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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/04/2025 has been entered.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishio et al. (US20180244578, hereinafter referred to as Nishio) as evidenced by Sonia et al. (Lopez-Esteban, Sonia, et al. "Lead-free low-melting-point glass as bonding agent for TiO2 nanoparticles." Ceramics International 47.5 (2021): 6114-6120, hereinafter referred to as Sonia).
Regarding claim 1, Nishio discloses alumina-based thermally conductive rounded disc-shaped particles (see Nishio at the Abstract, disclosing an alumina-based thermally conductive oxide) being particles of an alumina-based thermally conductive oxide (see Nishio at the Abstract, disclosing an alumina-based thermally conductive oxide) obtained by firing a raw material mixture comprising an aluminum raw material (See Nishio at the Abstract, disclosing an alumina-based thermally conductive oxide obtained by firing a starting material mixture containing an aluminum starting material) and a glass frit (See Nishio at the Abstract, disclosing the starting mixture further contains … a frit), the raw material mixture containing no boron compound (see Nishio at [0026], disclosing the frit comprises Si and further comprises at least one element selected from the group consisting of Li, B, Na, K, Mg, Ca, Al, Zn, F, Ti, Zr, and P. Examiner notes that B as an optional component includes glass frits which do not comprise B), the aluminum raw material being at least one selected from the group consisting of boehmite and aluminum hydroxide (See Nishio at the Abstract, disclosing the aluminum starting material is at least one selected from the group consisting of boehmite, aluminum hydroxide), a content of the glass frit in the raw material mixture being in a range from 1 parts by mass to 2 parts by mass, to 100 parts by mass of the aluminum raw material (see Nishio at [0029], disclosing alumina with at least one additional starting material selected from the group consisting of … a frit … the additional starting material in the starting material mixture is 0.1 to 20 parts by mass based on 100 parts by mass of the aluminum starting material which overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).),
While Nishio does not explicitly disclose the deformation point of the glass of [0026] is within the range of 300 degrees C to 800 degrees C, this is a property inherent to the composition of the glass as detailed by the instant specification at [0054], which details the deformation temperature of the glass and specifies the glass frit contains silicon and boron and further contains at least one element selected from the group consisting of lithium, sodium, potassium, magnesium, calcium, aluminum, zinc, fluorine, titanium, and phosphorus. The use of the glass frit with such a composition produces the rounded disc-shaped particles. The glass of the instant specification at [0028] discloses the glass frit contains silicon and boron and further contains at least one element selected from the group consisting of lithium, sodium, potassium, magnesium, calcium, aluminum, zinc, fluorine, titanium, and phosphorus. The composition of the glass of Nishio at [0026] is substantially identical to the instantly disclosed glass composition at [0028] of the instant specification. Therefore, the glass of Nishio at [0026] would inherently possess the claimed deformation point. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Examiner notes that while Nishio does not disclose the deformation point of the glass, Nishio does disclose the melting point of the glass is in the range of 400 to 800 degrees C (see Nishio at [0058]). However, Examiner notes there is a technical distinction between deformation point and melting point which was overlooked during the interview dated 07/16/2025. This distinction is evidenced by Sonia. Sonia is directed towards low-melting-point glass (see Sonia at the Title). Sonia discloses an example of a glass with a deformation temperature of 416°C and a melting temperature of 530 °C (see Sonia at the first full paragraph in the second column of page 6116). As can be demonstrated by Sonia, the deformation temperature of the glass is different from the melting temperature of the glass, and can be over 100 degrees lower. Therefore, the melting point of Nishio with a lower limit of 400°C is not evidence that the glass of Nishio has a deformation temperature outside of the claimed range; instead this is evidence of quite the opposite. The melting point range of 400-800°C of Nishio is evidence that the deformation temperature of the glass of Nishio is lower than the melting point range and falls within the claimed deformation temperature range of 300-390°C. Therefore, the melting point range of Nishio is further evidence in support of the inherency of the deformation temperature of Nishio.
While Nishio does not explicitly disclose rounded disc-shaped particles wherein the alumina-based thermally conductive oxide having an average particle size in a range from 1 µm to 50 µm, having an average thickness in a range from 0.1 µm to 5 µm, having an aspect ratio of more than 1 and 50 or less, and having a rounded disc shape, the particle size, thickness, aspect ratio, and shape are functions of the composition, starting particle size and shape, and firing temperature as detailed by the instant specification at [0010], [0017] and [0060]. The composition of Nishio is substantially identical to the instant composition as detailed by the rejections above. The instant specification at [0060] discloses a starting material particle size of 3µm boehmite, and aluminum hydroxide varying from 1-10µm which is substantially identical to Nishio at claim 3 claiming the aluminum starting material has a shape of a particle having a number average particle diameter of 0.1 to 80 μm. The shape of the starting material of Nishio is spherical as detailed at [0055] which is substantially identical to the instant specification [0060] disclosing the boehmite and aluminum hydroxide is spherical. The firing temperature disclosed by Nishio is 600-1,500°C as disclosed at [0030] which is substantially identical to the instant specification at [0010] disclosing the mixture is fired in a range from 1,000 degrees C to 1,400 degrees C. Therefore, because the starting material composition, shape, particle size, and firing temperature of Nishio is substantially identical to those instantly disclosed, the particles of Nishio would inherently possess the claimed particle size, thickness, aspect ratio and disc shape.
Regarding claim 2, Nishio discloses the raw material mixture further contains an oxide raw material other than the glass frit, and the oxide raw material contains at least one selected from the group consisting of a titanium compound, a phosphorus compound, a tungsten compound, and a bismuth compound (see Nishio at the Abstract, disclosing an additional starting material selected from … titanium oxide … a phosphic acid compound, and a tungsten compound.).
Regarding claim 3, Nishio discloses the alumina-based thermally conductive oxide is colored by containing at least one element selected from the group consisting of iron, cobalt, copper, manganese, and nickel (see Nishio at [0074], disclosing copper and iron).
Regarding claim 4, Nishio discloses the glass frit contains no lead (see Nishio at [0026], disclosing the alumina-based thermally conductive oxide … does not substantially comprise Pb.).
Response to Arguments
Applicant's arguments filed 11/4/2025 have been fully considered but they are not persuasive. At the last full paragraph of page 6 of the Remarks, Applicant acknowledges the ranges of glass frit disclosed by Nishio overlap with the claimed ranges, however, Applicant argues that the specific examples of Nishio are not within the claimed range and therefore claim 1 should avoid Nishio as prior art. Examiner respectfully disagrees, and notes obviousness rejections are not limited to specific examples within the prior art disclosure. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123(II)). In the instant case, claim 1 is not rejected over the specific examples of Nishio, and therefore Applicant’s arguments are not convincing. As noted in the rejection of claim 1 above, the claimed range is rejected over the overlapping range of Nishio.
At the first full paragraph of page 7, Applicant argues when the amount of glass frit lies in the claimed range, superior performance is achieved. Examiner notes this argument does not appear to be supported by evidence. Arguments presented by the applicant cannot take the place of evidence in the record (see MPEP 716.01(c)). Examiner notes MPEP 716.02(d)(II) states to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.
As such, Applicant’s arguments are not convincing and claims 1-4 remain rejected over Nishio.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731