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 .
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 2, 7 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 pre-AIA the applicant regards as the invention.
Regarding claim 2, the phrase "or the like" (“flake -like”) renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim 7 recites the limitation of “wherein a tensile strength that is measured under conditions of a test speed of 50 mm/min and a test piece size of 10 mm in width is 0.1 to 2 MPa”, wherein it is unclear what “that is measured under conditions of a test speed of 50 mm/min and a test piece size of 10 mm” is referring to. A single claim which claims both an apparatus and the method steps of using that apparatus is indefinite. However, a product-by-process claim, which is a product claim that defines the claimed product in terms of the process by which it is made is proper. See MPEP §2173.05 (p) and §2113. Additionally, is “a test piece size” required in the claim a portion of the laminated structure? For examination purposes, the phrase has been interpreted as -- wherein a tensile strength is 0.1 to 2 MPa -- for clarity.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Toyoda et al. US 2002/0166686 Al, as cited on the IDS.
Re claim 1, Toyoda et al. teach a heat dissipating sheet comprising: a conductive adhesive layer (13, para 62); and a heat dissipating film (12, 14) that is formed on each of both surfaces of the conductive adhesive layer , wherein the conductive adhesive (para 54) layer contains a conductive filler (para 62) and a binder component (resin, para 64), and the heat dissipating film contains a thermally conductive filler and a binder component (resin, para 66, 63).
Claim Rejections - 35 USC § 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 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.
Claim(s) 2, 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toyoda et al..
Re claim 2, Toyoda et al. teach a size of an uneven shape that is formed between at least one surface of the conductive adhesive layer and the heat dissipating film (noting Asperities in Meeting Objects and Surface Roughness are naturally occurring and in meeting objects are not completely/perfectly uniform).
Toyoda et al. discloses the claimed invention except for a size of an uneven shape that is formed between at least one surface of the conductive adhesive layer and the heat dissipating film is 1 to 50 pm. It would have been an obvious matter of design choice to provide a size of an uneven shape that is formed between at least one surface of the conductive adhesive layer and the heat dissipating film is 1 to 50 pm, since such a modification would have involved a mere change in the size of the component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04, section IV, part A.
Re claim 4, Toyoda et al. discloses the claimed invention except for wherein the heat dissipating sheet has a thickness of 0.05 to 10 mm. It would have been an obvious matter of design choice to provide wherein the heat dissipating sheet has a thickness of 0.05 to 10 mm, since such a modification would have involved a mere change in the size of the component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04, section IV, part A.
Re claim 5, Toyoda et al. discloses the claimed invention except for wherein at least one of the heat dissipating films has a thickness of 0.01 to 5 mm. It would have been an obvious matter of design choice to provide wherein at least one of the heat dissipating films has a thickness of 0.01 to 5 mm, since such a modification would have involved a mere change in the size of the component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04, section IV, part A.
Re claim 6, Toyoda et al. discloses the claimed invention except for wherein the conductive adhesive layer has a thickness of 5 to 500 pm. It would have been an obvious matter of design choice to provide wherein the conductive adhesive layer has a thickness of 5 to 500 pm, since such a modification would have involved a mere change in the size of the component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04, section IV, part A.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toyoda et al. in view of JP’972 JP 2016186972, as cited on the IDS.
Re claim 3, Toyoda et al. fail to explicitly teach a specific filler.
JP’972 teach wherein, as the conductive filler, a dendritic conductive filler and/or a flake-like conductive filler is contained (para 37) to provide a filler known in the art.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include a specific filler as taught by JP’972 in the Toyoda et al. invention in order to advantageously allow for an electromagnetic shielding sheet for use in electronic components and electronic materials.
Claim(s) 7 is/are rejected, as best understood due to indefiniteness issues, under 35 U.S.C. 103 as being unpatentable over Toyoda et al. in view of Ma US 20230212435 A1.
Re claim 7 , Toyoda et al. fail to explicitly teach a specific strength.
Ma teach the wherein a tensile strength that is measured under conditions of a test speed of 50 mm/min and a test piece size of 10 mm in width is 0.1 to 2 MPa (para 285) to use a composite with specific structural properties.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include a specific strength as taught by Ma in the Toyoda et al. invention in order to advantageously allow for specific intended use of substrates.
Additionally, it would have been obvious to one having ordinary skill in the art at the time the invention was made to form the heat dissipating sheet out of a material which results in a tensile strength that is measured under conditions of a test speed of 50 mm/min and a test piece size of 10 mm in width is 0.1 to 2 MPa for optimal strength in use, since 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 for the intended use as matter of obvious design choice. See MPEP 2144.07.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toyoda et al. in view of Khorrami US 20170094831 A1.
Re claim 8, Toyoda et al. fail to explicitly teach wherein hardness is 20 to 79.
Khorrami teach wherein hardness is 20 to 79 (para 47) to use a composite with a TIM.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include wherein hardness is 20 to 79as taught by Khorrami in the Toyoda et al. invention in order to advantageously allow for specific intended use of TIM in layers.
Additionally, it would have been obvious to one having ordinary skill in the art at the time the invention was made to form the heat dissipating sheet out of a material which results in wherein hardness is 20 to 79 for optimal strength in use, since 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 for the intended use as matter of obvious design choice. See MPEP 2144.07.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20120234524 A1, US 11618247 B2, US 20260143582 A1.
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/GORDON A JONES/Examiner, Art Unit 3763
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