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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/15/2026 has been entered.
Acknowledgment
The amendment filed on 06/15/20265 has been entered. The present Office action is made with all the suggested amendments being fully considered. Accordingly, pending in this application are claims 1-2 and 5-18. Claims 11-14 remain as withdrawn. Claims 1, 2 and 5 have been amended and new claim 18 has been added.
Response to Arguments
Applicant's arguments filed 06/15/2026 have been fully considered and have been found persuasive.
Applicant asserts: Regarding claim 5, the Office Action refers to Figs. 3A and 3B of Gu in connection with this subject matter, which describes a "high thermal conductivity substrate" 24 disposed over a heat sink carrier 26. However, even if arguendo these elements could correspond to the claimed thermal interface material and heat sink, respectively, Gu does not further disclose "the active or passive component is directly thermally connected to the heat sink for dissipating heat by the heat sink via the thermal interface material" as would be required to meet the limitations of the claims.
Examiner agrees. The rejection of claims 5-10 over Gu has been withdrawn.
Applicant further asserts “As set forth above, claim 5 as amended requires inter alia that "the active or passive component is directly thermally connected to the heat sink for dissipating heat by the heat sink via the thermal interface material." The Office Action points to substrate 16 as the claimed heat sink. However, nowhere does Starkovich provide any disclosure that substrate 16 is a heat sink or acts as a heat sink and one skilled in the art would consider this element to be a heat sink. In fact, Starkovich clearly refers to heat spreader 18 as being configured for dissipating heat, and not substrate 16. For at least the foregoing reasons, the Section 102 rejections based on Starkovich should be withdrawn”.
Examiner agrees. The rejection of claims 5, 6, 9 over Starkovich has been withdrawn.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-18 of U.S. Patent No. 11,948,858 B2. Although the claims at issue are not identical, they are not patentably distinct from each other, as explained in the previous Office action.
Application 18/623,839
U.S. Patent No. 11,948,858 B2
15. An electronic, optoelectronic, or photonic device having an active component comprising single-crystalline boron arsenide, wherein the single-crystalline boron arsenide has a thermal conductivity of 1400 W/m-K or less at room temperature.
16. An electronic, optoelectronic, or photonic device having a cooling substrate comprising single-crystalline boron arsenide, wherein the single-crystalline boron arsenide has a thermal conductivity of 1400 W/m.Math.K or less at room temperature.
16. (Original) The device of claim 15, wherein the single-crystalline boron arsenide is substantially defect free.
17. The device of claim 16, wherein the single-crystalline boron arsenide is substantially defect free.
17. (Original) The device of claim 15, wherein the single-crystalline boron arsenide has a thermal conductivity of 100 W/m-K or greater at room temperature.
18. The device of claim 16, wherein the single-crystalline boron arsenide has a thermal conductivity of 1000 W/m.Math.K or greater at room temperature.
Allowable Subject Matter
Claims 1-2, 5-10, and 18 are allowed.
Claims 15-17 are allowed, provided they overcome the outstanding double patenting rejections described above.
Regarding claim 1, closest prior art of record, alone or in combination, does not expressly disclose wherein the boron arsenide material has a thermal conductivity of up to 1400 W/m-K at room temperature, and wherein the boron arsenide material is substantially single-crystalline, in combination with other limitations cited in claim 1.
Dependent claim 2 is indicated allowable based on its dependency on claim 1.
Regarding claim 5, closest prior art of record, alone or in combination, does not expressly disclose wherein the active or passive component is directly thermally connected to the heat sink for dissipating heat by the heat sink via the thermal interface material, in combination with other limitations cited in claim 5.
Dependent claims 6-10 are indicated allowable based on its dependency on claim 5.
Regarding Claim 15, Starkovich discloses a device comprising (fig. 1) (C. 2, last paragraph):
an electronic, optoelectronic, or photonic device having an active component comprising single-crystalline boron arsenide 16, 18 (¶0026); wherein the boron arsenide 16, 18 is single-crystalline.
Starkovich, alone or in combination, does not expressly disclose the single-crystalline boron arsenide has a thermal conductivity of 1400 W/m·K or less at room temperature.
Dependent claims 16-17 are indicated allowable based on its dependency on claim 15.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McCann et al. (US 20160049351 A1) discloses in figs. 1-2, a thermal interface material disposed between the active or passive component and the heat sink, wherein the active or passive component is directly thermally connected to the heat sink for dissipating heat by the heat sink via the thermal interface material. However, thermal interface material does not include boron arsenide.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NILUFA RAHIM whose telephone number is (571)272-8926. The examiner can normally be reached M-F 9am-5:30pm EST.
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/NILUFA RAHIM/Primary Examiner, Art Unit 2893
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