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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/22/2026 has been entered.
This action is responsive to Applicant's amendments/remarks filed 04/22/2026.
Claims 9, 12-14, 16, 18, and 21 are currently pending and under examination.
The rejection of claim 21 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above remarks.
The rejection of claim 10 under 35 U.S.C. 103 as being unpatentable over Zhang (WO 2018/068222 A1) in view of Hattori (JP 2017206624 A) is withdrawn in view of the cancellation of claim 10.
The rejection of claims 9, 12-14, 16, and 18 under 35 U.S.C. 103 as being unpatentable over Zhang (WO 2018/068222 A1) in view of Hattori (JP 2017206624 A) is maintained in view of the above amendments.
The rejection of claim 21 under 35 U.S.C. 103 as being unpatentable over Zhang (WO 2018/068222 A1) in view of Hattori (JP 2017206624 A), and further in view of Choi (US 2016/0116842 A1) is maintained 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 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, 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 and 13, the limitations “heat-resistant thermally conductive”, “a heat resistance improver”, “that prevents deactivation of the curing catalyst used for curing the addition-curable silicone polymer”, and “configured to conduct heat from a heat generating part to a heat dissipater” 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 also reads on the claimed sheet being configured to conduct heat from a heat generating part to a heat dissipater.
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 comprise 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 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, pentyltrimethoxysilane, hexyltrimethoxysilane, hexyltriethoxysilane, octyltrimethoxysilane, octyltriethoxysilane, decyltrimethoxysilane, decyltriethoxysilane, dodecyltrimethoxysilane, dodecyltriethoxysilane, hexadecyltrimethoxysilane, hexadecyltriethoxysilane, octadecyltrimethoxysilane, and octadecyltriethoxysilane.
However, Hattori teaches that component (D) the thermally conductive particles can comprise 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 thermally conductive filler such as 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 one or more thermally conductive fillers, and examples of the thermally conductive fillers include alumina and aluminum nitride ([0063]). Thus, the thermally conductive fillers of Zhang can further comprise aluminum nitride.
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 fillers 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 fillers of 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 further 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.
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 further teaches that the thermal interface material has a thermal conductivity at least 1 W/m·K (para [00104]), which overlaps with the claimed rang of “6.0 W/m·K or more”.
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 thermally conductive particles comprising alumina particles having an average particle size of 10 µm or less that are surface treated in advance with the same silane coupling agent, the same thermally conductive particles further comprising aluminum nitride, the same amount of the thermally conductive particles, 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 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 14, 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 falls within the claimed range of “0.2 to 10 mm”.
Regarding claim 16, 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 reads on the claimed benzimidazolone compound being a benzimidazolone pigment.
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, 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]). Choi also teaches that the pigment serves to express visibility ([0165]).
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 filed 04/22/2026 have been fully considered but they are not persuasive.
1. Applicant argues that Zhang only teaches that the TIM includes alumina particles and that the thermal interface material has a thermal conductivity of at least 1 W /m·K; there is nothing in Zhang, however, of any indication that the thermal interface material includes alumina and aluminum nitride, let alone, that the heat-resistant thermally conductive sheet has a thermal conductivity of 6.0 W/m·K or more and is configured to conduct heat from a heat generating part to a heat dissipater, as recited in claim 9 (p. 6, last para; p. 7, 1st para).
In response, Applicant’s arguments are not persuasive.
Zhang teaches that the thermal interface material (TIM) includes one or more thermally conductive fillers, and the examples of the thermally conductive fillers include alumina and aluminum nitride ([0063]). Thus, the thermal interface material of Zhang can comprise alumina and aluminum nitride.
Zhang also teaches that the thermal interface material has a thermal conductivity at least 1 W/m·K (para [00104]), which overlaps with the claimed rang of “6.0 W/m·K or more”. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Thus, the invention as a whole would be obvious to a person of ordinary skill in the art.
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), which reads on the claimed sheet being configured to conduct heat from a heat generating part to a heat dissipater.
2. Applicant argues that there is nothing in Hattori, however, of any indication that the thermal interface material includes alumina and aluminum nitride, let alone, that the heat-resistant thermally conductive sheet has a thermal conductivity of 6.0 W/m·K or more and is configured to conduct heat from a heat generating part to a heat dissipater, as recited in Claim 9 (p. 7, 2nd para).
In response, Applicant’s arguments are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP 2145 IV.
The Office uses Hattori as a secondary reference for primary reference Zhang.
As discussed in claim 9 above, 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.
Furthermore, 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 thermally conductive filler such as 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, Hattori teaches that a thermally conductive composition comprises at least one thermally conductive particles ([0019], [0042]), and examples of the thermally conductive particles include alumina and aluminum nitride ([0035]). Thus, the thermally conductive composition of Hattori can comprise alumina and aluminum nitride.
Hattori also teaches that the thermal conductivity of the thermally conductive composition is 0.8 W/m·K or more ([0011]), which overlaps with the claimed rang of “6.0 W/m·K or more”.
Hattori also teaches that the thermally conductive composition is molded into a sheet ([0042], [0019]), the thermally conductive sheet has good thermal conductivity and can be used to transfer heat in heat-generating semiconductors ([0011], [0016]).
3. Applicant argues that only through the present disclosure is one having ordinary skill in the art taught of the combination of features as recited in claim 9, which result in an unexpected result; for example, as discussed at [0055], when the heat-resistant thermally conductive sheet includes both alumina particles and also aluminum nitride that are mixed, the resulting heat-resistant thermally conductive sheet had superior results than the comparative example (see seen in Table 6) (p. 8).
In response, Applicant’s arguments are not persuasive.
Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest prior art. See In re De Blawe, 222 USPQ 191 (FED. Cir. 1984), and In re Fenn, 208 USPQ 470 (CCPA 1981). See MPEP § 716.02(e).
Example 4 and Comparative Example 4 at [0055] of the instant specification (instant Tables 5-6) are no probative value in the determining patentability of claims since they do not involve a comparison of Applicant's invention with the closest applied prior art. Example 4 and Comparative Example 4 at [0055] of the instant specification (instant Tables 5-6) are limited to a composition with a benzimidazole compound (Example 4) compared to a comparative example lacking said benzimidazolone compound (Comparative Example 4). Zhang constitutes closer prior art than Applicant's comparative example (Comparative Example 4), because a benzimidazole compound is an expressly taught pigment in Zhang (Zhang para [0067], [0070], [0086]), and the thermal interface material of Zhang can comprise both alumina and aluminum nitride as recognized by Zhang (Zhang para [0063]).
Even if, arguendo, the comparison was done between the Applicant's invention and the closest prior art, the claims are not deemed patentable over the reference of record since they are not commensurate in scope with the probative value of data in the examples. The claims are not commensurate in scope with the comparative showing, because Example 4 is limited to a specific species of benzimidazolone compound (PY 181, see Tables 5-6) whereas the claims broadly include any benzimidazolone compound free of a metal atom. See In re Clemens, 206 USPQ 289 (CCPA 1980).
Conclusion
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
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