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Application No.: 17/050,429
`
`Introduction
`
`REMARKS
`
`Claims 1-6, 8 and 15-18 are pending, of which claims 1 and 5 are independent.
`
`Claims 1 and 5 have been amendedto correct informalities in the claim language. Claims
`
`16-18 have been added. No new matter has been added.
`
`Patentability under 35 U.S.C. § 102/103
`
`Claims 1 and 8 were rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Taira
`
`(Performance improvement of stacked graphite sheets for cooling applications”). Claims 2, 5 and
`
`6 were rejected under 35 U.S.C. § 103 as being unpatentable over Taira in view of Fukui (US
`
`2016/0336253). Claim 3 was rejected under 35 U.S.C. § 103 as being unpatentable over Taira in
`
`view of Tachibana (JP 2014-133669). Claim 4 wasrejected under 35 U.S.C. § 103 as being
`
`unpatentable over Taira in view of Greinke (US 6,746,768). Claim 15 wasrejected under 35
`
`U.S.C. § 103 as being unpatentable over Taira in view of Hu (US 8,896,110). Without
`
`conceding any correctness of the rejections, Applicant traverses the rejections for at least the
`
`following reasons.
`
`At a minimum, noneof the cited references disclose or suggest that the graphite-based
`
`carbon film has a thermal conductivity in a plane direction of the first surface, and the thermal
`
`conductivity in the plane direction of the first surface is larger than a thermal conductivity in a
`
`direction perpendicular to the first surface, as recited by claims 1 and 5. As disclosed at
`
`paragraph [0017] of the present specification, pyrolytic graphite-based carbonis excellent in
`
`thermal conductivity in a plane direction, and thus, even if heat generation of heat generating
`
`componentis localized, generated heat can be quickly diffused in the plane direction and
`
`

`

`Application No.: 17/050,429
`
`transmitted to pressing component, by which the heat can be efficiently dissipated.
`
`The Examinerasserted that TIM1 of Taira corresponds to the claimed graphite-based
`
`carbonfilm.
`
`In Taira, however, the direction of higher thermal conductivity is from the mounting
`
`substrate (the alleged heat generating component) to the pressing component, whichis different
`
`from (perpendicular to) the direction of claims 1 and 5. Taira fails to disclose that the thermal
`
`conductivity in the direction parallel to the lamination plane is greater than the thermal
`
`conductivity in the direction perpendicular to the lamination plane as a device.
`
`Assuch,it is clear that Taira fails to disclose the aforementioned features of claims 1 and
`
`5. The remaining cited references do not cure the deficiencies of Taira.
`
`Assuch, claims 1 and 5 and all claims dependentthereon, including new claims 16-18,
`
`are patentable overthe cited references.
`
`

`

`Application No.: 17/050,429
`
`CONCLUSION
`
`Having fully respondedto all matters raised in the Office Action, Applicant submits that
`
`all claims are in condition for allowance, an indication for whichis respectfully solicited. If
`
`there are any outstanding issues that might be resolved by an interview or an Examiner’s
`
`amendment, the Examineris requested to call Applicant’s attorney at the telephone number
`
`shownbelow.
`
`To the extent necessary, a petition for an extension of time under 37 C.F.R. § 1.136 is
`
`hereby made. Please charge any shortage in fees due in connection with the filing of this paper,
`
`including extension of time fees, to Deposit Account 500417 and please credit any excess fees to
`
`such deposit account.
`
`Respectfully submitted,
`
`McDERMOTT WILL & EMERY LLP
`
`/Takashi Saito/
`
`Takashi Saito
`Registration No. 69,536
`
`Please recognize our Customer No. 53080
`as our correspondenceaddress.
`
`500 North Capitol Street, N.W.
`Washington, DC 20001-1531
`Phone: 202.756.8000 MEF:TS:
`Facsimile: 202.756.8087
`Date: March 1, 2023
`
`

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