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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Species 1 from Species Group 1, and Species 2 from Species Group 2, in the reply filed on 6/15/2026, is acknowledged. Claims 4, 12 and 13 are withdrawn from further consideration as being drawn to a nonelected invention and/or species.
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 1-3 and 5-11 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.
Claim 1 requires a weight ratio of the AlN whickers in the range of 3.0 wt% or more and 65.0 wt% or less. Firstly, it is unclear if the claim is reciting a ratio or a weight percentage. Secondly, it is unclear what the percentage is based on. For example, it is unclear if the claimed weight percentage is based on the total combined weight of the AlN and the resin or if the claimed weight percentage is based on the total weight of the resin molded body. Same applies to the ratio/weight percentages in claim 2.
Claim Rejections - 35 USC § 102/103
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.
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 1-3 and 6-11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by USPAP 2020/0095170 to Ujihara (hereinafter referred to as Ujihara) or, in the alternative, under 35 U.S.C. 103 as obvious over USPAP 2020/0095170 to Ujihara in view of USPAP 2017/0183553 to Ujihara (hereinafter referred to as Ujihara 2).
Claims 1 and 2, Ujihara discloses a resin molded body comprising: at least, AlN whiskers each having a fibrous AlN single-crystal body having a surface and an oxygen-containing layer covering the surface of the fibrous AlN single-crystal body; and a resin material, wherein a weight ratio of the AlN whiskers is in a range of 3.0 wt % or more and 65.0 wt % or less (see entire document including [0050], [0051], [0102], [0110], [0117], [0212], [0237] and [0245]).
Regarding the claimed weight ratio, Ujihara discloses an AlN whiskers weight percentage of 5 wt% and that an increase in the amount of AlN whiskers results in an increase the thermal conductivity of a resin molded body [0212], [0237] and [0245]). Therefore, either Ujihara teaches the claimed weight percentage with sufficient specificity or it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the resin molded body of Ujihara with any suitable amount of AlN whiskers, such as claimed, based on the intended application and the desired/required thermal conductivity. In addition, Ujihara 2 discloses that it is known in the art that an increase in the amount of AlN whiskers results in an increase the thermal conductivity of a resin molded body (see entire document including Figure 78 and [0148]-[0149]). Therefore, either Ujihara teaches the claimed weight percentage with sufficient specificity or it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the resin molded body of Ujihara with any suitable amount of AlN whiskers, such as claimed, based on the intended application and the desired/required thermal conductivity.
Claim 3, the AlN whiskers are mainly composed of a diameter of 1.0 µm or more [0050].
Claims 6-9, Ujihara does not appear to specifically mention the number of contact points at which the AlN whiskers contact each other per unit volume, but Ujihara 2 discloses that it is known in the art that the thermal conductivity level depends on the amount of uniform mixing and the amount of AlN whiskers [0149]. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the resin molded body with any suitable total number of contact points, such as claimed, based on the intended application and the desired/required thermal conductivity.
Claim 10, each of the AlN whiskers has a diameter in a range of 1.0 µm or more and 10 µm or less [0050].
Claim 11, each of the AlN whiskers has a diameter in a range of 5.0 µm or more and 10 µm or less [0050].
Claim Rejections - 35 USC § 103
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over USPAP 2020/0095170 to Ujihara or, in the alternative, under 35 U.S.C. 103 as obvious over USPAP 2020/0095170 to Ujihara in view of USPAP 2017/0183553 to Ujihara, as applied to claims 1-3 and 6-11 above, and further in view of USPAP 2002/0027635 to Sakamaki and/or USPAP 2014/0069487 to Yoshimine.
Ujihara discloses the resin molded body may comprise a plurality of spherical insulating particles each having a surface, and wherein the surface of the plurality of particles is covered with the AlN whiskers, thereby forming a cover formed body [0155]. Ujihara discloses that the insulating particle material may be alumina or any other suitable material [0155] but does not appear to specifically mention the particles being resin particles. Sakamaki and Yoshimine each disclose that it is known in the electronic device art to use insulating particles that comprise alumina or resin (see entire documents including [0030]-[0032] of Sakamaki and [0021]-[0022] of Yoshimine). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the particles of Ujihara from any suitable known material, such as resin particles, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
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