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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8 of copending Application No. 18/861878 (reference application) and claims 10-15 are further rejected over Kobune et al. (US 2020/0402886). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a heat conduction sheet of a heat conduction layer of at least one of scale-shaped particles, ellipsoid particles, and rod-shaped particles having an orientation in a thickness direction or the long axis direction oriented in a thickness direction and a metal component of Bi, In, Ga, Cd, Th, and Sb. This is patentably indistinct of claims 1, 5, and 8 of the ‘878 application which recites a heat conduction sheet of a heat conduction layer of at least one of scale-like particles, ellipsoid particles, and rod-like particles having an orientation in a thickness direction or the long axis direction oriented in a thickness direction and a metal component of Sn, Bi, In, Zn, Pb, Ga, Cd, Th, and Sb. The instant claims and those of the ‘878 application recite overlapping structures, melting points and materials thereof and this overlap establishes a prima facie case of obviousness. See MPEP 2144.05.
Instant claim 2 recites a particulate metal overlapping claim 2 of the ‘878 application. Instant claim 3 recites a main surface structure overlapping claim 3 of the ‘878 application. Instant claim 4 recites a melting point overlapping claim 4 of the ‘878 application. Instant claim 6 recites a carbon fiber ratio overlapping claim 6 of the ‘878 application. Instant claim 7 recites a metal structure overlapping claim 8 of the ‘878 application. Instant claim 8 recites materials overlapping claim 5 of the ‘878 application.
Instant claims 10-15 recite a liquid component, acrylic ester polymer, and/or hot melt agent not expressly overlapping claim 1 of the ‘878 application.
In a related field of endeavor, Kobune teaches a thermal conduction sheet and heat dissipating device (abstract) comprised of graphite flakes, ellipsoid particles, or rod-shaped particles (Paragraph 15). The thermally conductive sheet may further comprise a liquid component that is liquid at 25 °C (Paragraph 38) preferably of polybutene (Paragraph 73) where the content of the liquid component is 10-55 vol.% (Paragraph 79) which improves cohesive strength and flowability (Paragraph 77). Kobune teaches where an acrylate polymer may be included including methacrylate polymers (Paragraph 81-82) (e.g. an acrylic ester polymer) and the inclusion of a hot-melt agent (Paragraphs 94-95).
As the instant claims, the ‘878 application, and Kobune are directed toward graphite composites they are considered analogous. Claims 10-13 would have been obvious to one of ordinary skill in the art before the effective filing date over claim 1 of the ‘878 application in view of the teachings Kobune as this is known to improve cohesive strength and flowability and one would have had a reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Jayaraman et al. (US 2003/0153667 – cited by applicant) in view of Hougham et al. (US 2006/0112857 – previously cited).
Considering claim 1, Jayaraman teaches a thermal interface material (TIM) (abstract) in the form of a sheet comprising a polymer matrix with fusible and non-fusible filler material therein (Paragraph 18) where the TIM conducts heat (Paragraph 19). The fusible material comprises metal solder powder with a melting point of 100-250 °C comprising Bi, In, Ga, Zn, etc. and the non-fusible material may comprise graphite (Paragraph 28). However, Jayaraman does not teach the claimed graphite particles (A).
In a related field of endeavor, Hougham teaches thermal conductive pastes (abstract) comprising platelet and/or disk shaped particles of a conducting material to maximize heat transfer (Paragraph 4). The platelets comprise graphite (Paragraph 9) and the particles are oriented such that the basal planes of the particles are aligned in the direction of the desired heat flow which improves the conductivity (Paragraph 27). One embodiment depicts where the platelets are aligned in a thickness direction of the conductive paste (Paragraph 19; Fig.7).
As both Jayaraman and Hougham teach thermally conductive materials they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Jayaraman with the thickness-oriented graphite particles (i.e. scale-shaped particles) of Hougham as this is known to improve thermal conductivity and one would have had a reasonable expectation of success. Further, the melting point of the solder taught by modified Jayaraman overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 2, Jayaraman teaches where the solder is a powder (Paragraph 28).
Considering claims 3 and 7, Jayaraman teaches where the fusible material is present on the surface of the sheet to contact the mating components (Paragraph 27) (i.e. on two main surfaces).
Considering claim 4, Jayaraman teaches where the metal solder powder has a melting point of 100-250 °C. See MPEP 2144.05.
Considering claim 6, Jayaraman is silent regarding the use of carbon fiber and therefore modified Jayaraman meets the claimed optional carbon fiber ratio. See MPEP 2144.05.
Considering claim 8, Jayaraman teaches solders of InSnBi, SnBiZn, etc. (Paragraph 28).
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Jayaraman et al. (US 2003/0153667 – cited by applicant) in view of Hougham et al. (US 2006/0112857 – previously cited) as applied to claim 1 above further in view of Kobune et al. (US 2020/0402886 – previously cite) and claims 14-15 are rejected over Jayaraman in view of Hougham and Kobune.
Considering claim 10, the teachings of Jayaraman and Hougham are outlined above. Jayaraman and Hougham teach thermal conductive materials, but do not teach the claimed liquid component (B).
In a related field of endeavor, Kobune teaches a thermal conduction sheet and heat dissipating device (abstract) comprised of graphite flakes, ellipsoid particles, or rod-shaped particles (Paragraph 15). The thermally conductive sheet may further comprise a liquid component that is liquid at 25 °C (Paragraph 38) preferably of polybutene (Paragraph 73) which improves cohesive strength and flowability (Paragraph 77).
As Jayaraman, Hougham, and Kobune teach thermal transfer materials they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Jayaraman and Hougham with the liquid component of Kobune as this is known to improve cohesive strength and flowability and one would have had a reasonable expectation of success.
Considering claim 11, Kobune teaches where the content of the liquid component is 10-55 vol.% (Paragraph 79). See MEP 2144.05.
Considering claim 12, Kobune teaches where an acrylate polymer may be included including methacrylate polymers (Paragraphs 81-82) (e.g. an acrylic ester polymer).
Considering claim 13, Kobune teaches the inclusion of a hot-melt agent (Paragraphs 94-95).
Considering claim 14, the features of this claim are disclosed by Jayaraman, Hougham, and Kobune outlined in claims 1 and 10 above.
Considering claim 15, the features of this claim are disclosed by Jayaraman, Hougham, and Kobune outlined in claims 1 and 14 above.
Claims 1-2, 4, 6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kamiyahata et al. (WO 2008/010297 – machine translation) in view of Hougham et al. (US 2006/0112857 – previously cited).
Considering claim 1, Kamiyahata teaches a thermosetting resin composition having high thermal conductivity and excellent moldability (abstract). The resin comprises a carbon-based filler and a low-melting-point alloy having a melting point of 300 °C or lower (Paragraph 5; Claim 1). The carbon-based filler includes graphite, carbon fibers, etc. (Paragraph 19) and the low melting point alloy comprises Bi, In, etc. (Paragraph 16). However, Kamiyahata does not teach the claimed graphite particles (A).
In a related field of endeavor, Hougham teaches thermal conductive pastes (abstract) comprising platelet and/or disk shaped particles of a conducting material to maximize heat transfer (Paragraph 4). The platelets comprise graphite (Paragraph 9) and the particles are oriented such that the basal planes of the particles are aligned in the direction of the desired heat flow which improves the conductivity (Paragraph 27). One embodiment depicts where the platelets are aligned in a thickness direction of the conductive paste (Paragraph 19; Fig.7).
As both Kamiyahata and Hougham teach thermally conductive materials they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Kamiyahata with the thickness-oriented graphite particles (i.e. scale-shaped particles) of Hougham as this is known to improve thermal conductivity and one would have had a reasonable expectation of success. Further, the melting point of the solder taught by modified Kamiyahata overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 2, Kamiyahata teaches where the low-melting-point alloy is a powder (Paragraph 18).
Considering claim 4, Kamiyahata teaches where the low-melting-point alloy has a melting point of 300 °C or lower (Paragraph 5; Claim 1). See MPEP 2144.05.
Considering claim 6, Kamiyahata teaches where the graphite filler has a volume content of 2-80 vol.% ( Paragraph 22) and an optional carbon fiber content of 1-20 vol%. (Paragraph 32) overlapping the claimed ratio.
Considering claim 8, Kamiyahata teaches where the low-melting-point alloy may comprise Bi-Sn, Bi-In, etc. (Paragraph 16) with a melting point overlapping that which is claimed and is therefore considered “a solder” as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Considering claim 9, teaches where the graphite filler has a volume content of 2-80 vol.% ( Paragraph 22). See MPEP 2144.05.
Response to Arguments
Applicant’s arguments, see remarks p.7 last paragraph – p.8 first paragraph, filed 26 June 2026, with respect to 35 USC 112(b) have been fully considered and are persuasive. The rejection of claims 1-13 has been withdrawn. Applicant has amended the claims to remove indefiniteness.
Applicant’s arguments, see remarks p.10, 2nd paragraph, filed 26 June 2026, with respect to 35 USC 103 rejections in view of Lin have been fully considered and are persuasive. The rejections of claims 1-13 have been withdrawn. Applicant has amended the claims to recite metal components not disclosed by primary reference Lin.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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