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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-6 are objected to because of the following informalities:
Claim 1 recites “electrical conducting layer” in lines 1 and 7, and “electrical conducting particles” in lines 2, 3, and 5-6. It appears the claim should recite “electrically conducting layer” and “electrically conducting particles.” Appropriate correction is required.
Claim 2 recites “electrical conducting layer” in lines 1 and 3, and “electrical conducting particle” in line 2. It appears the claim should recite “electrically conducting layer” and “electrically conducting particles.” Appropriate correction is required.
Claim 3 recites “electrical conducting layer” in line 1, and “electrical conducting particle” in line 2. It appears the claim should recite “electrically conducting layer” and “electrically conducting particles.” Appropriate correction is required.
Claims 4-5 recite “electrical conducting layer” in the first lines. It appears the claims should recite “electrically conducting layer.” Appropriate correction is required.
Claim 6 recites “electrical conducting layer” in line 1, 3-5, and “electrical conducting particles” in lines 2 and 4. It appears the claim should recite “electrically conducting layer” and “electrically conducting particles.” Appropriate correction is required.
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, 2, 4, 5 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 “wherein …a resistivity is 2.0 x 10-5 Ω · m or more.” It is not clear what element the resistivity relates to. The Examiner notes the claim was considered for examination purposes as reciting “wherein…the thermally-conductive electrically conducting layer has a resistivity of 2.0 x 10-5 Ω · m or more.”
Claim 2 recites “the electrical conducting particle A are disposed.” The claim is grammatically not clear. The Examiner notes the claim was considered for examination purposes as reciting “the electrically conducting particles A are disposed.”
Claim 4 recites “wherein a thermal conductivity in a thickness direction is…” The claim is not clear as it does not specify to which element does the thermal conductivity relate to. The Examiner notes the claim was considered for examination purposes as reciting “wherein a thermal conductivity in a thickness direction of the conducting layer is…”
Claim 5 recites “wherein an electrical resistance value in a thickness direction is…” The claim is not clear as it does not specify to which element does the electrical resistance value relate to. The Examiner notes the claim was considered for examination purposes as reciting “wherein an electrical resistance value in a thickness direction of the conducting layer is…”
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Calhoun et al. (US 5240761) (“Calhoun”), in view of Fujita et al. (US 4113981) (“Fujita”).
With respect to claim 1, Calhoun teaches a thermally-conductive electrically conducting layer comprising a binder component and electrically conducting particles (abstr., col. 3, lines 63-68, col. 4, lines 50-54, col. 5, lines 7-10), wherein the electrically conducting particles comprise electrically conducting particles (A) having a median diameter larger than a thickness of the thermally-conductive electrically conducting layer (col. 5, lines 8-10). Regarding a thermal conductivity of particles (A) of 20 W/mK or more, the particles can be silver-plated nickel particles (col. 5, lines 57-64), as disclosed in the instant specification, thus, it would be obvious to one of ordinary skill in the art that the thermal conductivity of particles (A) of Calhoun would be within the claimed range.
Calhoun is silent with respect to electrically conducting particles (B) having a median diameter smaller than the thickness of the thermally-conductive electrically conducting layer. Fujita discloses a thermally and electrically conducting layer comprising a binder and electrically conducting particles – element 9 – corresponding to particles (B) of the instant invention, having a median diameter smaller than the thickness of the layer (abstr., col. 2, lines 8-10, col. 3, lines 17-36). Particles 9 are provided in the electrically conducting layer to improve conductivity in the vertical or thickness direction of the layer (col. 3, lines 17-21). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the electrically conducting layer of Calhoun particles (B) having a median diameter smaller than the thickness of the conducting layer to improve conductivity in the thickness direction of the layer.
With respect to a resistivity of the layer as recited in the claim, since the references discloses the elements of the layer as disclosed in the instant specification, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the resistivity of the conducting layer according to Calhoun and Fujita is within the claimed range.
Regarding claim 2, Calhoun and Fujita teach the layer of claim 1, wherein the electrically conducting particles (A) are disposed to be aligned in a plane direction of the layer as primary particles – particles of Calhoun have a diameter greater than the thickness of the layer, thus, they are aligned in a plane direction of the layer (col. 5, lines 5-10).
As to claim 3, Calhoun and Fujita teach the layer of claim 2. Calhoun discloses electrically conducting particles are disposed dotted as primary particles (col. 6, lines 8-14, Figs. 3-4).
With respect to claim 4, Calhoun and Fujita teach the layer of claim 1. The references do not explicitly disclose a thermal conductivity in a thickness direction as recited in the claim, however, since the references disclose all the elements of the conducting layer, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the thermal conductivity of the layer according to the references is satisfied.
Regarding claim 5, Calhoun and Fujita teach the layer of claim 1. Calhoun discloses electrical resistance in a thickness direction of the layer of 0.1 Ω (col. 8, Table II).
As to claim 6, Calhoun and Fujita teach the layer of claim 1. Calhoun discloses that the median diameter of a particle corresponding to particle (A) is from 5 to 50% greater than the thickness of the adhesive layer (col. 5, lines 7-10), thus, the median diameter overlaps the recited range; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). Regarding the median diameter of particles (B) – element 9, Fujita discloses that the size of particles (B) is generally about 1/10 of the diameter of particles (A) (col. 3, lines 27-33), thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the median diameter of particles – element 9 - of Fujita, corresponding to particles (B) of the instant invention overlaps the recited range; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Information Disclosure Statement
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOANNA PLESZCZYNSKA whose telephone number is (571)270-1617. The examiner can normally be reached M-F ~ 11:30-8.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maria Veronica Ewald can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Joanna Pleszczynska/
Primary Examiner, Art Unit 1783
Prosecution Insights