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 .
Email Communication
Applicant is encouraged to authorize the Examiner to communicate via email by filing form PTO/SB/439 either via USPS, Central Fax, or EFS-Web. See MPEP 502.01, 502, 502.05.
Information Disclosure Statement
The information disclosure statement filed 1/18/2025 has been fully considered and is attached hereto.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 21 of U.S. Patent No. 11,943,899. Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to claim 1, claims 1, 6, and 21 of the ‘899 reference each recite all the limitations therein verbatim.
Claim Rejections - 35 USC § 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, 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Chan Arguedas et al. (US 2020/0373220 – hereinafter, “Chan”) in view of Zhong (US 2005/0228097).
With respect to claim 1, Chan teaches (In Figs 1, 2A) a heat-transfer component, comprising: a thermal-interface surface (Bottom surface of 110) comprising a first region (Region occupied by 104A) having an outer periphery (See Figs 1, 2A) and a second region (Region occupied by 104B) surrounding the outer periphery of the first region (See Figs 1, 2A); a volume of composite thermal-interface material (104A) contained within the outer periphery of the first region (See Figs 1, 2A), and a volume of second thermal-interface material (104B) within the second region (See Figs 1, 2A), wherein a composition of the composite thermal-interface material differs from a composition of the second thermal-interface material (“For example, FIG. 1 illustrates an embodiment in which a first TIM 104A is proximate to a center of the die 106 and a second TIM 104B, having a different material composition than the first TIM 104A, is proximate to the edge of the die 106.” ¶ 0021).
Chan fails to specifically teach or suggest that the composite thermal-interface material comprising a silicone oil substrate and a metallic filler, the metallic filler having a solid-to-liquid transition temperature between about 10 °C and about 95 °C (Cl. 1), wherein the metallic filler material comprises gallium (Cl. 2).
Zhong, however, teaches a composite thermal-interface material comprising a silicone oil substrate (“polydimethylsiloxane”, ¶ 0047) and a metallic filler (“gallium”, ¶ 0044), the metallic filler having a solid-to-liquid transition temperature between about 10 °C and about 95 °C (Gallium has an approximate transition temperature of 29.76 °C), wherein the metallic filler material comprises gallium (¶ 0044).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Zhong with that of Chan, such that the volume of composite thermal-interface material contained within the outer periphery of the first region includes a silicone oil substrate and a gallium filler, as taught by Zhong, since doing so would facilitate heat transfer from the die (106) of Chan to the lid (110).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 12,062,590 to Yeh et al. which teaches (In Fig 7) a first TIM layer 142 surrounded by a second TIM layer 144;
US 2024/0218228 to Liu et al. which teaches a thermal interface material including at least a low melting point gallium alloy and a mercapto group-containing silicone oil (abstract); and
US 12,033,914 to Eid which teaches a first TIM (1631) which surrounds a second TIM (1630, see Fig 16).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY M PAPE whose telephone number is (571)272-2201. The examiner can normally be reached M-F: 9am - 6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash N Gandhi can be reached at 571-272-3740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY PAPE/Primary Examiner, Art Unit 2835
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