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
The amendment filed May 7, 2026 has been entered. The amendment to the claims has overcome the rejections under 35 U.S.C. 112 previously set forth in the Non-Final rejection mailed February 9, 2026. Claims 15-36 remain pending in the application.
Claim Objections
Claim 27 is objected to because of the following informalities: the claim recites “A heat spreader laminate as recited in claim 26” and should be “The heat spreader laminate as recited in claim 26”. Appropriate correction is required.
Applicant is advised that should claim 32 be found allowable, claim 33 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 15-36 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.
In claim 15, it is unclear if the word “optionally” at line 7 applies only to step ii, or whether it applies to the entirety of the claim that follows. For examination purposes the claim has been interpreted in its broadest sense, such that all the steps occurring at step ii and after are optional.
Claims 16-36 are rejected due to dependency on claim 15.
Claim 23 recites the limitation "in step iii. the compression" in line 1. The antecedent basis for this limitation is unclear, since the compression step is in claim iv.
Claim 24 recites the limitation "in step iii. the compression" in line 1. The antecedent basis for this limitation is unclear, since the compression step is in claim iv.
Claim 25 recites the limitation "in step iii. the compression" in line 1. The antecedent basis for this limitation is unclear, since the compression step is in claim iv.
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 (i.e., changing from AIA to pre-AIA ) 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 15, 20, 21, 24, 25, 28 and 30-34 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US 2018/0023904 (Kato et al.).
Regarding claim 15, Kato discloses a discloses a method for manufacturing a heat spreader (heat transport structure) (see paragraph 0001), the method comprising the steps of:
Depositing an adhesive on a major surface of at least one graphite layer (see paragraphs 0162-0163, 0278), to obtain at least one graphite layer coated by an adhesive layer, wherein the adhesive layer has a preferred thickness of 1 to 7 μm (see paragraph 0249), which is within the claimed range of 0.5-10 μm, and includes a solvent (see paragraph 0586 where it is state that polyimide precursor is applied in the form of a solution) and the at least one graphite layer has a thickness of 10-200 μm (see paragraph 0225), which is within the claimed range of 10-200 μm.
Regarding claim 20, Kato also discloses that the graphite layer is made of a heat treated graphitizable polymer (see paragraphs 0217-0219).
Regarding claim 21, Kato also discloses that the at least one graphite layer has a preferred thickness from 15 to 100 μm (see paragraph 0225), which is within the claimed range of 15 to 200 μm.
Regarding claim 24, Kato also discloses that the compression is made by a press (pressing machine) (see paragraph 0575); however, this limitation is interpreted as optional, since it is a further limitation to optional step iii. (see rejection under 35 U.S.C. 112(b) above).
Regarding claim 25, Kato also discloses compression at a pressure from 10 or 15 MPA (see Table 4), which is within the claimed pressure range of 10 to 16 MPa; however, this limitation is interpreted as optional, since it is a further limitation to optional step iii. (see rejection under 35 U.S.C. 112(b) above).
Regarding claim 28, Kato also discloses a method for using the heat spreader laminate as recited in claim 16 comprising using the heat spreader laminate in a heat spreader (heat transport structure) (see paragraph 0001).
Regarding claim 30, Kato also discloses compression at a pressure from 10 or 15 MPA (see Table 4), which is within the claimed pressure range of 7 to 20 MPa; however, this limitation is interpreted as optional, since it is a further limitation to optional step iv. (see rejection under 35 U.S.C. 112(b) above).
Regarding claim 31, Kato also discloses compression at a pressure from 10 or 15 MPA (see Table 4), which is within the claimed pressure range of 10 to 16 MPa; however, this limitation is interpreted as optional, since it is a further limitation to optional step iii. (see rejection under 35 U.S.C. 112(b) above).
Regarding claims 32 and 33, Kato also discloses that heating is done at a temperature of 100 degrees C (see paragraph 0579), which is within the claimed range of 50 to 150 degrees C; however, this limitation is interpreted as optional, since it is a further limitation to optional step v. (see rejection under 35 U.S.C. 112(b) above).
Regarding claim 34, Kato also discloses that the at least one graphite layer has an in-plane thermal conductivity of not less than 1000 W.mK-1 (see paragraph 0221), which is within the claimed range of above 590 W.mK-1.
Claim Rejections - 35 USC § 102/103
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 23 and 36 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2018/0023904 (Kato et al.) in view of US 2013/0000811 (Engeldinger et al.).
The reference does not state that the compression is made by a roller or hydraulic press, only that a pressing machine is used (see paragraph 0575). Engeldinger teaches that hydraulic press machines and pressing machines with rollers are known (see paragraph 0102). It would have been obvious to one having ordinary skill in the art before the effective filing date that any known type of pressing machine could be used for the pressing step of Kato, including hydraulic press or roller. Alternatively, this limitation is interpreted as optional, since it is a further limitation to optional step iii. (see rejection under 35 U.S.C. 112(b) above).
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 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0023904 (Kato et al.) in view of US 6,131,651 (Richey, III).
Regarding claim 16 and 17, Kato discloses a method as discussed above. The reference does not state that the deposition step is made by spraying the adhesive or rubbing the adhesive; however, in an analogous field of heat spreading, Richey teaches that it is known to apply adhesives by spraying or painting (rubbing) (see column 3, lines 46-48). It would have been obvious to one having ordinary skill in the art before the effective filing date that to apply the adhesive of Kato using any known application method, including spraying or rubbing.
Claims 18, 29 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0023904 (Kato et al.) in view of “Chemical effects of organo-silanized SiO2 nanofillers on epoxy adhesives” (Heo et al.).
Kato discloses a method as discussed above.
Regarding claims 18, 29 and 35, Kato discloses that the adhesive may be epoxy resin (see paragraphs 0242); however, it is not stated that the adhesive layer comprises organofunctional silanes and functionalized nanoscale SiO2 particles. Heo teaches that providing epoxy resins with organofunctional silanes and functionalized nanoscale SiO2 particles helps improve brittleness and poor mechanical resistance of epoxy resins (see page 184). It would have been obvious to one having ordinary skill in the art before the effective filing date to utilize organofunctional silanes and functionalized nanoscale SiO2 particles in the Kato epoxy resin, in order to improve brittleness and poor mechanical resistance of the Kato epoxy resin.
Claims 19, 22, 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0023904 (Kato et al.).
Regarding claim 19, Kato discloses that the adhesive layer has a thickness in a preferred range of 1 to 7 μm (see paragraph 0248), which overlaps the claimed range of 1 to 5 μm. 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 Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 22, Kato also discloses that the at least one graphite layer has an in-plane thermal conductivity of not less than 1000 W.mK-1 (see paragraph 0221), which overlaps the claimed range of 400 to 2500 W.mK-1. 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 Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 26, Kato also discloses a graphite laminate, manufactured as recited in claim 15, comprising at least two graphite layers, each having a thickness in a preferred range from 15-100 μm (see paragraph 0225), which is within the claimed range of 5-100 μm, and at least one adhesive layer having a preferred thickness of 1 to 7 μm (see paragraph 0249), which overlaps the claimed range of 1 to 5 μm, wherein the at least two graphite layers and the at least on adhesive layer are disposed alternately on top of each other and a top layer and a bottom layer of the graphite laminate are from the at least two graphite layers (see paragraphs 0178-0179). 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 Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 27, Kato also discloses that the at least two graphite layers numbers from not less than 3 (see paragraph 0177), which overlaps the claimed range of two to seven.
Response to Arguments
Applicant's arguments filed May 7, 2026 have been fully considered but they are not persuasive. Applicant argues that the heating step of Kato takes place during the compressing and solvent of the adhesive is removed prior to the heating step, rather than after. While this may be the case, the claims as currently worded do not require this feature. The limitations applicant relies upon appear after the word optionally. The broadest reasonable interpretation of the claim allows for steps ii.-v. to be optional.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 WENDY L BOSS whose telephone number is (571)272-7466. The examiner can normally be reached 8:30-6:30.
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, Katelyn Smith can be reached at 571-270-5545. 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.
/WENDY L BOSS/Examiner, Art Unit 1749
/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
Prosecution Insights