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 .
Claims 1-8 are pending.
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 1-8 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. Claim 1 recites “an inorganic filler having a zeta potential of -15mV or less at a pH of 7”; this renders the claim indefinite because the court has held that compositions are indefinite for being defined in terms of properties alone. Ex parte Spacht 165 USPQ 409 (PO BdPatApp 1969); Ex parte Slob 157 USPQ 172 00 bdPatApp 1967); Ex parte Pulvari 157 USPQ 169 (PO BdPatApp). Claims 2-8 are subsumed under the rejection.
Claim Rejections - 35 USC § 102
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 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hassanin et al (Microfabrication of Net Shape Zirconia/Alumina Nanocomposite Micro Parts).
Hassanin et al teaches zirconia and alumina nanocompsite comprising Duramax D-3005 (ammonium polyacrylate dispersant) and 0.4µm zirconia or 0.32µm with zeta potential of about -40 and -60 at pH 7 (which would provide a surface area of about 4m2/g) (Abstract, Experimental, Figure 2).
Hassanin et al teaches the limitations of the instant claims; hence, Hassanin et al anticipates the claims.
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 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 4, 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hassanin et al (Microfabrication of Net Shape Zirconia/Alumina Nanocomposite Micro Parts) as applied to claims 1-3 and 5 above, and in further view of Song et al (US Patent Application 2014/0248504).
Regarding claims 4, 6-8, Hassanin et al discloses the invention substantially as claimed. Hassanin et al teaches the features above. However, Hassanin et al fails to specifically disclose the acrylic based polymer comprising monomer A, B and C and a heat dissipation member sheet comprising the filler, absorbed acrylic dispersant polymer and a resin.
In the same field of endeavor, Song et al teaches a filler including alumina particles and boron nitride particles, an elastomer and a curable resin, wherein the invention provides a resin sheet, cured resin sheet for a heat dissipation device (Abstract). Song et al further teaches the elastomer is adsorbed on the surface of the alumina and boron nitride filler thereby improving dispersability of the particles in the curable resin (Paragraph 29). Song et al further teaches an acrylic elastomer having the following formula:
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201
344
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(which satisfies claimed monomers A, B and C) (Paragraph 85). Song et al further teaches 0.1-10 parts of the elastomer per 100 parts of the alumina particles by mass (Paragraph 106). Song et al further teaches the curable resin is an epoxy (Paragraph 109).
With regard to the acrylic based polymer comprising monomer A, B and C, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the acrylic based polymer comprising monomer A, B and C in Hassanin et al in view of Song et al in order to provide dispersant properties to the alumina filler particles. Simple substitution of one known acrylic dispersant for another acrylic dispersant would only be obvious to the ordinary artisan in order to provide filler particles with improved dispersability.
With regard to a heat dissipation member sheet comprising the filler, absorbed acrylic dispersant polymer and a resin, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a heat dissipation member sheet comprising the filler, absorbed acrylic dispersant polymer and a resin in Hassanin et al in view of Song et al in order to form a heat dissipation sheet and member for semiconductor devices. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 July 22, 2026
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