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 .
DETAILED ACTION
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 1-14 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 pre-AIA the applicant regards as the invention.
Claim 1 is rejected as being vague and indefinite when these claims recite “A heat dissipation material that has insulating properties”, because the recitation cause confusion. The insulating properties generally include thermo-insulation, electrical insulation, ionic insulation or moisture insulation, etc. However, the heat dissipation material generally having high heat conductivity which is not possible having heat insulating properties. In this office action, it is taken that the material has electrical insulation properties. Claims 2-14 are also rejected for depending from claim 1, thus inclusion of its indefinite features.
Claims 1 and 5-7 are rejected as being vague and indefinite when these claims recite "having a ratio of 20% ..., with respect to a total amount of the fillers.”, because the base of the percentage is not clear, it could be either weigh or volume. In this office action, it is taken the “ratio of 20% or more” is based on total volume of the fillers. Claims 2-4 and 8-14 are also rejected for depending from claim 1, thus inclusion of its indefinite features.
Claim 1 is rejected as being vague and indefinite when these claims recite "a filler having a particle size of ...” because the definition of the particle size is not clear. The thermo-conductive fillers used in a heat dissipation composition generally having numerous particles with a relative wide particle size distribution, thus the particle size could be average particle size, or other particle size such as minimum size, maximum size, size depending upon particle size distribution. In this office action, it is taken particle size is average particle size. Claims 2-14 are also rejected for depending from claim 1, thus inclusion of its indefinite features.
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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kurokawa et al (JP 2005343983, of record, ‘983 hereafter).
Regarding claims 1 and 3-10, ‘983 discloses a heat dissipation material comprising a filler having an average particle size in a range of 200 to 1000 microns ([0007], Table 1, Powder E, average particles being 400 microns), which has a ratio of more than 20% by volume with respect to total amount of fillers ([0012]-[0013], Table 2, Comparative Example 3, 55% powder E); and a filler having a particle size of 5 micron and having a ratio of more than 20% by volume ([0017], [0018], Table 2, Comparative Example 3, 45% powder F) or more, with respect to a total amount of the fillers; wherein the fillers are boron nitride agglomerated particle and spherical alumina ([0013], agglomerated particles generally have spheric shape, [0022]), which inherently having thermal conductivity in the range of 1 W/mK to 200 W/mK ([0002]). ‘983 also discloses that the fillers are dispersed in a thermosetting resin including a silicone resin ([0020]-[0021], [0023]), and the content of the filler falling within 20 to 95 vol% as in the present claim 4 (Examples and Comparative Examples), and none of the components in the composition having electric conductivity thus the heat dissipation material of ‘ 983 has electrical insulation properties.
Regarding claims 11-14, ‘983 also discloses that the dissipation material can be used for an electronic device comprising heat generation components such as semiconductor CPU or power modules ([0003], [0006]), which satisfies present claims 11-14.
Claims 3 is rejected under 35 U.S.C. 103 as obvious over Kurokawa et al (JP 2005343983, of record, ‘983 hereafter) in view of Watanabe et al (US 2012/0258310, of record, ‘310 hereafter).
Regarding claim 3, ‘983 teaches all the limitations of claim 1, but ‘983 does not disclose that the thermal conductive fillers are aluminum nitride, however, ‘310 discloses that the spherical aluminum nitride particles having average particle size from 10 to 200 microns ([0033]-[0036]), which provide high packing efficiency, shape and size stability and improved adhesiveness with a resin, can be used to render desired filling ratio in a resin composition and impart highly heat conducting properties ([0033]-[0035], [0091]). In light of these teachings, one of ordinary skill in the art would have been motivated to use the spherical aluminum nitride as taught by ‘310, to modify the heat dissipation material of ‘983, in order to render a heat dissipation material having better heat conducting performance.
Relevant Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Naik et al (US 2019/0092993). Naik discloses a thermally conductive silicone composition comprising a silicone resin, a first filler and a second, filler, wherein the particles sizes of the first filler and the second filler are different (Abstract, [0005]-[0060]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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