DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/18/2025 has been entered.
Response to Amendment
The amendment of claims 1, 6, 9, 18 are supported by the specification. The new claims 21-23 are supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 1-4, 6-9, 11, 17-18, 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 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 or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the adhesive composition has a thermal conductivity of 1-3. However, the specification discloses the cured adhesive composition has the claimed thermal conductivity.
Claim Rejections - 35 USC § 103
Claims 1-4, 6-9, 11, 17-18, 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morita et al (US 2016/0215172) in view of Cocconi et al (US 2011/0174414) and Xu et al (CN102627937).
Claims 1-4, 8-9, 11, 17: Morita teaches a two component composition. The composition is an adhesive resin composition [0015-0018]. Component A comprises a polyol resin, boron nitride, and alumina. Component B of a polyisocyanate (example 1). The adhesive is a high thermally conductive adhesive [0101], having a thermal conductivity of at least 1 W/mK [0065]. One exemplary content of the total thermally conductive filler is 66wt%, content of the polyol is 34wt% based on the total weight of component A, and the mass ratio of alumina to boron nitride 50:50 to 75:25 [0053]. The polyisocyanate is a separate component before mixing with other ingredients. Case law holds that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It is noted that “present in an amount of no more than 30 wt%” includes zero.
Morita does not teach the polyol is a polyether polyol, the Mn of polyol, nor the chain extender.
However, Morita teaches any resin used in the field of electronic parts can be used and urethane resin is preferred [0039-0040]. Xu discloses a polyurethane adhesive composition for electronic devices and teaches the polyol used to form polyurethane can be a polyether polyol having a Mn of 600-3000 such as polyoxypropylene diol and a chain extender such as butanediol [0006, 0009-0014, 0019-0020]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize a polyether polyol and a chain extender to form urethane resin of Morita because it is recognized in the art it is suitable for making an adhesive for electronic devices.
Alternatively, Morita does not teach the molecular weight of the polyol nor a chain extender.
However, Cocconi discloses a similar adhesive composition and teaches the combination of two different polyols provides a polyurethane having excellent physical properties. The low molecular weight polyol provides the hardness for the resultant composition, while the high molecular weight composition provides elasticity to prevent the composition being too brittle [0022]. The low molecular weight polyol has a molecular weight of 100-600 which reads on a chain extender, the high molecular weight polyol has a molecular weight of 1500-8000 [0008]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize polyols having a high molecular weight and a low molecular weight like claimed to provide polyurethane with excellent physical properties.
Claim 18: Morita is silent with respect to the high volume resistivity of the cured composition. However, the combined teachings from Morita, Xu and Cocconi have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Claims 21-22: Cocconi teaches the low molecular weight polyol provides the hardness for the resultant composition, while the high molecular weight composition provides elasticity to prevent the composition being too brittle. The contents of these two polyols are result effective variables where the more high molecular weight polyol, the higher elasticity and lower hardness; the more low molecular weight polyol, the higher hardness and lower elasticity. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made adjust the contents of high and low molecular weight polyols, i.e. the ratio of the two polyols, through routine experimentation to balance between hardness and elasticity based on the final application requirement. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim 23: Morita teaches the adhesive resin composition comprises 50-80wt% of thermally conductive filler [0056]. Considering the content of polyisocyanate, the content of polyether polyol in the first component would overlaps the claimed range.
Claims 1-4, 6-9, 11, 17-18, 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al (CN102627937).
Claims 1-4, 6-9, 11, 17, 22-23: Xu teaches a two component composition. Component A comprises 30-60 parts of a polyether polyol resin, a chain extender, 120-250 parts of a thermal conductive filler. Component B of a polyisocyanate (0009-0014, 0017-0020). Example 3 use aluminum nitride as thermal conductive filler and example 4 use alumina. The thermal conductive filler can also be a mixture of aluminum nitride and zinc oxide, [0017, 0063]. An exemplary component A comprising 50 parts of polyol and 200 parts of filler results in a composition comprising about 20wt% of polyol and 80 wt% of filler considering the small amount of other ingredients. It is noted that “present in an amount of no more than 30 wt%” includes zero.
Xu does not explicitly component A comprises filler A1 in an amount of 30-80 wt% like claimed.
However, Xu discloses the filler may comprise one or more species, therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to prepare a blend like claimed, because when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, which would result in the content of filler A1 overlaps the claimed range, absent evidence of unexpected or surprising results. Case law holds that “[h]aving established that this knowledge was in the art, the examiner could then properly rely on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Alternatively, case law holds that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Combine example 3 and example 4 would result in a new composition comprising about 47wt% of alumina based on the total weight of the composition.
Alternatively, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The content of high and low thermal conductivity fillers would affect the final thermal conductivity of the composition. One skilled in the art would adjust the content of each filler by routine experimentation to achieve ideal final thermal conductivity of the composition depending on the final application.
Xu is silent with respect to the thermal conductivity of the composition. However, the teachings from Xu have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Claim 18: Xu is silent with respect to the high volume resistivity of the cured composition. However, the teachings from Xu have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Claim 21: Xu teaches the component A comprising 30-60 parts of polymer polyol, 1-3 parts of chain extender, 0.5-2 parts of catalyst, 0.5-2 parts of defoamer, 120-250 parts of modified thermal conductive filler [0009]. The content of chain extender is at least 1.95 wt%. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Response to Arguments
Applicant's arguments filed 8/18/2025 have been fully considered but they are not persuasive.
In response to applicant's argument regarding 112(a) rejection, the argument is insufficient because if the thermal conductivity can be determined for both the cured and uncured composition, applicant needs to provide an explanation why adhesiveness of an uncured adhesive is critical, because [0048] discloses “an advantageously balance between thermal conductivity and adhesiveness can be achieved”.
In response to applicant's argument that Xu is silent regarding the thermal conductivity of any of the fillers, it is noted that the fillers aluminum nitride and alumina are identical to the fillers disclosed in the instant specification, therefore they inherently possess the claimed thermal conductivity.
It is noted that unexpected results should be demonstrated by experimental data, be compared to the closest prior art, be really unexpected and be commensurate in scope with the scope of claims.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763