Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is responsive to Applicant's amendments/remarks filed 12/16/2025.
Claims 9, 10, 12-14, 16, 18, and 21 are currently pending and under examination.
The rejection of claims 1, 4, 8-10, 12-14, 16, and 18 under 35 U.S.C. 103 as being unpatentable over Zhang (WO 2018/068222 A1, hereinafter Zhang) in view of Imai (US 2003/0180484 A1, hereinafter Imai) is withdrawn in view of the above amendments.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 21 is objected to because of the following informalities:
Claim 21 recites “Pigment Yellow 194; Pigment Orange 36”. Applicant is suggested to revise the semicolon punctuation “;” as the comma punctuation “,” and to revise “Pigment Yellow 194; Pigment Orange 36” as “Pigment Yellow 194, Pigment Orange 36” for clarity.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) 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-AIA ), second paragraph:
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 21 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 21 contains the trademark/trade names “Pigment Yellow 120, Pigment Yellow 151, Pigment Yellow 154, Pigment Yellow 175, Pigment Yellow 180, Pigment Yellow 181, Pigment Yellow 194, Pigment Orange 36, Pigment Orange 60, Pigment Orange 62, and Pigment Orange 72”.
Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the benzimidazolone compound and, accordingly, the identification/description is indefinite.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
1. Claims 9, 10, 12-14, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (WO 2018/068222 A1, hereinafter Zhang) in view of Hattori (JP 2017206624 A, hereinafter Hattori).
Regarding claims 9, 13, 14, and 16, the limitations “heat-resistant thermally conductive”, “a heat resistance improver”, and “that prevents deactivation of the curing catalyst used for curing the addition-curable silicone polymer” are an intended result/use and do not add structural difference, thus the intended result/use is extended little patentable weight. See MPEP § 2112.02.
Zhang teaches a thermal interface material comprising a polymer, at least one thermally conductive filler, and a coloring agent which can be an organic pigment (para [0008]; claim 1). Zhang also teaches that the thermal interface material is positioned between the heat generating component (e.g. computer chips) and the heat dissipating component (e.g. heat spreaders or heat sinks) for heat transfer (para [0003], [0007], Fig. 1), and the thermal interface material is screen printed at a thickness of 0.5 mm (para [0021]-[0051], Figs. 3-12), which reads on the claimed sheet, and falls within the claimed range of “0.2 to 10 mm”.
Zhang also teaches that the polymer can be a silicone polymer (para [0059]).
Zhang does not teach that the silicone polymer is an addition-curable silicone polymer using a curing catalyst.
However, Hattori teaches ([0019], [0042]) a thermally conductive composition comprising:
component (A) a base polymer component: an organopolysiloxane containing, on average, two or more silicon atoms bonded to alkenyl groups per molecule, which reads on the claimed component (A);
component (B) a crosslinking component: an organohydrogenpolysiloxane containing, on average, two or more silicon atoms bonded to hydrogen atoms per molecule, in an amount of less than 1 mole of the silicon atoms with respect to 1 mol of the silicon-bonded alkenyl groups in the component (A), which reads on the claimed component (B), and overlaps with the claimed range of “0.01 to 3 mol”;
component (C) a platinum-based metal catalyst: in an amount of 0.01 to 1000 ppm in terms of a weight unit of metal atoms with respect to component (A) ([0019], [0034]), which reads on the claimed component (C), and overlaps with the claimed range of “0.01 to 1000 ppm”;
component (D) thermally conductive particles.
Hattori also teaches that Si-H groups in component (B) reacts with the alkenyl groups in component (A) in the presence of component (C) a platinum-based metal catalyst through an addition reaction (hydrosilylation) to form a cured product ([0028]).
Hattori further teaches that the thermally conductive composition comprising components (A)-(D) is molded into a sheet and cured ([0042], [0019]).
Hattori further teaches that the thermally conductive sheet has high thermal conductivity and can be used to transfer heat in heat-generating semiconductors ([0011], [0016]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide component (A) a base polymer component, an organopolysiloxane containing, on average, two or more silicon atoms bonded to alkenyl groups per molecule, component (B) a crosslinking component, an organohydrogenpolysiloxane containing, on average, two or more silicon atoms bonded to hydrogen atoms per molecule, in an amount of less than 1 mole of the silicon atoms with respect to 1 mol of the silicon-bonded alkenyl groups in the component (A), and component (C) a platinum-based metal catalyst in an amount of 0.01 to 1000 ppm in terms of a weight unit of metal atoms with respect to component (A) as taught by Hattori as the silicone polymer in Zhang, in order to make a thermal interface material which transfers heat for heat generating electronic devices with a reasonable expectation of success, because the alkenyl organopolysiloxane reacts with the organohydrogenpolysiloxane in the presence of the platinum-based metal catalyst to form a cured product, a silicone sheet as recognized by Hattori, and this cured product, the silicone sheet of Hattori and the silicone polymer of Zhang both work as a polymer in a thermal interface material sheet to transfer heat for heat-generating semiconductors as art recognized.
Furthermore, Zhang teaches that the thermally conductive filler can be alumina (para [0063]), and the thermally conductive filler can have an average particle diameter (D50) of 0.5 microns to 10 microns (para [0064]), which falls within the claimed range of “10 µm or less”, and reads on the claimed component (D) thermally conductive particles.
Zhang also teaches that the thermal interface material can comprise the polymer in a total amount of 1 wt. % to 5 wt. % based on the total weight of the thermal interface material (para [0062]), and the thermal interface material can comprise the thermally conductive filler in a total amount of 85 wt. % to 95 wt. % based on the total weight of the thermal interface material (para [0066]). Thus, the thermally conductive filler as taught by Zhang can be present in an amount of 1700 to 9500 parts by mass with respect to 100 parts by mass of an amount of a polymer, which overlaps with the claimed range of “100 to 4000 parts by mass with respect to 100 parts by mass of an amount of the matrix resin”.
Zhang also teaches that the thermal interface material can comprise a silane coupling agent (para [0088]).
Zhang does not teach that the alumina particles are surface treated in advance with a silane coupling agent that is at least one selected from the group consisting of methyltrimethoxysilane, ethyltrimethoxysilane, propyltrimethoxysilane, butyltrimethoxysilane, pentyltrimethoxvsilane, hexyltrimethoxvsilane, hexyltriethoxvsilane, octyltrimethoxvsilane, octyltriethoxysilane, decyltrimethoxysilane, decyltriethoxysilane, dodecyltrimethoxysilane, dodecyltriethoxysilane, hexadecyltrimethoxysilane, hexadecyltriethoxysilane, octadecyltrimethoxvsilane, and octadecyltriethoxvsilane.
However, Hattori teaches that component (D) the thermally conductive particles can be alumina, and have an average particle size of 0.1 to 100 μm ([0035]).
Hattori also teaches that the thermally conductive particles are surface-treated with a silane compound in order to prevent the platinum catalyst from being inhibited from curing, and the silane compound can be methyltrimethoxysilane, ethyltrimethoxysilane, propyltrimethoxysilane, butyltrimethoxysilane, pentyltrimethoxysilane, hexyltrimethoxysilane, hexyltriethoxysilane, octyltrimethoxysilane, octyltriethoxysilane, decyltrimethoxysilane, decyltriethoxysilane, dodecyltrimethoxysilane, dodecyltriethoxysilane, octadecyltrimethoxysilane, or octadecyltriethoxysilane ([0037]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to surface treat the alumina filler having an average particle diameter (D50) of 0.5 microns to 10 microns as taught by Zhang in advance with the silane compound such as methyltrimethoxysilane as taught by Hattori, in order to prevent the platinum catalyst from being inhibited from curing with a reasonable expectation of success.
Furthermore, Zhang teaches that the thermal interface material comprises a coloring agent which can be an organic pigment such as a benzimidazolone pigment, and the benzimidazolone pigment can be the blue shade benzimidazolone pigment Novoperm Carmine HF3C from Clariant International Ltd, Muttenz Switzerland (para [0067]), and Novoperm Carmine HF3C from Clariant International Ltd, Muttenz Switzerland is the organic pigment of Formula (I) having the chemical formula C32H24N6O5 (para [0086], [0070]), which reads on the claimed benzimidazolone compound that contains no metal atom, and also reads on the claimed benzimidazolone pigment.
The intended use/result of the above claimed component (i.e. a heat resistance improver) does not patentably distinguish the composition, per se, since such undisclosed use/result is inherent in the reference composition. In order to be limiting, the intended use/result must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use/result does not create a structural difference, thus the intended use/result is extended little patentable weight. See MPEP § 2112.02.
Zhang also teaches that the thermal interface material comprises the coloring agent in an amount of 0.1 wt. % to 10 wt. % based on 100 wt. % of the thermal interface material without the coloring agent (para [0087]), equaling to the coloring agent in an amount of 0.1 to 9.1 parts by mass with respect to 100 parts by mass of the thermal interface material with the coloring agent, which overlaps with the claimed range of “0.1 to 5 parts by mass with respect to 100 parts by mass of an amount of the heat-resistant thermally conductive sheet”.
Zhang does not teach that the thermal interface material/sheet has an Asker C hardness of 70 or less after curing, and a rate of increase in the Asker C hardness of the thermal interface material/sheet that has been exposed to a temperature of 150° C or 220° C for 250 hours or more is 80% or less as compared with a case where the thermal interface material/sheet does not contain the benzimidazolone compound.
However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect that the property of the Asker C hardness of 70 or less after curing the sheet, and the rate of increase in the Asker C hardness of the sheet that has been exposed to a temperature of 150°C or 220°C for 250 hours or more being 80% or less as compared with a case where the sheet does not contain the benzimidazolone compound, would flow naturally from the teachings of the combination of Zhang and Hattori, because the teachings of the combination of Zhang and Hattori provide substantially the same sheet comprising the same matrix resin that is an addition-curable silicone polymer using a curing catalyst, the same amount of the same thermally conductive particles containing the same alumina particles that are surface treated in advance with the same silane coupling agent, and the same amount of the same benzimidazolone compound with no metal atom as claimed. Thus, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 10, Zhang teaches that the thermal interface material has a thermal conductivity at least 1 W/m·K (para [00104]), which falls within the claimed rang of “0.8 W/m·K or more”.
Regarding claim 12, Hattori teaches that the thermally conductive particles are surface-treated with a silane compound in order to prevent the platinum catalyst from being inhibited from curing ([0037]), and the silane compound can be added in an amount of 1% by mass in the thermally conductive particles (e.g. alumina) ([0042]), equaling to 1 part by mass with respect to 100 parts by mass of the thermally conductive particles, which falls within the claimed range of “0.01 to 10 parts by mass”.
Regarding claim 18, Zhang teaches that the thermally conductive filler includes alumina, aluminum nitride, boron nitride, zinc oxide, and combinations thereof (para [0063]).
2. Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang (WO 2018/068222 A1, hereinafter Zhang) in view of Hattori (JP 2017206624 A, hereinafter Hattori) as applied to claims 9, 10, 12-14, 16, and 18 above, and further in view of Choi (US 2016/0116842 A1, hereinafter Choi).
The disclosure of Zhang in view of Hattori is relied upon as set forth above.
Regarding claim 21, Zhang teaches that the thermal interface material comprises a coloring agent, and the coloring agent can be an organic pigment which includes a benzimidazolone pigment ([0067]).
Zhang does not teach that the benzimidazolone compound is selected from the group consisting of Pigment Yellow 120, Pigment Yellow 151, Pigment Yellow 154, Pigment Yellow 175, Pigment Yellow 180, Pigment Yellow 181, Pigment Yellow 194, Pigment Orange 36, Pigment Orange 60, Pigment Orange 62, and Pigment Orange 72.
However, Choi teaches a resin composition comprising a resin, a filler, and a pigment ([0051]), wherein the pigment can be a benzimidazolone-based pigment, such as Pigment Yellow 151 ([0166]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the benzimidazolone-based pigment such as Pigment Yellow 151 as taught by Choi as the benzimidazolone pigment in Zhang, in order to express visibility with a reasonable expectation of success. Thus, the invention as a whole would be obvious to a person of ordinary skill in the art.
Response to Arguments
Applicant's arguments with respect to the prior rejections have been considered but are moot, because the arguments do not apply to all of the references being used in the current rejection. The current rejection utilizes a new reference, Hattori (JP 2017206624 A), in addition to the previous reference Zhang (WO 2018/068222 A1) under a new ground(s) of rejection which renders obvious the instant claims.
As stated above, claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang (WO 2018/068222 A1) in view of Hattori (JP 2017206624 A).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761