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Appln No. 10/020,506 
Amdt date June 10, 2003 

Reply to Office action of April 9, 2003 

REMARKS/ARGUMENTS 

The following rejections and ^objections were made in the 
Office action of April 9, 2003: 

• Claims 60 - 65 were rejected under 35 U.S.C. §112 12 as being 
indefinite for failing to particularly point out and 
distinctly claim the subject matter which applicant regards as 
the invention; 

• Claims 56 - 61 and 64 - 68 were rejected under 35 U.S.C. 
§102 (e) as being anticipated by U.S. Patent 4,888,247 to 
Zweben et al. (The Zweben et al. patent); 

• Claim 62 was rejected under 35 U.S.C. §103 (a) as being obvious 
in light of the Zweben et al patent; 

• Claim 63 was rejected under 35 U.S.C. §103(a) as being obvious 
in light of the Zweben et al patent and U.S. Patent 5,326,626 
to Durand et al. (the Durand et al. patent); and 

• Claim 69 was objected to as being dependent upon a rejected 
base claim. 

Claim 56 

Claim 56 was rejected under 35 U.S.C. §102 (e) as 
anticipated by the Zweben et al . patent. The Office actions 
states that the Zweben et al . patent: 

. discloses a heat conducting laminate 
which is laminated to a printed wiring board 
(Col. 16, lines 10 - 25). The heat 



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Appln No. 10/020,506 
Amdt date Jun 10, 2003 

Reply to Office action of April 9, 2003 



conducting laminate comprise at least one 
layer of metal (''the electrically conductive 
layer") and at least one layer of polymer 
matrix composite material having low- 
thermal -expansion reinforcing material 
distributed throughout and embedded therein 
(''the carbon containing layer") (Abstract). 



Printed wiring boards typically serve the function of 
establishing electrical connections. However, Zweben et al. 
teach that: 



the particular reinforcing material 
must not interfere with the electrical 
properties or any other properties of the 
electronic components or other type of 
component in which it is ultimately utilized 
in the foinm of a heat transfer device (Col 
10, lines 11 - 15) . 



Therefore, Applicants respectfully submit that the Zweben 
et al . patent does not teach a printed wiring board on which an 
electronic device is mounted that includes: 



at least one carbon containing layer; 

and 



Appln No. 10/020,506 

Axndt date June 10, 2003 

Reply to 0££ice action o£ April 9, 2003 

wherein at least one electrical 
connection exists between the carbon 
containing layer and the electronic device. 

Claims 57 - 59 

Claims 57 - 60 depend from claim 56 and are respectfully 
submitted to be allowable for the reasons stated above. 

Claims 60-65 

Claims 60 - 65 were rejected under 35 U.S.C. §112 12 as 
being indefinite for failing to particularly point out and 
distinctly claim the subject matter which applicant regards as 
the invention. 

The following statement was made in the Office action: 

In claim 60 - 64, it is unclear if the 
resin is an electrically conductive resin by 
itself or becomes an electrically conductive 
resin after addition of the additives listed 
in claims 62 - 64 . 

In claim 65, it is unclear how the 
electrical connection between the carbon 
containing layer and the electrically 
conductive layer is established by contact 
between the carbon in the carbon containing 
layer and the electrically conductive layer. 
Since the carbon layer also contains 



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Appln No. 10/020,506 
Andt date Jtine 10, 2003 

Reply to Office action of April 9, 2003 



electrically conductive resin and the carbon 
is impregnated with the resin. 



Applicants submit that the conductivity of a resin is a 
function of the various materials and additives used in the 
composition of the resin. Applicants submit that claims 60 - 64 

simply include the limitation that the resin impregnated into 
the c"af56h coneaiTTing layer -be^ " ei-ectri-ca-li-y CGnduG-ti-ve" .- Claims 
62 - 64 include limitations that require particular additives to 
be present in the resin. 

Claim 65 has been amended to clarify that: 

an electrical connection between the 
carbon containing layer and the electrically 
conductive layer is established by contact 
between the electrically conductive resin 
impregnated into the carbon substrate in the 
carbon containing layer and the electrically 
conductive layer. 



Claim 62 was also rejected as being obvious in light of the 
Zweben et al. patent. Applicants submit that the Zweben et al. 
patent does not teach a patent including: 

at least one carbon containing layer; 
wherein at least one electrical 
connection exists between the carbon 
containing layer and the electronic device; 



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Appln No. 10/020,506 

Amdt date June 10, 2003 

Reply to 0££ice action o£ April 9, 2003 

wherein the carbon containing layer 
comprises a substrate containing carbon 
impregnated with a resin; and 

wherein the electrically conductive 
resin contains a pyrolytic carbon additive. 

Claim 63 was also rejected for being obvious in light of 
the Zweben" et a"! . patent and the -Burand -efe a-1 . -patent . -The 
Durand et al. patent contains teachings relating to electrically 
conductive cements that contain silver oxide. Applicants note 
that the Office action does not indicate the specific teaching 
in either of the cited prior art references that would motivate 
one of ordinary skill in the art to construct a printed wiring 
board that includes ''a carbon containing layer" that "comprises 
a substrate containing carbon that is impregnated with" any of 
the resins described in the Durand et al. patent. In addition, 
Applicants submit that the reasons stated above in support of 
the allowability of claim 56 also support the assertion that 
prior art cited in the Office action does not teach the 
limitations of claim 63. 

In light of the above comments. Applicants respectfully 
submit that claims 60 - 65 are in condition for allowance. 

Claims 66 - 68 

Claims 66 - 68 depend from claim 56 and are respectfully 
submitted to be allowable for the reasons stated above. 



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Appln No. 10/020,506 
Axndt dat Jtine 10, 2003 

R ply to 0££ice action o£ April 9, 2003 

Claim 69 

The previous Office action indicated that claim 69 would be 
allowed if rewritten in independent foinn. Applicants have 
amended claim 69 on account of the amendments to claim 56 and 
have also amended claim 69 to depend from claim 56. Applicants 
submit that claim 69 is allowable as none of the prior art of 
record teaches a printed wiring board on which an electronic 
cievi"^ i"s mounted "that iiici-udes-: 

at least one carbon containing layer; 

and 

wherein at least one electrical 
connection exists between the carbon 
containing layer and the electronic device; 
and 

wherein the electrical connection 
between the carbon containing layer and the 
electronic device includes a plated via 
extending through the carbon containing 
layer . 

Claim 70 

Applicants submit claim 7 0 is allowable as none of the 
prior art of record teaches a printed wiring board including: 

at least one carbon containing layer; 
a layer of electrically conducting 
material; 



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Appln No. 10/020,506 
Amdt date JUne 10, 2003 

Reply to 0££ice action o£ April 9, 2003 

a layer of dielectric material; 

wherein the layer of electrically 
conductive material is separated from the 
layer containing carbon by at least the 
layer of dielectric material; 

wherein the layer of electrically 
conductive material is patterned with 
crrcui't traces-; 

wherein at least one electrical 
connection exists between the carbon 
containing layer and the electronic device; 

wherein the electrical connection 
between the carbon containing layer and the 
electronic device includes a plated via 
extending through the carbon containing 
layer ; and 

wherein the electrical connection 
between the carbon containing layer and the 
electronic device includes a trace on the 
layer of electrically conductive material 
that contacts the plated via extending 
through the carbon containing layer. 



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Appln No. 10/020,506 

Axndt date June 10, 2003 

Reply to 0££ice action of April 9, 2003 



Conclusion 



For the reasons stated above. Applicants respectfully 
submit that all. pending claims are allowable and request a 
notice of allowance at the earliest opportunity- In addition to 
the reasons stated above, Applicants have enclosed a copy of the 
preliminary examination report issued by the International 
Preliminary Examining Authority in relation to an application 
-f-i-ied- -unde-2^ -the -Pa-tent -Gooperat ion Treaty (^^PCT" ) based on the 
above referenced application. Applicants note the similarity of 
claims 29 - 39 in the PCT case with the claims pending in the 
above referenced application and the favorable opinion provided 
in the Preliminary Examination Report in relation to these 
claims . 

Applicants also wish to draw the Examiner's attention to 
the enclosed document evidencing the limited recognition granted 
to David J. Bailey under 37 C.F.R. §10.9 (b) to practice before 
the United States Patent and Trademark Office. 



Respectfully submitted. 



CHRISTIE, PARKER & HALE, LLP 



By y^/ 

David J. BaiSrey^ ^/^ 

Limited Recognition Under 37 CFR 10.9(b) 




626/795-9900 



DJB/mlm 



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