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 .
Response to Arguments
Applicant's arguments filed 10/17/2025 have been fully considered but they are not persuasive.
Acknowledgment
The amendment filed on 10/17/2025 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 5-17. Claims 11-14 remain as withdrawn. Claims 1-2 and 2-10, 15-17 have been examined on the merits in this Office action.
Response to Arguments
Applicant's arguments filed 11/11/2025 have been fully considered but they are not persuasive.
Applicant asserts: Regarding claim 1, the present Applicant has successfully produced "boron arsenide" single crystals for the first time, with a wholly distinct "boron arsenide" characterized by a thermal conductivity up to 1400 W/mK. In summary, the "boron arsenide" material as claimed is fundamentally distinct from Gu's disclosure. Nowhere does Gu provide evidence or disclosure of any existing boron arsenide with a thermal conductivity up to 1400 W/mK.
Examiner respectfully disagrees.
Claim 1, in its current form does not claim "boron arsenide" single crystals, as being argued upon. Furthermore, Gu does disclose the high thermal conductivity substrate 24 has a thermal conductivity greater than 400 W/mK (¶26). Thus, Gu discloses an overlapping range with the claimed range of up to 1400 W/m·K at room temperature.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, Obviousness of Ranges
Referring to MPEP § 2144.05, “…the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results over the prior art range.” (See also MPEP § 716.02 for a discussion of criticality and unexpected results.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Gu to form the boron arsenide substrate having a thermal conductivity up to 1400 W/m·K at room temperature in order to accommodate the increased heat generation of high performance group III-Nitride semiconductor devices and to enhance the thermal performance of the semiconductor devices without increasing the device size (¶6-7 of Gu).
MPEP section 2145-I:
The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.").
Therefore, the rejection of claim 1 over Gu stand.
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 heat sink and thermal interface material, Gu does not further disclose an active or passive component that is in direct thermal contact with the "high thermal conductivity substrate" 24 as would be required to meet the limitations of the claims.
The Office Action refers to elements "14, 36" as corresponding to the claimed component. However, Gu identifies them as two separate and distinct elements, and so neither Gu nor anyone skilled in the art would consider them in combination to be an "active or passive component" as required by the claims. Element 36 includes a channel layer 32, and could possibly correspond to a component. However, element 36 is not in direct thermal contact with the "high thermal conductivity substrate" 24 as would be required to meet the limitations of the claims. Rather, element 36 is separated from "high thermal conductivity substrate" 24 by buffer layer 20 and transition layer 22.
Examiner respectfully disagrees.
Claim 5 broadly recites an active or passive component and the thermal interface material being in direct thermal contact with the active or passive component. Claim 5 is not specific about what portion of the active or passive component is in direct thermal contact with the thermal interface material.
Examiner has interpreted the active component in figs. 3A-3B of Gu, including a buffer structure 14 and channel structure 36. As can been seen, the thermal interface material 24 is in direct thermal contact with the buffer structure of the active component.
Therefore, the rejection of claim 5 over Gu stand.
Applicant asserts: Regarding claim 1, Starkovich does not teach "wherein the boron arsenide material has a thermal conductivity of up to 1400 W/mK at room temperature."
Examiner agrees. The rejection of claim 1 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 1-2, 5-10 and 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-10, 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.
Claim Rejections - 35 USC § 102
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 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 –
(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.
(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.
Claim(s) 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gu et al. (US 20170133295 A1; hereinafter “Gu”).
In re claim 5, Gu discloses a device comprising (figs. 3A-3B):
an active or passive component 14, 36 (¶0024, 0033);
a heat sink 26 (¶0026); and
a thermal interface material 24 disposed between the active or passive component 14, 36 and the heat sink 26 (¶0026),
the thermal interface material 24 being in direct thermal contact with the active or passive component 14, 36 and including boron arsenide (¶0026).
Claim(s) 5, 6, 9 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Starkovich et al. (US 11488889 B1; hereinafter “Starkovich”)
In re claim 5, Starkovich discloses a device comprising (fig. 1):
an active or passive component 10;
a heat sink 16; and
a thermal interface material 18 disposed between the active or passive component 10 and the heat sink 16,
the thermal interface material 18 being in direct thermal contact with the active or passive component 10 and including boron arsenide (C. 2, last paragraph).
In re claim 6, Starkovich discloses the device of claim 5, wherein the boron arsenide is in the form of particles (C. 2, last paragraph; Layer 18 may be cubic BAs).
In claim 9, Starkovich discloses the device of claim 6 outlined above.
Starkovich further discloses wherein the boron arsenide is crystalline or substantially defect free (C. 2, last paragraph).
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(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gu et al. (US 20170133295 A1; hereinafter “Gu”).
In re Claim 1, Gu discloses a device (figs. 3A-3B) comprising:
a substrate consisting of a boron arsenide material 24 (¶0026) or a component for electronics, photonics, or optoelectronics applications,
wherein boron arsenide material comprises part of an active device for the component or
wherein the boron arsenide material 24 is used as a semiconductor to increase the performance, speed or integration of the component (¶0026, 0003-0007), and
Gu discloses the high thermal conductivity substrate 24 has a thermal conductivity greater than 400 W/mK (¶26). Thus, Gu discloses an overlapping range with the claimed range of up to 1400 W/m·K at room temperature.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, Obviousness of Ranges
Referring to MPEP § 2144.05, “…the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results over the prior art range.” (See also MPEP § 716.02 for a discussion of criticality and unexpected results.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Gu to form the boron arsenide substrate having a thermal conductivity up to 1400 W/m·K at room temperature in order to accommodate the increased heat generation of high performance group III-Nitride semiconductor devices and to enhance the thermal performance of the semiconductor devices without increasing the device size (¶6-7 of Gu).
In re claim 2, Gu discloses the device of claim 1.
Regarding the claim limitation, wherein the boron arsenide material is substantially single-crystalline or low defects: low defects is a relative term and one of ordinary skill in the art would have recognized that the boron arsenide material in Gu has low defects such that it does not impact the performance of the active component formed above it.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Starkovich, as applied to claim 6 above, and further in view of Broido et al. (US 20150362265 A1; hereinafter “Broido”).
In re Claim 8, Starkovich discloses the device of claim 6 outlined above. Starkovich does not expressly disclose wherein the thermal interface material further includes a polymer, and the particles are dispersed in the polymer.
In the same field of endeavor, Broido further discloses a device (fig. 2), wherein the thermal interface material 306 further includes a polymer, and the particles are dispersed in the polymer (¶ 0044, 0057).
It 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 to employ the teachings of Broido to the device of Starkovich to tailor to better match requirements of specific thermal management applications such as the CTE of the heat generating device.
Allowable Subject Matter
Claims 15-17 are allowed, provided they overcome the outstanding double patenting rejections described above.
Claims 7, 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 7, closest prior art of record, alone or in combination, does not expressly disclose the particles of the boron arsenide have sizes in a range of 1 nm to 1000 nm, or in a range of 1 µm to about 1000 µm or larger, in combination with other limitations of the preceding claims 5 and 6.
Dependent claim 10 is indicated allowable based on its dependency on claim 7.
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
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yara J. Green can be reached at (571) 270-3035. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NILUFA RAHIM/Primary Examiner, Art Unit 2893