HEAT DISSIPATION MEMBER

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 . Response to Amendment Claim 3 has been cancelled; claim 1 has been amended; and claims 1-2 and 4-13 are currently pending. Priority Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d). 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 1-2, and 4-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda et al. (US 2010/0206537 A1, hereinafter “Ikeda”) in view of GOTO et al. (US 2022/0104400 A1, hereinafter “GOTO”) In regards to claim 1, Ikeda discloses (See, for example, Fig. 1) a heat dissipation member (11) comprising a flat metal-silicon carbide composite containing aluminum (See, for example, Par [0046]), wherein a thickness of the heat dissipation member is equal to or less than 4 mm (0.5mm through 6mm, See Abstract), and the heat dissipation member is used as a heat dissipation member for automobile mount (See, for example, Par [0001]). Ikeda fails to explicitly disclose that wherein an arithmetic mean roughness Ra in a main surface is equal to or more than 0.1 μm and equal to or less than 2.0 μm. GOTO teaches plate-shaped heat dissipation member comprising a metal-silicon carbide composite containing aluminum or magnesium for use in power modules of electric vehicles or electric rail ways (See, for example, Pars [0002], [0019]-[0021]). GOTO also teaches controlling the surface roughness of the main surfaces of the heat dissipation member to improve joinability to heat dissipation fin and to a power element (See, Par [0075]-[0079]). Specifically, GOTO teaches measuring the average length RSm of roughness curve elements of the main surfaces “using a device SJ-310 (manufactured by Mitutoyo Corporation) according to ISO 4287-1997” (See, Par [0182]-[0183]), and discloses the relationship between surface texture parameters and bonding performance such that “by appropriately designing RSm, micro gaps between the heat dissipation member and the heat dissipation fin can be reduced and the joinability can be further improved (See, Par [0077]). Since the arithmetic mean roughness Ra is measured under the same ISO 4287-1997 standard as RSm and is the most fundamental surface texture parameter governing wettability of solder/brazing material and adhesion to mating components, one of ordinary skill in the art would have recognized Ra as a result-effective variable to be optimized alongside RSm to achieve the bonding-improvement effect GOTO explicitly describes (See, for example, Pars [0075], [0079], [0148], [0197]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the heat dissipation of Ikeda with an arithmetic mean roughness Ra in a main surface within the claimed range of 0.1 μm to 2.0 μm, as inferred from GOTO, in order to reduce micro gaps between the heat dissipation member and the mating heaty dissipation fin/power element to improve joinability and heat dissipation performance. Furthermore, where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of surface roughness involves only routine skill in the art. In re Aller, 105 USPQ 233. The selection of a Ra value within 0.1-2.0 µm represents a routine optimization of a result-effective variable. In regards to claim 2, Ikeda discloses (See, for example, Fig. 1) that wherein when seen from a direction perpendicular to a main surface, vertical and horizontal lengths are equal to or less than 200 mm × equal to or less than 150 mm (“a size of 120 mm X 120 mm X 3.1 mm”, See for example, Pars [0096], and [0097]). In regards to claim 4, Ikeda discloses all limitations of claim 1 above except that wherein an average length Rsm of roughness curve elements in a main surface is equal to or more than 50 μm and equal to or less than 400 μm. GOTO discloses for example, Fig. 2A) an average length Rsm of roughness curve elements in a main surface is equal to or more than 50 μm and equal to or less than 400 μm ( “…it is more preferable that the average length RSm is designed to be 70 μm or more and 160 μm or less”, See, Par [0076]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the main surface of Ikeda’s heat dissipation member with an average Rsm of roughness curve elements within the range of 50 μm to 400 μm because this would reduce micro gaps at the bonding interface and thereby improve joinability and heat dissipation performance. In regards to claim 5, Ikeda discloses all limitations of claim 1 above except that a flatness in a main surface is equal to or more than 5 μm and equal to or less than 700 μm. GOTO discloses that a flatness in a main surface is equal to or more than 5 μm and equal to or less than 700 μm (“The value of f1 itself is preferably 100 μm or more and 700 μm or less and more preferably 200 μm or more and 600 μm or less.” See, Par [0057]; and “The value of f2 itself is preferably 300 μm or less, more preferably 250 μm or less, still more preferably 200 μm or less, and still more preferably 100 μm or less. The lower limit value of f2 may be, for example, 0. In addition, in another example, the lower limit value f2 may be 50 μm or more.”, See, Par [0058]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the main surface of Ikeda’s heat dissipation member with a flatness with I the range of 5 μm to 700 μm because would prevent gap formation at the bonding interface, ensure adequate solder/brazing wettability, and thereby preserve heat transference between the heat dissipation member and the mating component. In regards to claim 6, Ikeda discloses all limitations of claim 1 above except that an amount of warpage is equal to or more than 5 μm and equal to or less than 700 μm. GOTO teaches (See, for example, Figs. 2) an amount of warpage is equal to or more than 5 μm and equal to or less than 700 μm (See, the values of h1 (ranges from 166 to 451 μm) and h2 (ranges from 120 to 245 μm) in Table 1, and all of which lie within the claim ed ranges of 5 μm to 700 μm). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the heat dissipation member of Ikeda with an amount of warpage with in the range of 5 μm to 700 μm because this would help achieve “appropriately flat” joining under screw fixation and improves adhesion to the mating heat dissipation fin without applying excessive fastening force that could cause cracking. In regards to claims 7 and 10, Ikeda discloses (See, for example, Fig. 1 and 4) that a plating layer (See, “nickel plated”, Par [0043], [0064]) that is formed on a main surface side of the heat dissipation member (11). In regards to claim 8, Ikeda discloses all limitations of claim 1 above except that an arithmetic mean roughness Ra in a surface of the plating layer is equal to or more than 0.1 μm and equal to or less than 2.0 μm. However, GOTO discloses that the heat dissipation member may include a Ni-containing plating layer on the outermost surface to “improve wettability of the solder” used to bond the heat dissipation member to a power element (See, Pars [0067] and [0068]), and that “the value of the flatness of the outermost surface of the heat dissipation member is adopted” (See, for example, Pars [0071]-[0073]) for purposes of characterizing the joining surface. Furthermore, GOTO teaches that the routine measurement of the surface-texture parameters of the outermost surface using ISO 4287-1997 (See, Pars [0182]-[0183]), and that appropriate surface-texture design at the joining surface reduces micro gaps and improves joinability (See, Par [0077]). As the plating layer constitutes the outermost surface that contacts the solder and the mating component, one of ordinary skill in the art would have recognized the arithmetic mean roughness Ra of the plating-layer surface as the operative surface property governing solder wettability and bond strength. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Ikeda by GOTO by providing a plating layer surface with an arithmetic mean roughness Ra within the range of 0.1 μm to 2.0 μm because this would improve solder wettability and reduce micro gaps at the plating-layer/component interface, thereby ensuring bond strength and heat transfer between the heat dissipation member and the connected power element. In regards to claim 9, Ikeda as modified above discloses all limitations of claim 7 except that an average length Rsm of roughness curve elements in a surface of the plating layer is equal to or more than 50 μm and equal to or less than 400 μm. However, GOTO teaches “…when the outermost surface of the heat dissipation member 1 is the surface metal layer or the plating layer, the flatness of the surface of the surface metal layer or the plating layer as the outermost surface can be measured to obtain the value of f.sub.1 or f.sub.2.” (See, Par [0073]), establishing the relevant surface properties (flatness, and by similar reason RSm) are evaluated at the outermost surface, including the plating layer. Furthermore, GOTO teaches the preferred RSm range of “50 μm or more and 250 μm or less” for the main surface to be joined, and “50 μm or more and 200 μm or less” for the main surface to be connected to the power element (See, Par [0076], [0078]), with the same motivation, minimization of micro gaps and improvement of joinability/connectivity (See, Pars [0077] and [0079]). These ranges lie entirely within the claim ed range of 50-400 μm. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Ikeda by GOTO with an average length RSm of roughness curve elements in a surface of the plating layer within the range of 50 μm to 400 μm because this would reduce micro gaps at he plating-layer interface with the mating component. Improve joinability with the solder and connected components, and thereby improve overall heat dissipation performance. In regards to claim 11, Ikeda discloses (See, for example, Figs. 1 and 4) a metal layer (12) that is formed on a main surface of the heat dissipation member (11) and contains aluminum (See, for example, Par [0042]). In regards to claim 12, Ikeda discloses (See, for example, Fig. 1) wherein an average thermal expansion coefficient of the heat dissipation member at 25° C. to 150° C. is equal to or more than 4 ppm/K and equal to or less than 12 ppm/K (3x10-6/K and less than or equal to 16x10-6/K, See for example, Par [0021])). In regards to claim 13, Ikeda discloses (See, for example, Fig. 1) a thermal conductivity of the heat dissipation member in a plate thickness direction at 25° C. is equal to or more than 150 W/m.K and equal to or less than 300 W/m.K (“…a heat conductivity of the plate-like member is greater than or equal to 150 W/mK and it is more preferable that a heat conductivity of the plate-like member is greater than or equal to 180 W/mK.”, See, for example, Par [0045]). Response to Arguments Applicant's arguments filed on 7/21/2026 have been fully considered but they are not persuasive. Applicant makes the following arguments: Rejection under 35 U.S.C. 102(a)(1) over Ikeda Argument A (See Page 5) “However, as discussed, Applicant amended pending claim 1, and claims 2, 7, 10, 11, 12, and 13 are dependent, directly or ultimately, upon amended claim 1. The claim amendment has rendered the rejection moot. As admitted by the Office Action (under the obviousness rejection of claim 3), Ikeda fails to disclose that an arithmetic mean roughness Ra in a main surface is equal to or more than 0.1 pm and equal to or less than 2.0 pm. Applicant has amended claim 1 to recite the above limitation. Claims 2, 7, and 10-13 are dependent upon amended claim 1, directly or ultimately.” Applicant’s argument is persuasive to the extent that amended claim 1 now includes the Ra limitation of canceled claim 3, Which Ikeda does not explicitly discloses. However, A new ground of rejection is made under 35 U.S.C. 103 over Ikeda in view of GOTO, as set forth above. This new ground was necessitated by Applicant’s amendment. II. Rejection under 35 U.S.C. 103 over Ikeda in view of GOTO Argument B (Remarks, p. 6): "Ikeda and GOTO do not disclose or suggest a combination of the features of "a thickness of the heat dissipation member is equal to or less than 3 mm" and "an arithmetic mean roughness Ra in a main surface is equal to or more than 0.1 μm and equal to or less than 2.0 μm" as recited in the present claims. Therefore, the presently claimed invention is distinctly different from the combined disclosures of Ikeda and GOTO in whether or not they possess the combination of the above features." This is not persuasive because one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection does not rely on either reference alone for both limitations: Ikeda teaches a thickness of the heat dissipation member of (“A thickness of the plate-like member (11, 12) is 0.5 mm through 6 mm”, See Abstract). This range overlaps the claimed range of equal to or less than 3 mm. GOTO teaches controlling the surface roughness of the main surfaces to improve joinability (“By appropriately designing RS.sub.m of the main surface 2A, the joinability to a heat dissipation fin or the like can be further improved,” Par [0075]-[0079]). 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 Peterson, 315 F.3d 1325, 65 USPQ2d 1379 (Fed. Cir. 2003); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); MPEP 2144.05(I). Further, claim 1 recites "a thickness of the heat dissipation member is equal to or less than 3 mm" and "an arithmetic mean roughness Ra in a main surface is equal to or more than 0.1 μm and equal to or less than 2.0 μm" as two separate limitations. The claim recites no functional or numerical interrelationship between them. Each limitation is taught by the applied combination, so the combination of features is met. Argument C (Remarks, p. 6): "Especially, GOTO describes that "the thickness of the heat dissipation member 1 is, for example, 2 mm or more and 6 mm or less and preferably 3 mm or more and 5 mm or less", and the thickness of the heat dissipation member in its Examples is 4.8 mm. That is, GOTO merely describes the preferred numerical range of Rsm under the condition of such a thickness of the heat dissipation member." This is not persuasive because the passage of GOTO quoted by Applicant supports the rejection: GOTO's disclosed thickness of (2 mm or more and 6 mm or less, Par [0044]) overlaps the claimed range of equal to or less than 3 mm. GOTO's preferred range (“preferably 3 mm or more and 5 mm or less”, See Par [0044]) includes 3 mm, which falls within "equal to or less than 3 mm." The 4.8 mm value relied on by Applicant is the adjusted center thickness of the porous silicon carbide preform in Example 1 (See Par [0160]). It is a single working example, not a limitation on GOTO's disclosure. A reference is relevant for all it contains, and disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989); In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); MPEP 2123. Nothing in GOTO conditions its roughness teaching on any particular thickness. GOTO presents the roughness teaching as a separate design viewpoint ("In another viewpoint, by appropriately designing 'the index representing the roughness of the surfaces' of the main surface 2A and the main surface 2B, the performance such as heat dissipation can be further improved", See Par [0075]). In addition, the thickness limitation is independently taught by Ikeda (0.5 mm through 6 mm, See Abstract). Where the claimed range overlaps a range disclosed in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 65 USPQ2d 1379 (Fed. Cir. 2003); MPEP 2144.05(I). Argument D (Remarks, p. 6): "In distinct contrast, the presently claimed invention achieves further improved heat dissipation by adjusting an arithmetic mean roughness Ra in a main surface to be equal to or more than 0.1 μm and equal to or less than 2.0 μm under the condition that a thickness of the heat dissipation member is equal to or less than 3 mm." This is not persuasive because arguments of counsel cannot take the place of evidence in the record. In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974); MPEP 716.01(c). Applicant must show that a claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Any evidence of unexpected results must be commensurate in scope with the claims and must compare the claimed invention with the closest prior art. MPEP 716.02(d)-(e). Applicant has not pointed to evidence establishing the criticality of the 3 mm thickness boundary in combination with the claimed Ra range. Argument E (Remarks, p. 7): "Neither Ikeda nor GOTO describes or suggests the relationship between the combination of features of the presently claimed invention and the advantageous effect of improving heat dissipation. The cited references fail to disclose or suggest the result-effective variable of the presently claimed invention." "Under the law, where the prior art has not recognized the "result-effective" capability of a particular invention parameter, no expectation would exist that optimizing the parameter would successfully yield the desired improvement. In re Antonie, 559 F.2d 618 (CCPA 1977)." "The unsuggested recognition by Antonie of the relationship between the result produced and the particular design parameters was the touchstone of non-obviousness here." "Along the same lines, it would not have been obvious for a person skilled in the art to arrive at the presently claimed invention based on Ikeda and GOTO. Furthermore, a person of ordinary skill in the art could not have predicted the effect associated with the features of the presently claimed invention from the disclosures of Ikeda and GOTO." (Remarks, pp. 7-8) This is not persuasive because First, Antonie is distinguishable. There, the reference gave no reason to consider the claimed ratio at all. Here, GOTO explicitly recognizes that the surface texture of the main surfaces of the heat dissipation member affects micro gaps and joinability to the heat dissipation fin and power element, and thus heat transfer (See, Par [0075]-[0079]; "by appropriately designing RSm, micro gaps between the heat dissipation member and the heat dissipation fin can be reduced and the joinability can be further improved", Par [0077]). The surface roughness of the joining surface is therefore recognized in the art as affecting the result. Second, after KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), a recognized result-effective variable is one, but not the only, motivation to optimize a parameter. MPEP 2144.05(II)(B); In re Applied Materials, Inc., 692 F.3d 1289, 103 USPQ2d 1817 (Fed. Cir. 2012); E.I. du Pont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 128 USPQ2d 1193 (Fed. Cir. 2018). Where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). Third, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior arts suggest the combination to achieve the same advantage or result discovered by Applicant. In re Kemps, 97 F.3d 1427, 40 USPQ2d 1309 (Fed. Cir. 1996); MPEP 2144(IV). In any event, GOTO's stated purpose of improving joinability and reducing micro gaps at the heat-transfer interface is consistent with Applicant's asserted heat-dissipation benefit. Finally, to the extent Applicant relies on an asserted relationship between the thickness and Ra (the "combination of features"), that relationship is not recited in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Moreover, GOTO identifies surface roughness of the joining surface as a variable affecting heat transfer. GOTO explains that when the surface in contact with the heat dissipation fin has many fine uneven portions, a gap forms between the heat dissipation member and the fin and heat transference deteriorates (See Par [0005]). GOTO then teaches designing "the index representing the roughness of the surfaces" of the main surfaces to further improve heat dissipation (See Par [0075]-[0079]). GOTO also teaches that this roughness is adjusted by well-known polishing or blasting treatments (See Par [0148]; blasting with alumina abrasive grains, Example 1, Par [0171]). The surface roughness of the main surface is therefore a known result-effective variable, and this case is unlike Antonie. Argument F (Remarks, p. 8): "Additionally, the Office Action mentions that GOTO describes a preferred numerical range of Rsm. However, GOTO neither describes nor suggests Ra of the presently claimed invention. Since Ra is a parameter indicating the mean height of surface irregularities and Rsm is a parameter indicating the mean spacing of surface irregularities, they are fundamentally different parameters from each other." "Therefore, it would not have been obvious for a person skilled in the art to conceive of Ra merely because GOTO contains a description regarding Rsm. Much less, it would not have been obvious to adjust Ra to the specific range of "equal to or more than 0.1 μm and equal to or less than 2.0 μm."" The examiner acknowledges that Ra (a height parameter) and RSm (a spacing parameter) are distinct surface texture parameters. However, the rejection does not treat RSm as equivalent to Ra, and GOTO's teaching is not limited to RSm. GOTO addresses the height of surface irregularities directly. It teaches that "many fine uneven portions" on the surface in contact with the heat dissipation fin form a gap and deteriorate heat transference (See Par [0005]). The amplitude of such fine unevenness is precisely what the arithmetic mean roughness Ra quantifies. GOTO further teaches, generically, that "the index representing the roughness of the surfaces" of the main surfaces should be appropriately designed to improve heat dissipation. RSm is offered only as an example of such an index ("For example, it is preferable that an average length RSm of roughness curve elements of the main surface ...", See Par [0075]-[0076]). GOTO also teaches measuring roughness of the main surfaces according to ISO 4287-1997 (See Par [0182]-[0183]), the same standard that defines Ra, and adjusting roughness by well-known polishing or blasting (See Par [0148]). Therefore, one of ordinary skill in the art, seeking to eliminate the gap-forming fine unevenness and micro gaps identified by GOTO, would therefore have been motivated to control the height of the surface irregularities of the main surface. Ra is the most commonly specified ISO 4287 index of that height. Selecting a workable Ra within 0.1 μm to 2.0 μm would have been routine optimization. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955); In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); MPEP 2144.05(II)(A). 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. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERMIAS T WOLDEGEORGIS whose telephone number is (571)270-5350. The examiner can normally be reached on Monday-Friday 8 am - 5 pm E.S.T.. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Britt Hanley can be reached on 571-270-3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ERMIAS T WOLDEGEORGIS/Primary Examiner, Art Unit 2893