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 .
Election/Restrictions
Applicant’s election of species of the composition of claim 1 in the reply filed on 5/11/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
Claims 24-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/11/2026.
Response to Amendment
The amendment of claims 1, 8-9, 22 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Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.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.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 3/3/2026. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
Claims 1-4, 6-9,17-18, 22-23 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, 17-18, 22-23 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, 6-9, 17, 22-23: 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 20:80 to 80:20 [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. The thermally conductive fillers read on the at least one additive because the claim does not distinguish those components.
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, triol or tetraol and a chain extender such as butanediol, the polyisocyante can be MDI etc. [0006, 0009-0014, 0018-0020]. 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 a polyether polyol and a chain extender to form urethane resin of Morita to provide polyurethane with excellent physical properties.
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 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.
Response to Arguments
Applicant's arguments filed 5/11/2026 have been fully considered but they are not persuasive.
In response to applicant's argument regarding 112(b) rejection, it is noted that that [0076] discloses the thermal conductivity is determined for the cured composition. The rejection will be withdrawn if applicants provide a statement that the thermal conductivity would be the same or similar for cured and uncured composition.
In response to applicant's argument regarding secondary references, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that Morita’s example does not teach the claimed amounts of each thermally conductive filler, case law holds that the disclosure of a reference is not limited to preferred embodiments or specific working examples therein. In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 570 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976). A reference is relevant for all that it contains, including non-preferred embodiments because a non-preferred portion of a reference is just as significant as the preferred portion in assessing the patentability of claims. In re Heck, 669 F.2d 1331, 1333, 216 USPQ 1038, 1039 (Fed. Cir. 1983), In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Morita teaches any resin used in the field of electronic parts can be used and urethane resin is preferred; Xu discloses a polyurethane adhesive composition for electronic devices and teaches the polyol used to form polyurethane can be a polyether polyol and a chain extender, Cocconi discloses a adhesive composition and teaches the combination of two different polyols provides a polyurethane having excellent physical properties.
Conclusion
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 date of this final action.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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