www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/050,429
`
`10/23/2020
`
`AKIHITO KONISHI
`
`083710-3191
`
`1855
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`HOFFBERG, ROBERT JOSEPH
`
`2835
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/07/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-14 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C] Claim(s)__ is/are allowed.
`Claim(s) 1-14 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`C} Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[M) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a) All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.4% Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220330
`
`Application No.
`Applicant(s)
`17/050,429
`KONISHI et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ROBERT J HOFFBERG
`2835
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 2/24/22.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/050,429
`Art Unit: 2835
`
`Page 2
`
`Detailed Action
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`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 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.
`
`Claim Scope Clarification
`
`
`
`2. Claim 1 requires “one or morefirst voids are formed atafirst surface of the film”
`tt
`
`and “one or more second voids are formed at a second surface of the film,”
`
`“a liquid
`
`heat conductive material provided between the heat generating component and the film
`
`and between the pressing component and the film,” and “the one or morefirst voids
`
`and the one or more second voids arefully filled with the liquid heat conductive
`
`material.” Since the first and second voids are formed on surfaces ofthe film, the first
`
`and second voids are onlyin the film, and are not pertaining to the film coated on both
`
`first and second surfaces ofthe film becauseafter the film is coated by the liquid heat
`
`conductive material, there will be no voids (i.e., 100% coverage) in the liquid heat
`
`conductive material coatedfilm against each of the heat generating component and the
`
`pressing component becauseclaim 1 requires “the one or morefirst voids and the one
`
`or more second voidsarefully filled with the liquid heat conductive material.” Therefore,
`
`

`

`Application/Control Number: 17/050,429
`Art Unit: 2835
`
`Page 3
`
`the ultrasonic wave is measuring the first and second voids existing in just the film (prior
`
`to coating), and notin the liquid heat conductive material coatedfilm.
`
`Similarly, Claim 5 requires “one or morefirst voids are formedata first surface of
`
`the film” and “one or more second voids are formed at a second surfaceof the film,”
`
`and “the film is coated with a liquid heat conductive material,” and “the one or morefirst
`
`voids and the one or more second voids arefilled with the liquid heat conductive
`
`material’ and Claim 6 requires an area of the one or morefirst voids is not less than or
`
`equal to 5%of an area ofthe first surface, and an area of the one or more second voids
`
`is not less than or equal to 5% of an area of the second surface.” Since “the one or
`
`morefirst voids and the one or more second voids arefilled with the liquid heat
`
`conductive material,” then the first and second voids are only in the film (prior to
`
`coating), and are not pertaining to the liquid heat conductive material coated film on
`
`each of the first and second surfacesof the film. Claim 5 has a step of “examining the
`
`one or morefirst voids and the one or more second voids are fully filled with the liquid
`
`heat conductive material.” Therefore, the criteria for a defective product of claim 6 after
`
`claim 5’s examining step is that the first and second voids of just the film is not less than
`
`or equalto (i.e. greater than) 5% of an area of the respective first or second surface of
`
`the film, and is not a total area of the liquid heat conductive materialfilled first and
`
`second voids is not less than or equalto (i.e. greater than) 5%of an area of the
`
`respective surface ofthe film.
`
`Note that figure 2 shows voids 14¢cin the film 14, but does not show any voids
`
`between either between the liquid heat conductive materialfilled first and second voids
`
`

`

`Application/Control Number: 17/050,429
`Art Unit: 2835
`
`Page 4
`
`(combination of elements 14c and 15) and either the heat generating component 12 or
`
`the pressing component 13.
`
`Please confirm these claim scopes.
`
`Responseto Arguments
`
`3.
`
`Applicant's argumentsfiled 2/24/22 have been fully considered but they are not
`
`persuasive.
`
`4.
`
`Applicant argues
`
`none of the cited references disclose "one or morefirst voids are formed
`at a first surface of the film facing the heat generating component, and one
`or more second voids are formed at a second surfaceof the film facing the
`pressing component, and the one or morefirst voids and the one or more
`second voids arefully filled with the liquid heat conductive material," as
`recited by claim 1 and "arranging a pressing component on the film and
`compressing the film by the pressing component such that the one or
`morefirst voids and the one or more second voids arefilled with the liquid
`heat conductive material" as recited by claim 5. (Applicant’s remarksof
`2/24/22, p. 5).
`
`The Examiner understandsthe definition of the term “void” as “an empty space.”
`
`Contrary to Applicant’s arguments of none of the cited references disclosefirst or
`
`second voids, Bunyan (WO 2017/172703) does teach “voids” because Bunyan
`
`discloses “surface deformities” (p. 7, |. 11). Any surface deformity between the heat
`
`generating component 12 andthe film 44 is a claimed“first void” and any surface
`
`deformity between the pressing component (using 20 with 36 applied) and the film 44
`
`reads on a claimed “second void.” Even though fig. 4, depicts the film 45 on one side,
`
`the written description states that “both sides of the graphite sheet 44 are coated with a
`
`thin film 45” (p. 7,
`
`Il. 19-20). The liquid heat conductive material 45 of Bunyan do fully
`
`fill the “surface deformities” (p. 7,
`
`|. 22, “semi-liquid” at 25°C and liquefy at elevated
`
`temperatures) and therefore reads on the amendedclaim 1’s limitation of “the one or
`
`

`

`Application/Control Number: 17/050,429
`Art Unit: 2835
`
`Page 5
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`morefirst voids and the one or more second voids arefully filled with the liquid heat
`
`conductive material’ and claim 5’s limitation of “one or morefirst voids are formed at a
`
`first surface of the film facing the heat generating component and one or more second
`
`voids are formed at a second surface ofthe film facing the pressing component.”
`
`Therefore, Bunyan does teach or suggestthese limitations of claims 1 and 5.
`
`5.
`
`Applicant further argues
`
`the alleged film 9 of Fukui is made of mainly metal and diamond, while the
`alleged film 30 of Bunyan is made of graphite material. Thus, there is no
`motivation of suggestion to pick only the void structures (and porosity)
`formed in the metal/diamond substrate of Fukui and apply to Bunyan's
`graphite film, where the Office Action failed to show Bunyan'sfilm includes
`voids. Rather, one of ordinary skill in the art would rather apply the film 9
`to Bunyan by replacing the entirety of Bunyan's film 30 with the film 9 of
`Fukui, to obtain the advantageous effects of Fukui's film 9 with voids, and
`in such a case, the combination fails to disclose a film containing graphite-
`based carbon. (Applicant’s remarks of 2/24/22, p. 6).
`
`Contrary to Applicant argument of “the Office Action failed to show Bunyan’s film
`
`includes voids,” Bunyan doesin fact teach or suggest voids, as shown above, ina
`
`graphite-based carbon. Therefore, there is no need to for the Examiner to replace or
`
`substitute “the entirety of Bunyan's film 30 with the film 9 of Fukui’ because Bunyan
`
`teaches “a film having graphite-based carbon.” The Fukui (US 2016/0336253)
`
`reference is used to teach or suggestthat a defective product has a total area of one or
`
`more voids of 5%(i.e., “void area”) of an area of a surface(i.e., surface of a substrate),
`
`and an ultrasonic waveis a defective product(i.e., “‘NG’ (if the void area was higher
`
`than 5%)’). Therefore, the Fukui reference is disclosing the required inspection method
`
`

`

`Application/Control Number: 17/050,429
`Art Unit: 2835
`
`Page 6
`
`using ultrasonic waves and the defective productcriteria of a total area of the voidsis
`
`not less than or equalto (i.e., greater than) 5% of an area of the surface.
`
`6.
`
`Finally, Applicant argues
`
`even if, arguendo, the perforations 38 of Bunyan were considered as
`voids, Bunyan fails to disclose that the one or morefirst voids and the one
`or more second voidsarefully filled with the liquid heat conductive
`material. As disclosed on page 7 of Bunyan, one or both surfaces of the
`graphite sheet 44 are coated with a thin film 45 of a thermally conductive
`material such as a grease or wax or phase change material (PCM) prior to
`the graphite sheet being perforated. Thus, the alleged liquid heat
`conductive material 45 of Bunyan does notfill the perforations 38.
`
`The phrase of “one or both surfaces of the graphite sheet 44 are coated with a
`
`thin film 45 of a thermally conductive material such as a grease or wax or phase
`
`change material (PCM) prior to the graphite sheet being perforated” (p. 7, Il. 19-
`
`21) applies to Bunyan’s interlayer 30; not to the graphite sheet 44.
`
`In fact,
`
`Bunyan clearly teaches or suggestthat “surface deformities on both surfaces of
`
`the graphite sheet” apply to voids of the graphite sheet 44; and these are not the
`
`perforations 38 as Applicant has noted. Since the perforations 38 are formed on
`
`both surfaces of the graphite sheet 44 after the graphite sheet is coated with a
`
`thin film 45, the perforations (i.e., voids) are notfully filled with the liquid heat
`
`conductive material that claims 1 and 5 require. Bunyan’s perforations 38 can
`
`exist in the electronic device of either claims 1 or 5 because the transitional
`
`phrase of “comprising” is open ended and does not exclude additional, unrecited
`
`elements or method steps including Bunyan’s perforations 38.
`
`Claim Objections
`
`7.
`
`Claims 3, 4, 6, and 12 are objected to because ofthe following informalities:
`
`a.
`
`Claim 3, line 2, “compressibility” should be “a compressibility’;
`
`

`

`Application/Control Number: 17/050,429
`Art Unit: 2835
`
`Page 7
`
`b.
`
`Claim 4, lines 1-2; and Claim 12, line 1, “the heat conductive material”
`
`should be “the heat conductive material’;
`
`C.
`
`Claim 6, line 5, “an area of the one or more voids” should be “a total area
`
`of the one or more voids’:
`
`d.
`
`Claim 6, line 7, “an area of the one or more voids” should be “a total area
`
`of the one or more voids’:
`
`e.
`
`Claim 6, line 8, “not less than or equal’ would be claimed as “greater
`
`than’.
`
`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`(a) INGENERAL.—Thespecification shall contain a written
`description of the invention, and of the manner and process of making and
`using it, in suchfull, clear, concise, and exact terms as to enable any
`person skilled in the art to which it pertains, or with whichit is most nearly
`connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor or joint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AlA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention,
`and of the manner and process of making and using it, in such full, clear,
`concise, and exact terms as to enable any person skilled in the art to
`whichit pertains, or with which it is most nearly connected, to make and
`use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
`
`9.
`
`Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first
`
`paragraph, asfailing to comply with the written description requirement. The claim(s)
`
`contains subject matter which wasnot described in the specification in such a way asto
`
`reasonably conveyto one skilled in the relevant art that the inventor or a joint inventor,
`
`

`

`Application/Control Number: 17/050,429
`Art Unit: 2835
`
`Page 8
`
`or for applications subject to pre-AlA 35 U.S.C. 112, the inventor(s), at the time the
`
`application wasfiled, had possession of the claimedinvention.
`
`Claim 2 requires “a porosity of the one or morefirst voids is less than or equal to
`
`5%, and a porosity of the one or more secondvoids is less than or equal to 5%.” In the
`
`disclosure of the instant application the “less than or equal to 5%”is not relating to just
`
`the at least one first void or the at least one second void, but a relationship of a total
`
`area of the at least one first void or the at least second void to a total area of the first
`
`surface or the second surfaceof the film. Further explanation is in 35 USC 112b
`
`rejection below.
`
`10.
`
`‘The following is a quotation of 35 U.S.C. 112(b):
`
`(6) 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-AlA), second paragraph:
`The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the applicant
`regards ashis invention.
`
`11.
`
`Claims 2, 7, 10-14 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-AlA
`
`the applicant regards as the invention.
`
`a.
`
`Claims 2 requires “a porosity of the one or morefirst voids is less than or equal to
`
`5%, and a porosity of the one or more secondvoids is less than or equal to 5%.”
`
`A void is understood by the Examiner as lacking any material, so that each of the
`
`first and second voids in essence has a porosity of 100%. What the disclosure is
`
`disclosing is that the “porosity” is “a ratio of a total area of the void(s) when the
`
`

`

`Application/Control Number: 17/050,429
`Art Unit: 2835
`
`Page 9
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`void(s) is/are projected ontofirst surface 14a to an area offirst surface 14a (an
`
`entire area offirst surface 14a)” (4[0015], Il. 7-9 of the specification) and “a
`
`porosity of the one or more second voids” as “a ratio of a total area of the void(s)
`
`when the void(s) is/are projected onto second surface 14b to an area of second
`
`surface 14b (an entire area of second surface 14b)” ({[0015], Il. 11-13 of the
`
`specification), “a total area of the void(s) projected onto first surface 14a exceeds
`
`5%of an area offirst surface 14a” ({[0024], Il. 15-16 of the specification) and “a
`
`total area of the void(s) projected onto second surface 14b exceeds 5%of an
`
`area of second surface 14b” (q[0024], Il. 11-13 of the specification). Therefore,
`
`claim 2 is omitting “a porosity of a total area of the one or morefirst voids is less
`
`than or equal to 5%of a total area of the first surface of the film, and a porosity of
`
`a total area of the one or more second voids is less than or equal to 5%ofa total
`
`area of the second surface of the film.”
`
`b.
`
`Claim 7 line 1 requires “side surfaces” and Claim 1, line 11 requires “a first
`
`surface” and line 12 requires “a second surface.” Do the side surfaces of claim
`
`7, the same or different from the “first surface” and the “second surface” of claim
`
`1? and
`
`C.
`
`Claim 10, line 8 requires “side surfacesofthe film are covered with the liquid
`
`heat conductive film” and lines 5-6 requires “a liquid heat conductive material
`
`provided between the heat generating component andthe film and between the
`
`pressing componentand the film.” Since the claim 10 already requires “a liquid
`
`heat conductive material provided between the heat generating component and
`
`the film and between the pressing componentandthe film” which is understood
`
`

`

`Application/Control Number: 17/050,429
`Art Unit: 2835
`
`Page 10
`
`by the Examiner as the liquid heat conductive material provided on the surfaces
`
`of the film facing the heat generating component and the pressing component,
`
`respectively, would the “side surfaces” be in addition to surfaces of the film facing
`
`the heat generating component and the pressing component?
`
`Claim Rejections - 35 USC § 102
`
`12.
`
`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 madein 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.
`
`(a)(2) the claimed invention was described in a patent issued under
`section 151, or in an application for patent published or deemed published
`under section 122(b), in which the patent or application, as the case may
`be, names another inventor and waseffectively filed before the effective
`filing date of the claimed invention.
`
`13.
`
`Claim 1
`
`is rejected under 35 U.S.C. 102(a)(1)/ 102(a)(2) as being anticipated by
`
`Bunyan (WO 2017/172703).
`
`Bunyan teaches an electronic device (fig. 1, 10) comprising: a heat generating
`
`component (12); a pressing component (20 applying force on 36);afilm (fig. 4, 44)
`
`provided between the heat generating component and the pressing component; and a
`
`liquid heat conductive material (45 and p. 10, I. 10, “oil’) provided between the heat
`
`generating component and the film (p. 7, 1.19, both sides) and between the pressing
`
`component and the film (p. 7, 1.19, both sides), wherein: the film contains graphite-
`
`based carbon (p. 7, |. 19) and is compressed by pressure(p. 6, |. 9, 1-2 lbs/sq-ft)
`
`received from the pressing component and the heat generating component, one or
`
`

`

`Application/Control Number: 17/050,429
`Art Unit: 2835
`
`Page 11
`
`morefirst voids (p, 7, |. 11, “surface deformities”) are formed at a first surface (18) of the
`
`film facing the heat generating component, and one or more secondvoids (p, 7, |. 11,
`
`“surface deformities”) are formed at a second surface (22) of the film facing the pressing
`
`component, and the one or morefirst voids and the one or more second voids arefully
`
`filled (see fig, 4, 45 fully fills adjacent surface of 44) with the liquid heat conductive
`
`material.
`
`(Note: perforations 38 go completely through 30 [asillustrated in fig. 2], and
`
`therefore do not meet the requirements of the first and second voids thatthe first voids
`
`are formedata first surface of the film facing the heat generating component and the
`
`second voids are formed on a second surface ofthe film facing the pressing
`
`component).
`
`Claim Rejections - 35 USC § 103
`
`14.—The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections 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
`of this title, 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 effectivefiling 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.
`
`15.
`
`Claims 2, 5, and 6 are rejected under AIA 35 U.S.C. 103 as being unpatentable
`
`over Bunyan (WO 2017/172703) and Fukui (US 2016/0336253).
`
`With respect to Claim 2, Bunyan discloses the claimed invention except for a
`
`porosity of the one or morefirst voids is less than or equal to 5%, and a porosity of the
`
`one or more second voidsis less than or equal to 5%. Fukui teaches a porosity of the
`
`one or more voids ({[0089], |. 9, void area’) is less than or equal to 5% (F[0089], |. 10).
`
`

`

`Application/Control Number: 17/050,429
`Art Unit: 2835
`
`Page 12
`
`It would have been obvious to one having ordinary skill in the art before the effective
`
`filing date of the claimed invention was made thatit is commonly knownthat no problem
`
`related to quality of the interface if the void percentage determined by this measurement
`
`is 5% or lower ([0089], Il. 12-16), since it has been held that discovering an optimum
`
`value of a result effective variable involves only routine skill in the art. In re Boesch, 617
`
`F.2d 272, 205 USPQ 215 (CCPA 1980). Fukui fails to disclose a porosity of the one or
`
`morefirst voids is less than or equal to 5%, and a porosity of the one or more second
`
`voids is less than or equal to 5%.
`
`It would have been obvious to one having ordinary
`
`skill in the art before the effectivefiling date of the claimed invention was made to for
`
`the voids of Fukui to befirst and second voids on opposing sides of Fukui’s substrate
`
`for the purpose of an acceptable surface defect level to insure required heat transfer
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`between the film and mating surfaces are met, since it has been held that mere
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`duplication of the essential working parts of a device involves only routine skill in the art.
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`St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
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`Examiner Note: If a porosity of a void being less than or equal to 5%is a critical
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`characteristic of the invention (rather than just a desirable characteristic), can Applicant
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`submit actual test data to showthe criticality of this specific limitation that the invention
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`functions at 5% and below and does not function above 5%.
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`With respect to Claim 5, Bunyan teaches a method for manufacturing an
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`electronic device (fig. 1, 10), the method comprising: arrangingafilm (fig, 4, 44) having
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`graphite-based carbon (p. 7, |. 19) on a heat generating component (12), wherein one or
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`morefirst voids (p, 7, |. 11, “surface deformities”) are formed ata first surface (18) of the
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`film facing the heat generating component and one or more second voids (p, 7, |. 11,
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`“surface deformities”) are formed at a second surface (22) of the film facing the pressing
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`component, and the film is coated with a liquid heat conductive material (45 and p. 10, I.
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`10, “oil’); arranging a pressing component (20 applying force on 36) on the film and
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`compressing (p. 6, I. 9, 1-2 lbs/sq-ft) the film by the pressing component suchthat the
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`one or morefirst voids and the one or more second voids arefilled (see figs. 1 and 4)
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`with the liquid heat conductive material. Bunyan fails to disclose emitting an ultrasonic
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`wave from a side of the pressing component and detecting a reflected waveof the
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`ultrasonic wave, examining whether the one or morefirst voids and the one or more
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`second voids arefully filled with the liquid heat conductive material. Fukui teaches by
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`emitting (4[0089], I. 9) an ultrasonic wave ({[0089], |. 9) and detecting ({[0089], |. 9) a
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`reflected wave of the ultrasonic wave at the interfaces of the film, examining whether
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`the one or more voids arefullyfilled ({[0089], |. 10-11, “fully filled” filled 100%) would be
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`with the liquid heat conductive material ({[0089], I. 8, “solder” when heated).
`
`It would
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`have been obvious to one having ordinary skill in the art before the effective filing date
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`of the claimed invention was made thatit is commonly knownthat no problem related to
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`quality of the interface if the void percentage determined by this measurement is 5%or
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`lower ([0089], Il. 12-16), since it has been held that discovering an optimum value of a
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`result effective variable involves only routine skill in the art. /n re Boesch, 617 F.2d 272,
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`205 USPQ 215 (CCPA 1980).
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`It would have been obvious to one having ordinary skill
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`in the art before the effectivefiling date of the claimed invention was made to modify the
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`device of Bunyan with the ultrasonic waves of Fukui to provide as nondestructive means
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`to insure the void percentage is small enough that the operation of the electronic device
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`is not affected by the size of the voids. Fukui fails to disclose emitting an ultrasonic
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`wave from a side of the pressing component and examining whether the one or more
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`first voids and the one or more second voids arefully filled with the liquid heat
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`conductive material.
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`It would be obvious to one of ordinary skill at the time of
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`the invention, given the limited number of permutations of the sides that the ultrasonic
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`wave can be emitted from (i.e., side of the pressing component, or side of heat
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`generating component). The rationale to support a conclusion that the claim would have
`
`been obvious is that "a person of ordinary skill has good reason to pursue the
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`known options within his or her technical grasp. If this leads to the anticipated success,
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`it is likely that product [was] not of innovation but of ordinary skill and common sense. In
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`that instance the fact that a combination was obvious to try might showthat it was
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`obvious under § 103." KSR, 550 U.S. _at_, 82 USPQ2d 1385, at 1397 (2007).
`
`It would
`
`have been obvious to one having ordinary skill in the art before the effective filing date
`
`of the claimed invention was made to for the voids of Fukui to be first and second voids
`
`on opposing sides of Fukui’s substrate for the purpose of an acceptable surface defect
`
`level to insure required heat transfer between the film and mating surfaces are met,
`
`since it has been held that mere duplication of the essential working parts of a device
`
`involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
`
`With respect to Claim 6, Bunyan discloses the claimed invention except for when
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`an area of the one or morefirst voids is not less than or equal to 5% of an area of the
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`first surface, and an area of the one or more second voids is not less than or equal to
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`5%of an area of the second surface, the electronic device is determined as a defective
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`product. Fukui teaches an area of the one or more voids is not less than or equal to 5%
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`(¥[0089], |. 11) of an area of the surface, the electronic device is determined as a
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`defective product ({[0089], Il. 10-11).
`
`It would have been obvious to one
`
`having ordinary skill in the art before the effective filing date of the claimed invention
`
`was made thatit is commonly knownthat no problem related to quality of the interfaceif
`
`the void percentage determined by this measurement is 5%or lower (¥[0089], Il. 12-16),
`
`since it has been held that discovering an optimum value of a result effective variable
`
`involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA
`
`1980). Fukui fails to disclose an area of the one or morefirst voids is not less than or
`
`equal to 5%of an area ofthe first surface, and an area of the one or more second
`
`voids is not less than or equal to 5% of an area of the second surface. It would have
`
`been obvious to one having ordinary skill in the art before the effective filing date of the
`
`claimed invention was made to for the voids of Fukui to be first and second voids on
`
`opposing sides of Fukui’s substrate for the purpose of an acceptable surface defect
`
`level to insure required heat transfer between the film and mating surfaces are met,
`
`since it has been held that mere duplication of the essential working parts of a device
`
`involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
`
`16.
`
`Claim 3 is rejected under AIA 35 U.S.C. 103 as being unpatentable over
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`Bunyan (WO 2017/172703) and Tachibana (JP 2014-133669).
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`Bunyan discloses the claimed invention except for compressibility of the film is
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`more than or equal to 30%at a pressure of 100 kPa. Tachibana teaches
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`compressibility of the film (abs. I. 1) is more than or equal to 30%(density of 1.2 g/cm
`
`equals 53% density which allows for compressibility of at least 30% when air
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`is removed). It would have been obvious to one of ordinary skill in the art before
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`the effective filing date of the claimed invention to substitute the film of Tachibana for
`
`that of Bunyan for the purposeofthe film exerting a force on mating parts to insure
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`good thermal connection with the mating parts. Tachibana fails to specifically
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`disclose compressibility is more than or equal to 30%at a pressure of 100 kPa.
`
`It would
`
`have been obvious to one having ordinary skill in the art before the effective filing date
`
`of the claimed invention was madeto for the pressure to be any pressure including that
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`of 100 kPa that defines the amount of force applied to obtain the
`
`required compressibility value, since it has been held that discovering an opti