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United States Bvtent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
United States Patent and Trademark Office 
k COMMISSIONER FOR PATENTS 
P.O. Box 1450 

Akxmdra,Vngmia 22313-1450 
www.nspto.gov 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. 



CONFIRMATION NO. 



10/020,506 



12/11/2001 



Kalu K. Vasoya 



47490/RAG/S968 



8703 



23363 



7590 



07/15/2003 



CHRISTIE, PARKER & HALE, LLP 
350 WEST COLORADO BOULEVARD 
SUITE 500 

PASADENA, C A 91105 



EXAMINER 



XU, LING X 



ART UNIT 



PAPER NUMBER 



1775 

DATE MAILED: 07/15/2003 



ii 



Please find below and/or attached an Office communication concerning this application or proceeding. 



PTO-90C (Rev. 07-01) 



Office Action Summary 



Application No. 

10/020,506 



4 



Examiner 

Ling X. Xu 



Applicant(s) 

VASOYAETAL 



J34 



Art Unit 

.1775 



The MAILING DA TE f this communication appears on the cover sheet with the corresp nd nee address - 
Period for Reply 

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM 
THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be available under the provisions of 37 CFR 1136(a). In no event, however, may a reply be timely filed 
after SIX (6) MONTHS from the mailing date of this communication. 

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely. 

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from 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. § 1 33). 

- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any 
earned patent term adjustment. See 37 CFR 1 .704(b). 

Status 

1 )^ Responsive to communication(s) filed on 16 June 2003 . 
2a)E3 This action is FINAL. 2b)D This action is non-final. 

3) D 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 Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213. 
Disposition of Claims 

4) E3 Claim(s) 56-71 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) D Claim(s) is/are allowed. 

6) ^ Claim(s) 56-71 is/are rejected. 

7) D Claim(s) is/are objected to. 

8) D Claim(s) are subject to restriction and/or election requirement. 

Application Papers 

9) D The specification is objected to by the Examiner. 

10) D The drawing(s) filed on is/are: a)D accepted or b)Q 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). 

1 1) D The proposed drawing correction filed on is: a)D approved b)D disapproved by the Examiner. 

If approved, corrected drawings are required in reply to this Office action. 

12) D The oath or declaration is objected to by the Examiner. 
Priority under 35 U.S.C. §§119 and 120 

13) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f). 

a)DAII b)D Some*c)D None of: 

1 .□ Certified copies of the priority documents have been received. 

2.D Certified copies of the priority documents have been received in Application No. . 



3.Q Copies of the certified copies of the priority documents have been received in 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. 

14) D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 1 19(e) (to a provisional application). 

a) □ The translation of the foreign language provisional application has been received. 

15) D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121. 
Attachment(s) 

1 ) □ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3) Paper No(s). . 

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) 5) □ Notice of Informal Patent Application (PTO-1 52) 

3) S] Information Disclosure Statement(s) (PTO-1449) Paper No(s) 10 . 6) □ Other: 



U.S. Patent and Trademark Office 
PTO-326 (Rev. 04-01) 



Office Action Summary 



Part of Paper No. 11 



Application/Control Number: 10/020,506 
Art Unit: 1775 



Page 2 



DETAILED ACTION 

Response to Amendment 

1 . Applicant's amendments filed on 6/16/2003 have been entered. Claims 70-71 
have been added. Claim 69 was objected and would be allowed if rewritten in 
independent form in the prior Office action. However, applicant has amended claim 69 
to depend from claim 56 and broadened the scope of the claim. Accordingly, the 
indicated allowability of claim 69 has been withdrawn. 

Claim Rejections - 35 USC §112 

2. The following is a quotation of the first paragraph of 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 which it 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. 

Claims 56-71 are rejected under 35 U.S.C. 1 12, first paragraph, as failing to 
comply with the written description requirement. The claim(s) contains subject matter 
which was not described in the specification in such a way as to reasonably convey to 
one skilled in the relevant art that the inventor(s), at the time the application was filed, 
had possession of the claimed invention. 

Amended claims 56, 69 and 70 recite that at least one electrical connection 
exists between the carbon containing layer and the electronic device. The specification 
does not describe an electronic device having an electrically connection between the 
carbon containing layer and the electronic device. The recitation was not supported and 



Application/Control Number: 1 0/020,506 Page 3 

Art Unit: 1775 

described in the specification in such a way as to reasonably convey to one skilled in 
the relevant art that the inventor(s), at the time the application was filed, had possession 
of the claimed invention. 

In addition, in claim 70, lines 8 and 10, it recites the layer of electrically 
conductive material is patterned with circuit traces, the electrical connection between 
the carbon containing layer and the electronic device includes a trace on the layer of 
electrically conductive material. 

The recitations related to "circuit traces" and "a trace on the layer of electrically 
conductive material" were also not supported and described in the specification in such 
a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at 
the time the application was filed, had possession of the claimed invention. 

3. The following is a quotation of the second paragraph of 35 U.S.C. 1 12: 

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. 

Claim 70 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite 
for failing to particularly point out and distinctly claim the subject matter which applicant 
regards as the invention. 

In claim 70, line 8 and 10, it is unclear if one of the "circuit traces" is the same as 
the "trace" included in the electrical connection. 

It is also unclear if the layer of electrically conductive material is still electrically 
connected to the layer containing carbon when the layer of electrically conductive 



Application/Control Number: 1 0/020,506 Page 4 

Art Unit: 1775 

material is separated from the layer containing carbon by at least the layer of dielectric 
material. 

Claim Rejections - 35 USC § 102 

4. 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 56-61 , 64-68 and 71 are rejected under 35 U.S.C. 102(e) as being 
anticipated by Zweben et al. (US 4,888,247). 

With respect to claims 56-58, 66 and 71 , Zweben discloses a heat conducting 
laminate which is laminated to a printed wiring board on which were mounted the 
ceramic chip carriers (the "electronic device") (Col. 16, lines 10-25). The heat 
conducting laminate comprise at least one layer of polymer matrix composite material 
having low-thermal-expansion reinforcing material distributed throughout and embedded 
therein (Abstract). 

Zweben also discloses the polymer matrix material can be formed into the 
laminates by using preimpregnated sheets or films of the polymer matrix material with 
the reinforcing material integrally incorporated or embedded therein or by using uncured 
layers of polymer matrix composite material with the reinforcing material. The 
preimpregnated sheets are made of prepregs include carbon fibers in an epoxy resin 
matrix system ("the carbon containing layer") (Col. 9, lines 1-40). 

With respect to claims 58-59, Zweben discloses that the reinforcing material is in 
the form of particles including powder, and fabrics including fibers and woven fabrics 



Application/Control Number: 10/020,506 Page 5 

Art Unit: 1775 

(Col. 5, lines 30-40). The reinforcing material is also in the form of unidirectional 
orientation (Col. 17, lines 45-67). 

With respect to claims 60-61 , Zweben discloses the preimpregnated sheets of 
the polymer matrix material are made of prepregs include carbon fibers in an epoxy 
resin matrix system (Col. 9, lines 1-40). The preimpregnated sheet comprises the same 
components including the same resin impregnated into the carbon layer as claimed in 
claims 56-59, accordingly, the same laminate would also have the same properties such 
as electrically conductive and has a dielectric constant greater than 6.0 at 1 MHz. 

With respect to claim 64, Zweben discloses the reinforcing materials may include 
carbon, graphite, alumina, or boron nitride (Col. 10, lines 15-45). 

With respect to claims 65 and 71 , Zweben discloses the heat 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). The metal layer and the layer of polymer matrix composite 
material are electrically connected since both layers are made of electrically conductive 
materials as stated above. 

With respect to claims 67-68, Zweben also discloses the laminate comprises 
plurality of metal layers adjacent to each other in the laminates and a plurality of layers 
of polymer matrix composite material adjacent each other in the laminate (the layer 
contact with the metal layer functions the same as the claimed "prepregs layer")(Col. 8, 
lines 40-45). 



Application/Control Number: 1 0/020,506 Page 6 

Art Unit: 1775 

Zweben discloses all the limitations of claims 57-61, 64-68 and 71. 

Claim Rejections - 35 USC § 103 

5. Claim 62 stands rejected under 35 U.S.C. 103(a) as being unpatentable over 
Zweben et al for the reason of record in Paper No. 8. 

6. Claim 63 stands rejected under 35 U.S.C. 103(a) as being unpatentable over 
Zweben et al. in view of Durand et al. (US 5,326,636) for the reasons of record in Paper 
No. 8. 

Response to Arguments 

7. Applicant's arguments filed on 12/20/2000 have been fully considered but they 
are not persuasive. 

Applicant argues that, with respect to claims 56-59 and 66-68, that Zweben does 
not teach a printed wiring board on which an electronic device is mounted as recited in 
the amended claim 56 because Zweben discloses that the particular reinforcing material 
much not interfere with the electrical properties or any other properties of the electronic 
components or other type of component. 

Arguments are not commensurate in scope with the claims. Because the claims 
do not require the argued limitations that the particular reinforcing material to be 
interfere with the electrical properties or any other properties of the electronic 
components. 



Application/Control Number: 10/020,506 Page 7 

Art Unit: 1775 

As stated above, Zweben discloses the preimpregnated sheets of the polymer 
matrix material are made of prepregs include carbon fibers in an epoxy resin matrix 
system (Col. 9, lines 1-40). The preimpregnated sheet comprises the same 
components including the same resin impregnated into the carbon layer as claimed in 
claims 56-59 and described in the specification pages 7-8, accordingly, the same 
laminate would also have the same properties such as electrically conductive and has a 
dielectric constant greater than 6.0 at 1MHz. 

With respect to the argument related to claims 60-65, the USC 1 12(2) rejections 
have been withdrawn in light of applicant's amendments. 

Applicant argues, with respect to claim 62, that the Zweben does not teach the 
limitations of the claim. 

As stated above and in prior Office action, Zweben teaches all the limitations 
except the electrically conductive resin contains pyrolytic carbon additive. 

Zweben teaches the addition of carbon and graphite in the form of particles. 
Carbon, Graphite, and pyrolitic carbon are similar product and have similar properties in 
the polymer matrix composite. 

Therefore, it would have been obvious to one of ordinary skill in the art to use 
different carbon additives such as graphite, pyrolitic carbon in the polymer matrix 
composite layer because they are similar product and have similar properties in the 
polymer matrix composite. 



Application/Control Number: 10/020,506 
Art Unit: 1775 



Page 8 



With respect to claim 63, applicant argues that the Office action does not indicate 
the motivation to combine Zweben and Durand. The Examiner disagrees. 

As stated above and in the prior Office action, Zweben discloses all the 
limitations except the electrically conductive resin contains a silver oxide additive. 

Durand teaches the addition of conductive particle filler in the epoxy resins 
composite can improve long-term performance of the resins composite in high 
temperature and high humidity environments (Col. 6, lines 23-35). The preferred 
conductive particle filler is silver because its oxides are conductive in contrast to the 
insulating oxides of copper, nickel, tin (Col. 5, lines 50-60). 

Therefore, it would have been obvious to one of ordinary skill in the art to add 
silver oxide in the epoxy resins of the polymer matrix composite layer in order to 
increase the conductivity of the epoxy resins composite and improve its long-term 
performance. 

1 

With respect to claims 69-70, the Examiner acknowledges that Zweben does not 
disclose the newly added limitations, however, these limitations, as stated above, are 
not supported or described in the specification in such a way as to reasonably convey to 
one skilled in the relevant art that the inventor(s), at the time the application was filed, 
had possession of the claimed invention. 

If any of these limitations are explicitly supported by the original disclosure, 
applicant should indicate the page and line numbers where support is found. If support 



Application/Control Number: 10/020,506 Page 9 

Art Unit: 1775 

is considered to be implicit, applicants should clearly explain how these limitations are 
derived from the original disclosure. Any unsupported limitations are required to be 
deleted from the claims. 

Conclusion 

8. 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 
extension fee 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. 

9. Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to Ling X. Xu whose telephone number is 703-305-0395. 
The examiner can normally be reached on 8:00 - 4:30 Monday - Friday. 



Application/Control Number: 10/020,506 



Page 10 



Art Unit: 1775 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, Deborah D. Jones can be reached on 703-308-3822. The fax phone 
numbers for the organization where this application or proceeding is assigned are 703- 
872-9310 for regular communications and 703-872-931 1 for After Final 
communications. 

Any inquiry of a general nature or relating to the status of this application or 
proceeding should be directed to the receptionist whose telephone number is 703-308- 
0661. 



Ling X. Xu 



Examiner 
Art Unit 1775 



July 10, 2003 



Ix 



SUPERVISORY PATENT EXAMINER