815 Application/Control Number: 18/590,248 Page 4 Art Unit: 2815 Application/Control Number: 18/590,248 Page 5 Art Unit: 2815 Application/Control Number: 18/590,248 Page 6 Art Unit: 2815 Application/Control Number: 18/590,248 Page 7 Art Unit: 2815 Application/Control Number: 18/590,248 Page 8 Art Unit: 2815 Application/Control Number: 18/590,248 Page 9 Art Unit: 2815 Application/Control Number: 18/590,248 Page 10 Art Unit: 2815 Application/Control Number: 18/590,248 Page 11 Art Unit: 2815 Application/Control Number: 18/590,248 Page 12 Art Unit: 2815 Application/Control Number: 18/590,248 Page 13 Art Unit: 2815 Application/Control Number: 18/590,248 Page 14 Art Unit: 2815 Application/Control Number: 18/590,248 Page 15 Art Unit: 2815 Application/Control Number: 18/590,248 Page 16 Art Unit: 2815
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