DETAILED ACTION
Terminal Disclaimer
The terminal disclaimer filed on 09/10/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/859,156 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 1-3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Takashima et al. (US 2009/0057705 A1; hereinafter “Takashima”).
Regarding claim 1, Takashima teaches a heat dissipation member (a semiconductor element mounting substrate) comprising:
a copper-diamond composite (a substrate body formed of a diamond composite material) where a plurality of diamond particles (a number of diamond particles) are dispersed in a metal matrix containing copper (a bonding material including Cu) (paragraphs 37-38); and
a metal film (a coating layer including at least one type of metal) that is joined to at least one face of the copper-diamond composite (paragraphs 46-48), wherein
a joint interface between the copper-diamond composite and the metal film (paragraph 43, a connecting surface of the substrate body with the coating layer having a roughness including recesses and protrusions).
Takashima does not explicitly teach that “a ten-point average height Rz value is 5 μm or more and 100 μm or less”, However, Takashima teaches a minimum depth of the recesses to be 10 μm and a maximum depth of the recesses to be 40 μm at the connecting surface of the substrate body (i.e., 10 μm to 40 μm); and a minimum height of the protrusions to be 10 μm and a maximum height of protrusions to be 40 μm at the connecting surface of the substrate body (i.e., 10 μm to 40 μm) (paragraph 43). Then, it would have been obvious to one skilled in the art to recognize and to obtain that the ten-point average height/roughness, which is an average of the heights of the five highest peaks/protrusions and the depths of the five deepest valleys/recess, is between 20 μm (by adding the minimum protrusion 10 μm and the minimum recess 10 μm) to 80 μm (by adding the maximum protrusion 40 μm and the maximum recess 40 μm), which is within the claimed value of “5 μm or more and 100 μm or less”, for obtaining the desired surface roughness characteristics. Or, it would have been obvious to one skilled in the art to approximate the ten-point average height/roughness by approximation calculation (0.6-0.9)(the maximum peak/protrusion 40 μm + the maximum valley/recess 40 μm) = 48-72 μm, which is within the claimed value of “5 μm or more and 100 μm or less”, for obtaining the desired surface roughness characteristics.
Regarding claim 2, Takashima teaches wherein at the joint interface between the copper-diamond composite and the metal film, a maximum height Rmax is 180 μm or less (paragraph 43, since the maximum depth of recesses is 40 μm and the maximum height of protrusions is 40 μm, a maximum height/roughness at the connecting surface of the substrate body from the lowest recesses to the highest protrusions is 40 μm + 40 μm = 80 μm).
Regarding claim 3, Takashima teaches wherein a thermal conductivity of the copper-diamond composite is 600 W/mK or higher (paragraph 42, the substrate body having a thermal conductivity of 600 W/mK).
Regarding claim 5, Takashima teaches wherein when a particle size distribution of the diamond particles is measured using an image particle size distribution analyzer (See below), a particle diameter D50 corresponding to a cumulative value of 50% in a volume particle size distribution of particle diameter of the diamond particles is 300 μm or less (paragraph 40, an average particle diameter of the diamond particles is 5-40 μm).
It is noted that the limitation "when a particle size distribution of the diamond particles is measured using an image particle size distribution analyzer” specifies an intended use or field of use, and therefore is treated as non-limiting since it has been held that in device claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claims. In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex Parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claim 6, Takashima teaches an electronic device comprising: the heat dissipation member according to claim 1; and an electronic component (a light emitting element) that is provided over the heat dissipation member (paragraph 36).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Takashima as applied to claim 1 above, and further in view of Morikawa et al. (US 2017/0287810 A1; hereinafter “Morikawa”).
Regarding claim 4, Takashima does not teach a sphericity S50 corresponding to a cumulative value of 50% in a volume particle size distribution of sphericity of the diamond particles is 0.70 or more. Morikawa teaches a heat dissipation member (10), comprising: a copper-diamond composite (20) where a plurality of diamond particles (22 formed of diamond particles) are dispersed in a metal matrix containing copper (21 including Cu), wherein the plurality of diamond particles (22) have perfect sphere shape and would have sphericity of 0.7 or more as a desired shape of the diamond particles (Fig. 1 and paragraphs 67-73). Therefore, it would have been obvious to one of ordinary skill in the art to combine the teaching of Takashima with that of Morikawa in order to provide the diamond particles in a spherical shape as a desired shape for the diamond particles without affecting thermally conductive characteristics of the diamond particles. For the limitation "when a particle size distribution of the diamond particles is measured using an image particle size distribution analyzer”, see the rejection of claim 5 above for reciting an intended use or field of use.
Response to Arguments
Applicant's arguments filed 09/10/2026 have been fully considered but they are not persuasive.
Applicant points to Takashima’s paragraph 43 to argue that the distribution of recesses and/or protrusions is extremely sporadic since the number of recesses/protrusions with a depth/height of 10-40 μm is 50/cm2. Then, Applicant states that “the ten-point mean roughness (Rz) is a parameter calculated based on a profile measured along a straight line with an evaluation length of several millimeters as the average of the vertical distances between the five highest peaks and the five deepest valleys”. This is not found persuasive with reasons as follow:
First, it is noted that the rejected claim 1 only recites the limitation “a ten-point average height Rz is 5 μm or more and 100 μm or less” without further reciting what Applicant additionally stated “the ten-point mean [average] roughness (Rz) is a parameter calculated based on a profile measured along a straight line with an evaluation length of several millimeters as the average of the vertical distances between the five highest peaks and the five deepest valleys”. The features upon which applicant relies as discussed above are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Additionally, it is also noted that the deleted limitation “JIS B 0601:2013” from claim 1 rather utilizes claimed “Rz” as a maximum roughness Rz, not the ten-point average height/roughness.
Second, Takashima’s teaching in paragraph 43 is directed to a depth of recesses having 10 μm to 40 μm and a height of protrusions having 10 μm to 40 μm at the connecting surface of the substrate body and these ranges of the recesses and protrusions from Takashima are only utilized for rejecting the claimed ten-point average height range with additional clarification as set forth above in this Office Action. Furthermore, assuming, arguendo, that that the number of the recesses and/or protrusions is 50/cm2 or less per unit area of the connecting surface in paragraph 43 is used as Applicant argues, paragraph 45 also discloses “it is preferable that the number of recesses and protrusions existing on the connecting surface is 3/cm2 or more, and particularly 10/cm2 to 40/cm2, even within the range”. In other words, for example, Takashima’s teaching above includes 40-50 recesses and/or protrusions that are existing on the connecting surface per cm2 such that there would be at least five recesses and five protrusions within the ranges of 10 μm to 40 μm. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989). Accordingly, the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL B WHALEN whose telephone number is (571)270-3418. The examiner can normally be reached on M-F: 8AM-5PM.
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/DANIEL WHALEN/Primary Examiner, Art Unit 2893
