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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: HEAT DISSIPATION MEMBER COMPRISING COPPER-DIAMOND COMPOSITE AND ELECTRONIC DEVICE THEREOF
Claim Rejections - 35 USC § 112
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.
Claims 1-6 are 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 claims 1-2, the limitation “JIS B 0601:2013” is not defined in the claims and therefore would render the claims indefinite. Claims 3-6, which depend from claim 1, are also rejected by virtue of their dependencies.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/859,156 (corresponding US 2025/0261338 A1; hereinafter “Application 156”). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter as claimed in the instant application is obvious variant(s) of the noted claim in Application 156.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, Application 156 teaches a heat dissipation member (a heat dissipation member) comprising: a copper-diamond composite (a copper-diamond composite body) where a plurality of diamond particles (a plurality of diamond particles) are dispersed in a metal matrix containing copper (a metal matrix containing copper); and a metal film (a metal film) that is joined to at least one face of the copper-diamond composite, wherein at a joint interface between the copper-diamond composite and the metal film, a ten-point average height Rz calculated according to JIS B 0601:2013 is 5 μm or more and 100 μm or less (a ten-point average height Rz in a boding surface of the copper-diamond composite body to the metal film is 20 μm) (See Application 156, claim 6, which depends from claim 1). Furthermore, claim 6 of Application 156 additionally teaches that the coper-diamond composite body has a course particle layer and a fine particle layer (Application 156, claim 6). As such, claim 6 of Application 156 has a narrower scope of claim compared to claim 1 of the instant application [underlying for clarity].
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 Cu) that is joined to at least one face of the copper-diamond composite (paragraphs 46-48), wherein at 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 has a roughness including recesses and protrusions).
While Takashima does not explicitly teach a ten-point average height Rz value of 5 μm or more and 100 μm or less, Takashima teaches a maximum depth of recesses at the connecting surface of the substrate body is 40 μm and a maximum height of protrusions at the connecting surface of the substrate body is 40 μm (paragraph 43). Then, it would have been obvious to obtain the ten-point average height Rz by using 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 Rz 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 calculated according to JIS B 0601:2013 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.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Purvis can be reached on (571)272-1236. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL WHALEN/Primary Examiner, Art Unit 2893
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