Prosecution Insights
Last updated: May 29, 2026
Application No. 18/691,045

HEAT-DISSIPATING SHEET AND METHOD FOR MANUFACTURING THE SAME

Non-Final OA §103§112
Filed
Mar 12, 2024
Priority
Sep 15, 2021 — JP 2021-149842 +1 more
Examiner
FLORES JR, DONALD M
Art Unit
1781
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Shin-Etsu Polymer Co. Ltd.
OA Round
1 (Non-Final)
77%
Grant Probability
Favorable
1-2
OA Rounds
3m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 77% — above average
77%
Career Allowance Rate
459 granted / 598 resolved
+11.8% vs TC avg
Strong +28% interview lift
Without
With
+28.3%
Interview Lift
resolved cases with interview
Typical timeline
2y 6m
Avg Prosecution
27 currently pending
Career history
629
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
81.3%
+41.3% vs TC avg
§102
9.1%
-30.9% vs TC avg
§112
8.7%
-31.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 598 resolved cases

Office Action

§103 §112
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 . STATUS OF CLAIMS Claims 1-20 are pending in the application, claims 13-20 are withdrawn from consideration. Election/Restrictions Applicant’s election without traverse of claims 1-12 in the reply filed on 8 April 2026 is acknowledged. (Note: In that no arguments were presented to rebut the restriction requirement, and no indication if the election was with or without traverse in the response dated 8 April 2026. The election has been considered to be without traverse.) Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8 April 2026. Priority Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in this application on 24 February 2026. Claim Objections Claims 2 and 4 are objected to because of the following informalities: With Regards to Claim 2: Claim 2 recites --has at least one hole-- in line 2, which appears to be a typographical error; it is recommended to correct this to read "has the at least one hole". With Regards to Claim 2: Claim 2 recites --surfaces-- in line 5, which appears to be a typographical error; it is recommended to correct this to read "the surfaces". With Regards to Claim 4: Claim 4 recites --wherein the thermally conductive filler has both the end portions, exposed on a surface of the rubbery elastic body, each having a diameter larger than a diameter of a region embedded in the rubbery elastic body-- in lines 2 to 4, which appears to be a typographical error; it is recommended to correct this to read "wherein the thermally conductive filler has both the end portions[[,]] exposed on the surfaces and each of the end portions having a diameter larger than a diameter of a region of said thermally conductive filler embedded in the rubbery elastic body". Appropriate correction is required. 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 2-5 and 9-11 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. With Regards to Claim 2: Instant claim 2 recites --surfaces of the rubbery elastic body-- in line 5. Claim 1, from which claim 2 depends, recites --surfaces of the rubbery elastic body-- in lines 8 to 9. As written, the claim is deemed indefinite because it can have two conflicting interpretations: (1) that said "surfaces" of claim 2 are different from said "surfaces" in claim 1; or (2) that said "surfaces" recited in claim 1 and claim 2 are the same. For the purposes of examination, it is the decision of the examiner that the latter interpretation be applied in view of the disclosure. As such, the limitation of claim 2 will be treated to read "the surfaces of the rubbery elastic body". With Regards to Claim 3: Instant claim 3 recites --at an angle [...] with respect to a surface of the rubbery elastic body--. As written, a person having ordinary skill in the art at the time the invention was made would not be adequately apprised as to the intended scope of the claimed invention (i.e., what "surface" the angle is measured with respect to). As such, the claim is deemed to be indefinite. For the purposes of examination said "surface" will be treated as the surface of the sheet-shaped rubbery elastic body on which a majority of the elongated thermally conductive filler are exposed (see Figure 2). With Regards to Claim 4: Instant claim 4 recites --a surface of the rubbery elastic body-- in lines 2 to 3. Claim 1, from which claim 4 depends, recites --both end portions of the thermally conducive filler are respectively exposed on surfaces of the rubbery elastic body-- in lines 8 to 9. As written, the claim is deemed to be indefinite because it can have three conflicting interpretations: (1) that said "surface" of claim 4 is different from either of the "surfaces" of claim 1; (2) that said "surface" of claim 4 is the same as one or both of the "surfaces" of claim 1; or (3) that both end portions are exposed on the same surface, wherein said "surface" of claim 1 is any surface of the rubbery elastic body. For the purposes of examination, it is the decision of the second interpretation applies. As such, the limitation will be treated to read as "the surfaces With Regards to Claim 5: Instant claim 5 recites --further comprising a silicone rubber, [...], between each rubbery elastic body and the hole or between the hole and another hole-- in lines 2 to 3. Claim 1, from which claim 5 depends, recites --at least one sheet-shaped rubbery elastic body; [...], wherein the rubbery elastic body has at least one hole-- in lines 2 to 6. As written, the claim is rendered indefinite because it can have several conflicting interpretations: (1) that "the hole" is the "at least one hole" of said "rubbery elastic body"; (2) that "the hole" is the "at least one hole" of another "rubbery elastic body"; (3) that said "hole" and said "another hole" are part of the same "rubbery elastic body"; and/or (4) that said "hole" is the "at least one hole" of one of the "at least one sheet-shaped rubbery elastic body" and that said "another hole" is "at least one hole" of a different one of the "at least one sheet-shaped rubbery elastic body". For the purposes of examination, in view of the filed specification (figures 1, 7, and 8), it is the decision of the examiner that both the second and the fourth interpretations apply. (Appropriate correction and clarification are requested by the examiner.) With Regards to Claims 9-11: Instant claim 9 recites the limitation --the hole of each rubbery elastic body-- in line 2. Claim 1, from which claim 9 depends recites --the rubbery elastic body has at least one hole-- in line 6. As written, the claim is rendered indefinite because it can have several conflicting interpretations: (1) that it only pertains to one of the "at least one hole"; (2) that it pertains to any number of the "at least one hole"; or (3) that it pertains to all of the "at least one hole". For the purposes of examination, it is the decision of the examiner that any of the aforementioned interpretations can apply. Claim 10 and 11 which both depend from claim 9 are rejected for the same reasons as recited above. The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. With Regards to Claim 11: Instant claim 11 recites --the hole [...] in plan view does not contain the lubricant--. Claim 9, from which claim 11 depends, recites --the hole of each rubbery elastic body has lubricant-- in line 2. As written, the limitation of claim 11 fails to include the limitation of claim 9 from which it depends (i.e., claim 9 recites "the hole" as containing the lubricant, but claim 11 recites "the hole" as not containing the lubricant). Therefore, claim 11 is deemed to be of improper dependent form. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. 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, 4, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ohta (US 2007/0284366 A1) in view of Tomohiro (JP 2014-205794 A). Regarding Claim 1: Ohta discloses a body possessing a polymer matrix (ref. #12) and a thermally conductive filler (ref. #13), the thermally conductive filler having fibrous fillers (ref. #14) oriented in a certain direction, extending in a certain orientation through, and exposed on opposing surfaces of the body (figures 1A to 1B, and [0037]-[0039] of Ohta). Ohta also discloses that the polymer matrix can be a silicone rubber ([0026]-[0029] of Ohta). Ohta further discloses that the fiber filler can be carbon fiber ([0031] and [0068]-[0070] of Ohta). Specifically, Ohta provides for --a heat-dissipating sheet comprising: at least one sheet-shaped rubbery elastic body; and an elongated thermally conductive filler that has better thermal conductivity than the rubbery elastic body, and is embedded in the rubbery elastic body and obliquely oriented with respect to a thickness direction of the rubbery elastic body, wherein both end portions of the thermally conductive filler are respectively exposed on surfaces of the rubbery elastic body--. (In the instant case, since the thermally conductive filler is to enhance the thermal conduction ([0031] of Ohta), it would have been obvious to a person having ordinary skill in the art at the time the invention was made that the "elongated thermally conductive filler" has a better thermal conductivity that the "rubbery elastic body".) Ohta fails to disclose --the rubbery elastic body has at least one hole oriented parallel to the thickness direction of the rubbery elastic body or oriented obliquely with respect to the thickness direction--. Tomohiro discloses a heat dissipation sheet (ref. #27) provided with through holes (ref. #27A) through which stud bolts pass (figure 7 and [0053] of Tomohiro). It would have been obvious to one of ordinary skill in the art at the time of the invention to have incorporated the through holes of Tomohiro with the heat-dissipating sheet disclosed by Ohta in order to have --the rubbery elastic body has at least one hole oriented parallel to the thickness direction of the rubbery elastic body or oriented obliquely with respect to the thickness direction--. One of ordinary skill in the art would have been motivated to have incorporated the through holes of Tomohiro with the heat-dissipating sheet disclosed by Ohta, from the stand-point of mounting the heat-dissipation sheet in a fastened position (figure 7, [0032], [0051], and [0052] of Tomohiro). Regarding Claim 4: Ohta in view of Tomohiro discloses that the thermally conductive filler has both the end portions, exposed on a surface of the rubbery elastic body, each having a diameter larger than a diameter of a region embedded in the rubbery elastic body (figures 1A to 1B and [0038] of Ohta). Regarding Claim 7: Ohta in view of Tomohiro discloses that each rubbery elastic body is a silicone rubber ([0029] of Ohta). Regarding Claim 12: Ohta in view of Tomohiro discloses that the thermally conductive filler is a carbon fiber ([0031] and [0068]-[0070] of Ohta). Claims 1, 4, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ohta (US 2007/0284366 A1) in view of Kato et al. (JP 2015-092534 A). Regarding Claim 1: Ohta discloses a body possessing a polymer matrix (ref. #12) and a thermally conductive filler (ref. #13), the thermally conductive filler having fibrous fillers (ref. #14) oriented in a certain direction, extending in a certain orientation through, and exposed on opposing surfaces of the body (figures 1A to 1B, and [0037]-[0039] of Ohta). Ohta also discloses that the polymer matrix can be a silicone rubber ([0026]-[0029] of Ohta). Ohta further discloses that the fiber filler can be carbon fiber ([0031] and [0068]-[0070] of Ohta). Specifically, Ohta provides for --a heat-dissipating sheet comprising: at least one sheet-shaped rubbery elastic body; and an elongated thermally conductive filler that has better thermal conductivity than the rubbery elastic body, and is embedded in the rubbery elastic body and obliquely oriented with respect to a thickness direction of the rubbery elastic body, wherein both end portions of the thermally conductive filler are respectively exposed on surfaces of the rubbery elastic body--. (In the instant case, since the thermally conductive filler is to enhance the thermal conduction ([0031] of Ohta), it would have been obvious to a person having ordinary skill in the art at the time the invention was made that the "elongated thermally conductive filler" has a better thermal conductivity that the "rubbery elastic body".) Ohta fails to disclose --the rubbery elastic body has at least one hole oriented parallel to the thickness direction of the rubbery elastic body or oriented obliquely with respect to the thickness direction--. Kato discloses a silicone thermal conductive sheet comprising multiple holes/pores uniformly distributed therein, wherein the holes/pores penetrate in the thickness direction ([0005] and [0025] of Kato). It would have been obvious to one of ordinary skill in the art at the time of the invention to have incorporated the multiple holes of Kato with the heat-dissipating sheet disclosed by Ohta in order to have --the rubbery elastic body has at least one hole oriented parallel to the thickness direction of the rubbery elastic body or oriented obliquely with respect to the thickness direction--. One of ordinary skill in the art would have been motivated to have incorporated the multiple holes of Kato with the heat-dissipating sheet disclosed by Ohta, from the stand-point of providing the thermal conductive sheet with high heat dissipation and reduced reaction force against surface compression ([0006] and [0028] of Kato). Regarding Claim 4: Ohta in view of Kato discloses that the thermally conductive filler has both the end portions, exposed on a surface of the rubbery elastic body, each having a diameter larger than a diameter of a region embedded in the rubbery elastic body (figures 1A to 1B and [0038] of Ohta). Regarding Claim 7: Ohta in view of Kato discloses that each rubbery elastic body is a silicone rubber ([0029] of Ohta). Regarding Claim 12: Ohta in view of Kato discloses that the thermally conductive filler is a carbon fiber ([0031] and [0068]-[0070] of Ohta). Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Ohta (US 2007/0284366 A1) in view of Kato et al. (JP 2015-092534 A) as applied to claim 1 above, and further in view of Maeda et al. (US 2022/0396065 A1). Ohta in view of Kato is relied upon as described above. Regarding Claim 5: Ohta in view of Kato fails to disclose --the heal-dissipating sheet further comprising a silicone rubber, made by curing uncured liquid rubber, between each rubbery elastic body and the hole or between the hole and another hole--. Maeda discloses a heat dissipating sheet comprising multiple thermally conductive insulation layers and adhesive insulation layers arranged between the thermally conductive insulation layers, laminated in a thickness direction of the heat dissipation sheet (figure 1, [0050], and [0059] of Maeda). Maeda also discloses that the adhesive insulation layer can be a thermoplastic elastomer (e.g., silicone rubber) ([0134], [0136], [0139], and [0178]-[0185] of Maeda). (In the instant case, the adhesive insulation layer of Maeda is considered to be in a cured state ([0139] and [0178]-[0185] of Maeda).) It would have been obvious to one of ordinary skill in the art at the time of the invention to have combined the heat-dissipation sheet of Maeda with the heat-dissipating sheet of Ohta in view of Kato in order to have -the heal-dissipating sheet further comprising a silicone rubber, made by curing uncured liquid rubber, between each rubbery elastic body and the hole or between the hole and another hole--. One of ordinary skill in the art would have been motivated to have combined the heat-dissipation sheet of Maeda with the heat-dissipating sheet of Ohta in view of Kato, from the stand-point of having a heat-dissipating sheet with excellent thermal conductivity in the thickness direction and electrical insulation properties ([0001] and [0010] of Maeda). (In the instant case, since the material of the adhesive insulation layer can be in a liquid form prior to curing ([0134], [0136], [0139], and [0178]-[0185] of Maeda), it would have been obvious to a person having ordinary skill in the art at the time the invention was made, that some of the material would flow to be between the rubbery elastic body and the hole or between the hole and another hole.) With Regards to Claim 5: The limitation --made by curing uncured liquid rubber-- is treated as a product-by-process limitation; wherein only the distinctive structural characteristic imparted to the final structure (i.e., "a [cured] silicone rubber between each rubbery elastic body and the hole or between the hole and another hole") is given weight. See MPEP §2113(I). Regarding Claim 6: Ohta in view of Kato and Maeda discloses that the uncured liquid rubber is a liquid silicone rubber ([0134], [0136], [0139], and [0178]-[0185] of Maeda). Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ohta (US 2007/0284366 A1) in view of Kato et al. (JP 2015-092534 A) as applied to claim 1 above, and further in view of Aramaki (JP 2013-131564 A). Ohta in view of Kato is relied upon as described above. Regarding Claims 8-10: Ohta in view of Kato failed to disclose --at least one of a front side surface and a back side surface of each rubbery elastic body has a coating layer of lubricant-- {instant claim 8}, --the hole of each rubbery elastic body has lubricant-- {instant claim 9} or --at least one of a front side surface and a back side surface of each rubbery elastic body has a coating layer of the lubricant-- {instant claim 10}. Aramaki discloses a thermally conductive sheet, the thermally conductive sheet sandwiched between a heat source and a heat dissipation member, and that the thermally conductive sheet has a heat-dissipating grease (which is considered equivalent to the claimed "lubricant") applied to at least one surface ([0008] and [0016] of Aramaki). It would have been obvious to one of ordinary skill in the art at the time of the invention to have combined the grease of Aramaki with the heat-dissipating sheet disclosed by Ohta in view of Kato in order to have --at least one of a front side surface and a back side surface of each rubbery elastic body has a coating layer of lubricant-- {instant claim 8}, --the hole of each rubbery elastic body has lubricant-- {instant claim 9} or --at least one of a front side surface and a back side surface of each rubbery elastic body has a coating layer of the lubricant-- {instant claim 10}. One of ordinary skill in the art would have been motivated to combined the grease of Aramaki with the heat-dissipating sheet disclosed by Ohta in view of Kata, from the stand-point of accommodating irregularities on the surface of the thermal conductive sheet, so as to improve heat dissipation performance in the low-load regions, and to suppress displacement of the heat-conductive sheet ([0016] of Aramaki). (Ohta in view of Kato and Aramaki does not explicitly disclose that the hole has the lubricant. However, in that Aramaki discloses that the thermally conductive sheet, the heat source, and the heat dissipation member are crimped together under pressure ([0008] of Aramaki). It would have been obvious to a person having ordinary skill in the art at the time the invention was made that some portion of the grease would become disposed in the hole of the heat-dissipating sheet.) Claims 1, 3, 4, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Usui et al. (US 2013/0136895 A1) in view of Tomohiro (JP 2014-205794 A). Regarding Claim 1: Usui discloses a thermally conductive sheet comprising a polymer, an anisotropic thermally conductive filler, and a filler, wherein the thermally conductive sheet is cut from an extrusion in which the anisotropic thermally conductive fillers are oriented in the thickness direction (figures 1 to 3, 9A to 9B, 17, [0012]-[0015], and [0048] of Usui). Usui also discloses that the sheets can be cut in a manner to have the thermally conductive filler oriented at an angle with respect to the thickness direction of the sheet ([0049] of Usui). Usui further discloses that the thermally conductive fillers can have an average fiber length of 100 µm or more, preferably 120 µm to 6 mm, and that the sheets can be cut to have a thickness of 0.1 mm or more ([0063] and [0097] of Usui). It is also disclosed by Usui that the polymer can be a thermoplastic or thermosetting polymer (e.g., silicone resin, silicone rubber resin), and that the thermally conductive fillers can be carbon fibers ([0051]-[0058] and [0060] of Usui). Specifically, Usui provides for --a heat-dissipating sheet comprising: at least one sheet-shaped rubbery elastic body; and an elongated thermally conductive filler that has better thermal conductivity than the rubbery elastic body, and is embedded in the rubbery elastic body and obliquely oriented with respect to a thickness direction of the rubbery elastic body, wherein both end portions of the thermally conductive filler are respectively exposed on surfaces of the rubbery elastic body--. (In the instant case, since the thermally conductive filler is oriented in the thickness direction to improve the thermal conductivity ([0005] of Usui), it would have been obvious to a person having ordinary skill in the art at the time the invention was made that the "elongated thermally conductive filler" have a better thermal conductivity than the "sheet-shaped rubbery elastic body".) Usui fails to disclose --the rubbery elastic body has at least one hole oriented parallel to the thickness direction of the rubbery elastic body or oriented obliquely with respect to the thickness direction--. Tomohiro discloses a heat dissipation sheet (ref. #27) provided with through holes (ref. #27A) through which stud bolts pass (figure 7 and [0053] of Tomohiro). It would have been obvious to one of ordinary skill in the art at the time of the invention to have incorporated the through holes of Tomohiro with the heat-dissipating sheet disclosed by Usui in order to have --the rubbery elastic body has at least one hole oriented parallel to the thickness direction of the rubbery elastic body or oriented obliquely with respect to the thickness direction--. One of ordinary skill in the art would have been motivated to have incorporated the through holes of Tomohiro with the heat-dissipating sheet disclosed by Usui, from the stand-point of mounting the heat-dissipation sheet in a fastened position (figure 7, [0032], [0051], and [0052] of Tomohiro). Regarding Claim 3: Usui in view of Tomohiro discloses that the thermally conductive filler is embedded in the rubbery elastic body and oriented at an angle of 85° to 45° with respect to the surface of the rubbery elastic body (figures 1 to 3, 9A to 9B, 17, [0015], and [0090] of Usui); which anticipates the claimed range. See MPEP §2131.03(I). Regarding Claim 4: Usui in view of Tomohiro discloses that the thermally conductive filler has both the end portions, exposed on a surface of the rubbery elastic body, each having a diameter larger than a diameter of a region embedded in the rubbery elastic body (figures 1 to 3, 9A to 9B, 17, [0015], and [0090] of Usui). (In the instant case, because the thermally conductive fillers are cut at an angle with respect to the length direction of each filler, they would posses an elliptical shape having a long diameter that is larger than the circular cross-sectional diameter of the portion embedded in rubber elastic body.) Regarding Claim 7: Usui in view of Tomohiro discloses that each rubbery elastic body is a silicone rubber ([0051]-[0058] of Usui). Regarding Claim 12: Usui in view of Tomohiro discloses that the thermally conductive filler is a carbon fiber ([0060] of Usui). Claims 1-4, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Usui et al. (US 2013/0136895 A1) in view of Kato et al. (JP 2015-092534 A). Regarding Claim 1: Usui discloses a thermally conductive sheet comprising a polymer, an anisotropic thermally conductive filler, and a filler, wherein the thermally conductive sheet is cut from an extrusion in which the anisotropic thermally conductive fillers are oriented in the thickness direction (figures 1 to 3, 9A to 9B, 17, [0012]-[0015], and [0048] of Usui). Usui also discloses that the sheets can be cut in a manner to have the thermally conductive filler oriented at an angle with respect to the thickness direction of the sheet ([0049] of Usui). Usui further discloses that the thermally conductive fillers can have an average fiber length of 100 µm or more, preferably 120 µm to 6 mm, and that the sheets can be cut to have a thickness of 0.1 mm or more ([0063] and [0097] of Usui). It is also disclosed by Usui that the polymer can be a thermoplastic or thermosetting polymer (e.g., silicone resin, silicone rubber resin), and that the thermally conductive fillers can be carbon fibers ([0051]-[0058] and [0060] of Usui). Specifically, Usui provides for --a heat-dissipating sheet comprising: at least one sheet-shaped rubbery elastic body; and an elongated thermally conductive filler that has better thermal conductivity than the rubbery elastic body, and is embedded in the rubbery elastic body and obliquely oriented with respect to a thickness direction of the rubbery elastic body, wherein both end portions of the thermally conductive filler are respectively exposed on surfaces of the rubbery elastic body--. (In the instant case, since the thermally conductive filler is oriented in the thickness direction to improve the thermal conductivity ([0005] of Usui), it would have been obvious to a person having ordinary skill in the art at the time the invention was made that the "elongated thermally conductive filler" have a better thermal conductivity than the "sheet-shaped rubbery elastic body".) Usui fails to disclose --the rubbery elastic body has at least one hole oriented parallel to the thickness direction of the rubbery elastic body or oriented obliquely with respect to the thickness direction--. Kato discloses a silicone thermal conductive sheet comprising multiple holes/pores uniformly distributed therein, wherein the holes/pores penetrate in the thickness direction ([0005] and [0025] of Kato). It would have been obvious to one of ordinary skill in the art at the time of the invention to have incorporated the multiple holes of Kato with the heat-dissipating sheet disclosed by Usui in order to have --the rubbery elastic body has at least one hole oriented parallel to the thickness direction of the rubbery elastic body or oriented obliquely with respect to the thickness direction--. One of ordinary skill in the art would have been motivated to have incorporated the multiple holes of Kato with the heat-dissipating sheet disclosed by Usui, from the stand-point of providing the thermal conductive sheet with high heat dissipation and reduced reaction force against surface compression ([0006] and [0028] of Kato). Regarding Claim 2: Usui in view of Kato discloses that the rubbery elastic body has at least one hole oriented obliquely with respect to the thickness direction of the rubbery elastic body, and both the end portions of the thermally conductive filler are respectively exposed on surface of the rubbery elastic body ([0024]-[0025] of Kato; figure 1, 3, 9A to 9B, 17, [0015] and [0090] of Usui). (In the instant case, forming of the holes of Kato before the cutting of the sheets of Usui, would result in the hole having an oblique angle with respect to the thickness direction.) Regarding Claim 3: Usui in view of Kato discloses that the thermally conductive filler is embedded in the rubbery elastic body and oriented at an angle of 85° to 45° with respect to the surface of the rubbery elastic body (figures 1 to 3, 9A to 9B, 17, [0015], and [0090] of Usui); which anticipates the claimed range. See MPEP §2131.03(I). Regarding Claim 4: Usui in view of Kato discloses that the thermally conductive filler has both the end portions, exposed on a surface of the rubbery elastic body, each having a diameter larger than a diameter of a region embedded in the rubbery elastic body (figures 1 to 3, 9A to 9B, 17, [0015], and [0090] of Usui). (In the instant case, because the thermally conductive fillers are cut at an angle with respect to the length direction of each filler, they would posses an elliptical shape having a long diameter that is larger than the circular cross-sectional diameter of the portion embedded in rubber elastic body.) Regarding Claim 7: Usui in view of Kato discloses that each rubbery elastic body is a silicone rubber ([0051]-[0058] of Usui). Regarding Claim 12: Usui in view of Kato discloses that the thermally conductive filler is a carbon fiber ([0060] of Usui). Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Usui et al. (US 2013/0136895 A1) in view of Kato et al. (JP 2015-092534 A) as applied to claim 1 above, and further in view of Maeda et al. (US 2022/0396065 A1). Usui in view of Kato is relied upon as described above. Regarding Claim 5: Usui in view of Kato fails to disclose --the heal-dissipating sheet further comprising a silicone rubber, made by curing uncured liquid rubber, between each rubbery elastic body and the hole or between the hole and another hole--. Maeda discloses a heat dissipating sheet comprising multiple thermally conductive insulation layers and adhesive insulation layers arranged between the thermally conductive insulation layers, laminated in a thickness direction of the heat dissipation sheet (figure 1, [0050], and [0059] of Maeda). Maeda also discloses that the adhesive insulation layer can be a thermoplastic elastomer (e.g., silicone rubber) ([0134], [0136], [0139], and [0178]-[0185] of Maeda). (In the instant case, the adhesive insulation layer of Maeda is considered to be in a cured state ([0139] and [0178]-[0185] of Maeda).) It would have been obvious to one of ordinary skill in the art at the time of the invention to have combined the heat-dissipation sheet of Maeda with the heat-dissipating sheet of Usui in view of Kato in order to have -the heal-dissipating sheet further comprising a silicone rubber, made by curing uncured liquid rubber, between each rubbery elastic body and the hole or between the hole and another hole--. One of ordinary skill in the art would have been motivated to have combined the heat-dissipation sheet of Maeda with the heat-dissipating sheet of Usui in view of Kato, from the stand-point of having a heat-dissipating sheet with excellent thermal conductivity in the thickness direction and electrical insulation properties ([0001] and [0010] of Maeda). (In the instant case, since the material of the adhesive insulation layer can be in a liquid form prior to curing ([0134], [0136], [0139], and [0178]-[0185] of Maeda), it would have been obvious to a person having ordinary skill in the art at the time the invention was made, that some of the material would flow to be between the rubbery elastic body and the hole or between the hole and another hole.) With Regards to Claim 5: The limitation --made by curing uncured liquid rubber-- is treated as a product-by-process limitation; wherein only the distinctive structural characteristic imparted to the final structure (i.e., "a [cured] silicone rubber between each rubbery elastic body and the hole or between the hole and another hole") is given weight. See MPEP §2113(I). Regarding Claim 6: Usui in view of Kato and Maeda discloses that the uncured liquid rubber is a liquid silicone rubber ([0134], [0136], [0139], and [0178]-[0185] of Maeda). Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Usui et al. (US 2013/0136895 A1) in view of Kato et al. (JP 2015-092534 A) as applied to claim 1 above, and further in view of Aramaki (JP 2013-131564 A). Usui in view of Kato is relied upon as described above. Regarding Claims 8-10: Usui in view of Kato failed to disclose --at least one of a front side surface and a back side surface of each rubbery elastic body has a coating layer of lubricant-- {instant claim 8}, --the hole of each rubbery elastic body has lubricant-- {instant claim 9} or --at least one of a front side surface and a back side surface of each rubbery elastic body has a coating layer of the lubricant-- {instant claim 10}. Aramaki discloses a thermally conductive sheet, the thermally conductive sheet sandwiched between a heat source and a heat dissipation member, and that the thermally conductive sheet has a heat-dissipating grease (which is considered equivalent to the claimed "lubricant") applied to at least one surface ([0008] and [0016] of Aramaki). It would have been obvious to one of ordinary skill in the art at the time of the invention to have combined the grease of Aramaki with the heat-dissipating sheet disclosed by Usui in view of Kato in order to have --at least one of a front side surface and a back side surface of each rubbery elastic body has a coating layer of lubricant-- {instant claim 8}, --the hole of each rubbery elastic body has lubricant-- {instant claim 9} or --at least one of a front side surface and a back side surface of each rubbery elastic body has a coating layer of the lubricant-- {instant claim 10}. One of ordinary skill in the art would have been motivated to combined the grease of Aramaki with the heat-dissipating sheet disclosed by Usui in view of Kato, from the stand-point of accommodating irregularities on the surface of the thermal conductive sheet, so as to improve heat dissipation performance in the low-load regions, and to suppress displacement of the heat-conductive sheet ([0016] of Aramaki). (Usui in view of Kato and Aramaki does not explicitly disclose that the hole has the lubricant. However, in that Aramaki discloses that the thermally conductive sheet, the heat source, and the heat dissipation member are crimped together under pressure ([0008] of Aramaki). It would have been obvious to a person having ordinary skill in the art at the time the invention was made that some portion of the grease would become disposed in the hole of the heat-dissipating sheet.) Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Donald M. Flores, Jr. whose telephone number is (571) 270-1466. The examiner can normally be reached 7:30 to 17:00 M-F; Alternate Fridays off. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571) 270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /DONALD M FLORES JR/ Donald M. Flores, Jr.Examiner, Art Unit 1781
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Prosecution Timeline

Mar 12, 2024
Application Filed
May 12, 2026
Non-Final Rejection mailed — §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
77%
Grant Probability
99%
With Interview (+28.3%)
2y 6m (~3m remaining)
Median Time to Grant
Low
PTA Risk
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