DETAILED ACTION
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 .
The response filed 4/27/2026 has been entered. Claims 1-4, 6, 8-9, 12, 14-15, 18, 21, 24-29 are pending in the application. Please note that the residual underlining in “Previously Presented” Claim 1, under the comma at the end of line 7 and under the comma at the end of line 14 should be removed in the next Listing of the Claims submitted by Applicant. Claims 9, 12, 14-15, 18, 21, and 24-29 have been withdrawn from consideration. 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 Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Further, as recited in MPEP § 2111.03, “The transitional term ‘comprising’, which is synonymous with ‘including,’ ‘containing,’ or ‘characterized by,’ is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004).”
Claim Rejections - 35 USC § 103
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Nam (KR20100079046A, please refer to attached machine translation for the below cited section) for the reasons recited in the prior office action and restated below, wherein it is noted that with respect to at least instant claim 1, both “3-methacryloxypropyl tris (trimethylsiloxy) silane” and tetraethoxysilane as utilized in the examples of Nam read upon the claimed “silane compound” represented by the claimed Chemical Formula 1, given that claim 1 does not require the claimed “25 to 75 wt% of the silane compound” to be constituted by a single silane compound represented by Chemical Formula 1 versus a combination of two or more silane compounds represented by Chemical Formula 1, especially in light of the instant specification (as filed, see for example, page 12, lines 5-7 which states that a “singular form used herein includes a plural form as long as phrases do not express a clearly opposite meaning,” and particularly the paragraph bridging pages 3-4 which recites that the “silane compound may include at least one of triacetoxy(methyl)silane, triacetoxy(vinyl)silane, dimethyldimethacroyloxy-1-ethoxysilane, and 3-(trimethoxysilyl) propylmethacrylate,” emphasis added).
As discussed in the prior office action, Nam teaches a siloxane-based heat-dissipating composition including organosilane compounds to be applied to a metal substrate, such as a steel substrate, that forms a film having excellent heat-radiating properties and excellent processability, corrosion resistance, solvent resistance, film adhesion, and electrical insulation (Abstract, pp. 1-2). Nam teaches that the composition comprises a binder resin and a filler, wherein the binder resin comprises, based on 100 parts by weight of total solid content of the binder resin (Entire document, particularly pp. 1-5 and Examples), (a) 5 to 75 parts by weight of aqueous colloidal silica or alcoholic colloidal silica; (b) 0.1 to 50 parts by weight of an organosilane represented by chemical formula (1) R1aSi(OR2)4-a, or a hydrolysate or partial condensate thereof; and (c) 10 to 60 parts by weight of an organosilane represented by chemical formula (2) R3bSi(OR4)4-b, or hydrolysate or partial condensate thereof; and the filler comprises, based on 100 parts by weight of the total solid content of the binder, (d) 1 to 300 parts by weight of a thermally conductive metal or carbon compound; and (e) 0.1 to 10 parts by weight of a metal alkoxide, metal salt, metal complex compound represented by chemical formula (3) R5M(OR6)3-c or R5cM(OR7)3-c, a hydrolysate thereof, or a partial condensate thereof; and in one embodiment, may further comprise (f) 10 to 50 parts by weight of a C1-12 ketone or diketone (p. 3 and p. 5, first full paragraph); wherein R1 and R2 are each independently selected from a C1-6 alkyl group, alkenyl group, halogenated alkyl group, allyl group and aromatic group; R3 and R4 are each independently C1-6 alkyl group, a cycloalkyl group, an alkenyl group, a cycloalkenyl group, a halogenated alkyl group, an aryl group, and an aromatic group, which is unsubstituted or substituted with a substituent selected from a vinyl group, a phenyl group, a halogen group, a nitro group, a nitrile group, an amino group, an acryl group, an epoxy group, a mercapto group and an amide group; R5 is selected from C1-6 alkyl group, alkenyl group, halogenated alkyl group and allyl group; R6 and R7 are each independently C1-6 alkyl group; M is selected from metal atoms; a is an integer of 0 to 3; b is an integer of 1 to 3; and c is an integer of 0 to 3 (p. 3).
Nam teaches that examples of the organosilane (c) represented by formula (2) include 3-methacryloxypropyltrimethoxysilane (also known as 3-(trimethoxysilyl)propyl methacrylate as in Table 1 of the present application) which is utilized in the working examples and reads upon the claimed silane compound as represented by the claimed Chemical Formula 1 of instant claim 1 and particularly by the claimed Chemical Formula 2 of instant claim 2 and as specifically recited in instant claim 3 (p. 4, third paragraph, and Examples); while examples of the thermally conductive metal or carbon compound (d) include boron nitride and aluminum nitride, which are specifically utilized in the working examples, as well as metal powder selected from the group consisting of aluminum, zinc, nickel, copper, calcium, potassium, iron, silver, and gold, and oxides, hydrates, and metal salts thereof (p. 4, last full paragraph, and Examples). Nam teaches that the content of the binder resin (e.g., components (a)-(c) above) is preferably 20 parts by weight or more based on 100 parts by weight of the heat dissipation resin composition, and that the heat dissipation resin composition may further comprise at least one additive selected from a curing catalyst, a pigment agglomeration preventing dispersant, or an antifoaming agent; wherein the curing catalyst may be an acidic catalyst or may be a base catalyst such as caustic soda (i.e., sodium hydroxide, NaOH) and potassium hydroxide (KOH, reading upon the claimed “metal hydroxide”) and present in a content of 5 weight parts or less, based on 100 parts by weight of the heat dissipating resin composition (p. 5, second through fourth full paragraphs).
Nam teaches a working example composition comprising, on a total solids content of the composition, about 20.5 wt% of 3-methacryloxypropyltrimethoxysilane (e.g., reading upon the claimed Chemical Formula 1 of instant claim 1 as well as the claimed Chemical Formula 2 of instant claim 2, and the same as the recited “3-(trimethoxysilyl)propyl methacrylate” of instant claim 3), about 8.2 wt% of tetraethoxysilane (i.e., Si(OCH2CH3)4, and also reading upon the claimed silane compound represented by Chemical Formula 1 with the claimed R1 being an alkoxy group and m being 4, and hence a combined total of about 28.7 wt% of silane compounds represented by the claimed Chemical Formula based on a total solids content of the composition), about 16.4 wt% of colloidal silica, about 0.6 wt% of titanium isopropoxide, about 24.6 wt% of alumina powder, about 16.4 wt% of zinc powder, about 8.2 wt% of boron nitride (reading upon the claimed metal nitride of instant claims 1 and 6 in a content as recited in instant claim 1), 4.1 wt% aluminum nitride (reading upon the claimed metal nitride as recited in instant claims 1 and 6 in a content as recited in instant claim 1, taken alone or in combination with the boron nitride), and about 0.8 wt% of graphite; wherein with respect to 100 parts by weight of total solid content of the binder resin components (a)-(c), the 3-methacryloxypropyl trimethoxysilane as component (c) constitutes about 45.5 weight parts (Example 1); and given that as discussed in detail above, Nam clearly teaches that component (c) may be present in a content of up to 60 parts by weight with respect to 100 parts by weight of the total of components (a)-(c); that the composition may further comprise NaOH or KOH in a content of 5 weight parts or less, based on 100 parts by weight of the total heat dissipating resin composition; and that the composition may be coated onto a steel substrate to provide a coating film thereon having excellent heat-radiating properties and excellent processability, corrosion resistance, solvent resistance, film adhesion, and electrical insulation, Nam clearly teaches and/or suggests a steel sheet comprising an insulating coating on one or both surfaces thereof, wherein the insulating coating is formed from a coating composition comprising a silane compound represented by Chemical Formula 1, a metal hydroxide, and a metal nitride, in contents falling within the instantly claimed wt% ranges based on the total solids content of the coating composition/insulating coating.
Hence, the only differences between the teachings and/or suggestions of Nam and the claimed invention as recited in instant claims 1-3 and 6, are that Nam does not specifically recite that the steel sheet is an “electrical” steel sheet and that the resulting “electrical” steel sheet satisfies the claimed General Formula 1 such that the electrical steel sheet has a thermal conductivity of 20 to 200 W/mK as instantly claimed. However, given that Nam does not limit the type of steel or metal substrate to which the insulating coating is applied and specifically refers to electronic devices or electrical applications, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize an “electrical” steel substrate, an obvious species of steel or metal substrate in the art, in the invention taught by Nam given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results. As to the claimed thermal conductivity as instantly claimed, Nam generally teaches that the heat-dissipating coating film has excellent heat radiating and dissipating properties, and that the thermally conductive materials (d) have the function of improving the thermal conductivity and thermal radiation properties of the composition, wherein the thermal conductivity can be controlled by the selection and content of the thermal conductive materials (d) (Entire document); and given that Nam teaches that the composition may comprise the same components and in contents as in the instantly claimed invention, and that the thermally conductive filler may be present in an amount of up to 300 parts by weight to 100 parts by weight of the total solids of the binder resin components (a)-(c), with exemplified thermally conductive fillers including boron nitride and aluminum nitride as discussed above, both of which are utilized in the working examples and have very high thermal conductivity values with aluminum nitride known to have a thermal conductivity of about 70 W/mK to as high as or over 300 W/mK, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results with respect to the claimed thermal conductivity range, the claimed invention as recited in instant claims 1-3 and 6 would have been obvious over the teachings of Nam wherein one skilled in the art would have been motivated to determine the optimum type and content of thermally conductive filler to provide the desired properties including excellent thermal conductivity for a particular end use of the invention taught by Nam.
With respect to instant claim 4, given that at least the claimed barium hydroxide is a known base catalyst in the art that is functionally equivalent to NaOH and KOH for use in silane/siloxane compositions (as evidenced by Heikkinen, US2017/0152350A1, Paragraph 0044, Claim 3), the claimed invention as recited in instant claim 4 would have been obvious over the teachings of Nam given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Claims 1-4, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ichie (US2020/0399731A1) in view of Nam (KR20100079046A, please refer to the attached machine translation for the below cited section), or alternatively, unpatentable over Nam as applied above in view of Ichie, for the reasons recited in the prior office action and restated below.
Ichie teaches an electrical steel sheet comprising a silicon steel sheet and an insulation coating provided thereon, wherein the silicon steel sheet includes, as a chemical composition, by mass %: 0.0030% or less of C (reading upon the claimed 0.01 wt% or less); 0.01 to 3.50% of Si (reading upon the claimed 6.0 wt% or less); 0.180% or less of P (reading upon the claimed 0.5 wt% or less); 0.0030% or less of S (reading upon the claimed 0.005 wt% or less); 0.01 to 3.00% of Mn (reading upon the claimed 0.1 to 1.0wt%); 0.0010 to 2.500% of Al (reading upon the claimed 0.40 to 2.0wt%); 0.0030% or less of N (reading upon the claimed 0.0005 wt% or less); 0.002% or less of B (thus can be 0% or inevitable impurity); at least one of 0.0500% or less of Sb or 0.0100 to 0.200% of Sn (reading upon the claimed 0.01 to 0.15wt% of Sb, Sn, Ni, or combination thereof); and the balance consisting of Fe and impurities (Entire document, particularly Abstract, Claims 1-2; reading upon the instantly claimed “electrical steel sheet substrate” as in instant claim 1 and particularly the claimed composition that “consists” of the elements as in instant claim 8). Ichie teaches that the electrical steel sheet may be utilized in various electrical applications for electrical equipment or electrical components (Paragraphs 0003-0009, 0154, and 0165), and that the insulation coating to be applied to the surface of the electrical steel sheet “is not particularly limited, and may be selected depending on the intended end use and the like from the known coating” (Paragraph 0117). Ichie teaches that the insulation coating may be an organic coating, such as one comprising silicone (polysiloxane) resin, or an inorganic coating, such as an aluminum phosphate-based coating; and although Ichie teaches that the insulation coating may also be an organic-inorganic coating containing any of the mentioned resins such as silicone resin, Ichie does not teach that the organic-inorganic insulation coating is formed from a coating composition as instantly claimed (Paragraphs 0117-0119).
However, as discussed in detail above and incorporated herein by reference, Nam teaches a siloxane-based heat-dissipating composition including organosilane compounds to be applied to a metal substrate, such as a steel substrate, that forms a film having excellent heat-radiating properties and excellent processability, corrosion resistance, solvent resistance, film adhesion, and electrical insulation (Abstract, pp. 1-2), wherein the coated metal or steel may be utilized in electronic devices or electrical applications as discussed above, and wherein as detailed above, the coating composition of Nam reads upon and/or suggests the claimed composition as recited in instant claims 1-4 and 6. Hence, given that Nam teaches that the siloxane-based heat-dissipating composition may be utilized to form a coating film having excellent electrical insulation on a metal substrate such as a steel substrate that may be utilized in electrical applications (as in Ichie), and that Ichie generally teaches that the electrical steel sheet may be coated with an organic-inorganic insulation coating based on silicone/siloxane resin (as in Nam), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the siloxane-based coating composition taught by Nam for the insulation coating in the invention taught by Ichie given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to simply substitute one known element (e.g., insulation coating) for another to obtain predictable results. Alternatively, it would have been obvious to utilize the electrical steel sheet substrate as taught by Ichie as the steel substrate in the invention taught by Nam given again that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to simply substitute one known element (e.g., metal/steel substrate) for another to obtain predictable results.
Hence, absent any clear showing of criticality and/or unexpected results with respect to the claimed thermal conductivity as indicated in General Formula 1, the Examiner takes the position that the claimed invention as recited in instant claims 1-4, 6, and 8 would have been obvious over Ichie in view of Nam, or alternatively, Nam in view of Ichie, wherein one having ordinary skill in the art would have been motivated to determine the optimum type and content of thermally conducive filler as taught by Nam to provide the desired thermal conductivity for a particular end use, wherein based upon the high thermal conductivity of such fillers as boron nitride and aluminum nitride as utilized in the examples of Nam, the claimed range as in General Formula 1 would have been obvious to one skilled in the art.
Response to Arguments
Applicant’s arguments filed 4/27/2026 have been fully considered but are not persuasive with respect to the obviousness rejections over the cited prior art as maintained above. With respect to the rejection over Nam, the Applicant first argues that Nam allegedly “fails to teach or suggest several material limitations of the claimed invention, such as the metal hydroxide component, the required proportions of the claimed components, and the claimed thermal conductivity requirement of General Formula 1,” arguing that the “NaOH and KOH in Nam serve exclusively as curing catalysts present at a trace level of 5 parts by weight or less per 100 parts of the total heat-dissipating resin composition – a[n allegedly] fundamentally different role and quantity from the 0.5 to 60 wt% metal hydroxide recited in claim 1, which functions as a structural component of the insulating coating contributing to its thermally conductive and insulating properties” (see paragraph bridging pages 8-9 of the response). The Applicant also argues that the metal hydroxides specifically recited in claim 4 “are transition metal or post-transition metal hydroxides that are [allegedly] chemically and functionally distinct from alkali meal hydroxides such as NaOH and KOH” and that the “Office Action’s reliance on Heikkinen to establish equivalence (for Ba(OH)2 only) [allegedly] does not bridge this fundamental distinction, as Heikkinen merely discloses Ba(OH)2 as another base catalyst, not as a thermally functional coating component present in the amounts required by claim 1” (see page 9, lines 4-10 of the response). However, the Examiner respectfully disagrees and first notes that the instant claims do not require that the broadly claimed metal hydroxide functions as a “thermally functional coating component” or “functions as a structural component of the insulating coating contributing to its thermally conductive and insulating properties” (emphasis added) or is excluded from functioning as a curing catalyst as in Nam; and given that the instant specification clearly acknowledges that the metal hydroxide may react with the silane compound as discussed in detail by the Examiner in the office action dated 12/27/2024 (incorporated herein by reference), and that thus the claimed contents thereof may be interpreted with respect to the coating composition from which the coating is formed, an interpretation acknowledged by the Applicant given the response and claim amendments filed 3/27/205, the Examiner notes that contrary to Applicant’s arguments, Nam does teach a content of metal hydroxide in the coating composition reading upon the claimed range given that the 5 parts by weight or less of metal hydroxide per 100 parts of the total heat-dissipation resin composition as taught by Nam clearly overlaps the claimed 0.5 to 60 wt% metal hydroxide. It is also noted that instant claim 1 does not require any particular metal hydroxide or specific properties thereof and given that the specification clearly recites that the “metal hydroxide may be used without limitation as long as it is a metal including a hydroxyl group (-OH),” which both NaOH and KOH as taught by Nam are, Applicant’s arguments with respect to the teachings of Nam and the claimed metal hydroxide of instant claim 1 are not persuasive. With respect to the specific metal hydroxides as recited in instant claim 4, the Examiner again notes that at least the claimed Ba(OH)2 is a known functionally equivalent metal hydroxide to those taught by Nam, and although the Applicant may have a different reason for selecting said metal hydroxides and/or has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Hence, given that the claimed Ba(OH)2 is a known functionally equivalent metal hydroxide to those taught by Nam, the Examiner maintains her position that the claimed metal hydroxide, including as recited in instant claim 4, and content thereof would have been obvious over the teachings of Nam.
The Applicant also argues, “Critically, Nam [allegedly] also fails to teach the silane compound in the required proportion of 25 to 75 wt% as recited in claim 1,” (see page 9, lines 10-11) specifically referring to working Example 1 of Nam as set forth in Paragraphs 0071-0072, and arguing that the silane compound in the example allegedly constitutes only approximately 20.7 wt% based solely upon the “250 g of 3-methacryloxypropyltris(trimethylsiloxyl)silane” (see page 9, last paragraph). However, the Examiner respectfully disagrees given that, as noted above, both the 3-methacryloxypropyltris(trimethylsiloxyl)silane (aka 3-methacryloxypropyl trimethoxysilane) and the tetraethoxysilane as utilized in the examples of Nam read upon the claimed silane compound represented by the claimed Chemical Formula 1, particularly given that claim 1 does not require the claimed “25 to 75 wt% of the silane compound” to be constituted by a single silane compound represented by Chemical Formula 1 versus a combination of two or more silane compounds represented by Chemical Formula 1 as in Nam, especially in light of the instant specification as discussed in detail above. Further, as noted in the rejection, Nam clearly teaches that the silane compound as component (c), e.g., the 3-methacryloxypropyl trimethoxysilane as utilized in Example 1 of Nam, may be present in a content of up to 60 parts by weight with respect to 100 parts by weight of the total of components (a)-(c), and considering that the 3-methacryloxypropyl trimethoxysilane as component (c) in the non-limiting example as recited in translated Paragraphs 0071-0072 only constitutes about 45.5 parts by weight per 100 parts by weight of the total of components (a)-(c) (e.g., 250/550) while 60 parts by weight of the 3-methacryloxypropyl trimethoxysilane as an upper limit of component (c) as taught by Nam with respect to 100 parts by weight of the same total weight of components (a)-(c) as in the non-limiting example (e.g., 550 g) would provide a content of about 27 wt% with respect to the 3-methacryloxypropyl trimethoxysilane based upon the same total solids content (whether 1210 g as calculated by the Applicant in the response or 1217.3 g which includes the 7.3 g of titanium isopropoxide as a solids component), thereby falling within the claimed 25 to 75 wt% range as recited in instant claim 1. Hence, contrary to Applicant’s arguments, Nam provides a clear teaching and/or suggest that the content of the 3-methacryloxypropyl trimethoxysilane as component (c), even if solely equated to the claimed silane compound as represented by Chemical Formula 1 as in instant claim 1 (although not the case), or as represented by Chemical Formula 2 as in instant claim 2, or as recited in instant claim 3, may read upon the claimed 25 to 75wt% of the silane compound as instantly claimed.
The Applicant then argues that “Nam does not describe any thermal conductivity value for the coated steel sheet system, and that the Office Action [allegedly] has not shown that Nam’s composition, when applied to any steel substrate, would yield a coated electrical steel sheet satisfying the claimed thermal conductivity [TC] of 20 ≤ TC ≤ 200 W/mK as measured by PPMS after induction heating as defined in General Formula 1” and that the “Office Action’s citation to the known thermal conductivity of pure AlN (70-300+ W/mK) is not a showing that the coated electrical steel sheet as a whole would achieve the claimed TC range, a property that depends critically on the specific combination and proportions of the three-component coating system (silane compound, metal hydroxide, metal nitride) of the instant claims,” arguing that “[b]ecause Nam [allegedly] fails to teach the metal hydroxide as a structural coating component in the claimed amounts, fails to teach the silane compound in the claimed proportion of 25 to 75 wt%, and fails to teach or render obvious the specific thermal conductivity property of General Formula 1, the rejection of claims 1-4 and 6 over Nam alone should be withdrawn” (see the first paragraph of page 10 of the response). However, the Examiner again respectfully disagrees and first notes that the claimed invention is not limited to a three-component coating system given that the claims are drafted in open transitional language and the recited weight percentages of metal nitride, silane compound, and metal hydroxide are not required to equal 100wt% of the coating composition and/or insulating coating, such that in fact, the three components may constitute as little as only 25.5 wt% of the coating composition or insulating coating. It is also noted that Nam is specifically directed to a heat-dissipating composition wherein as discussed in the rejection, Nam teaches that the heat-dissipating coating film has excellent thermal conductivity and excellent heat radiating and dissipating properties, and that the thermally conductive materials/fillers (d) have the function of improving the thermal conductivity and thermal radiation properties of the composition, wherein the thermal conductivity of the coating can be controlled by the selection and content of the thermal conductive materials (d) with Nam clearly teaching and/or suggesting a composition comprising components as instantly claimed and in contents within the claimed ranges; and given that Nam also clearly teaches that the composition may comprise up to 300 parts by weight of the thermally conductive fillers with respect to 100 parts by weight of the total solids of the binder resin components (a)-(c), i.e., up to 75wt% of main components (a)-(d), such that based upon known thermal conductivities of the preferred components taught by Nam, particularly as in the examples, one having ordinary skill in the art before the effective filing date of the claimed invention would readily understand that the coating as taught by Nam may have a thermal conductivity encompassing the claimed range, e.g., may range from a thermal conductivity of below the claimed 20 W/mK, especially when the thermally conductive filler is only included at low parts by weight, to values above the claimed 200 W/mK, especially when the thermally conductive filler is a filler as utilized in the examples having a very high thermal conductivity and is included at a content of 300 parts by weight, based on 100 parts by weight of the total solids of the binder resin (e.g., components (a)-(c) including the colloidal silica and two different silane compounds). Hence, absent any clear showing of criticality and/or unexpected results with respect to the claimed range of 20 to 200 W/mK, the Examiner maintains her position that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize routine experimentation to determine the optimum type and content of the thermally conductive filler as taught by Nam to provide the desired properties including “excellent thermal conductive” for a particular end use of the invention taught by Nam.
With respect to the combined teachings of Ichie (which specifically teaches an electrical steel sheet substate having a composition reading upon the claimed composition as recited in instant claim 8 and an organic and/or inorganic insulation coating in general provided thereon) in view of Nam (which as discussed above teaches an insulating coating reading upon the claimed insulating coating that may be provided on a steel sheet substrate in general) or alternatively, Nam in view of Ichie, the Applicant argues that the combination allegedly “fails to teach or suggest the pending claims” given that the broad teaching of Ichie with respect to the insulation coating that is not particularly limit and may be selected depending on the intended end use from known coatings alleged “does not constitute a teaching or suggestion to select Nam’s particular siloxane-based, heat-dissipating composition for use as an insulation coating on Ichie’s electrical steel sheet,” arguing that “[t]o the contrary, Nam’s heat-dissipating composition is formulated for thermal management in electronics cooling applications (e.g., LED substrates and electronic casings) and includes the thermally conducive metal powder fillers such as zinc powder and alumina, colloidal silica, titanium isopropoxide, and carbon compounds such as graphite, none of which are present in or relevant to the three-component insulating coating of the instantly claimed invention” (see second paragraph of page 10 of the response). The Applicant argues that a “person of ordinary skill in the art combining Ichie and Nam would arrive at a coating having all of these additional components, which are not recited in and would [allegedly] actually distinguish from the claimed composition,” however, the Examiner respectfully disagrees and again notes that the claimed invention is not limited to the claimed three components, i.e., a silane compound represented by Chemical Formula 1, a metal hydroxide, and a metal nitride, given the open transitional language of “comprising” and the fact that the recited weight percentages are not required to total 100wt% of the coating. Further, given that Nam clearly teaches that the siloxane-based coating may be utilized as an insulation coating, may be provided on a steel substrate in general, and may be used in electrical/electronic applications, while Ichie does not limit the insulation coating to be provided over the electrical steel sheet substrate that may be utilized in various electrical applications and broadly recites that the insulation coating may be one comprising silicone (polysiloxane) resin, Applicant’s arguments with respect to the combined teachings of Ichie and Nam as recited in the second paragraph of page 10 are not persuasive.
In the paragraph bridging pages 10-11, the Applicant reiterates several arguments presented with respect to the teachings of Nam taken alone as discussed above, e.g., proportion of silane compound in Nam’s overall composition, thermal conductivity value, three-component coating in the claimed weight percentage ranges, and metal hydroxides of instant claim 4 as a “substantial functional ingredient”, that have been addressed by the Examiner above and are incorporated herein by reference. In the paragraph bridging pages 11-12, the Applicant argues that the proposed combination of references cited in the Office Action “is the product of impermissible hindsight construction rather than the perspective of one of ordinary skill in the art acting without knowledge of the claimed invention” and that “[g]uided only by the claimed invention, the Office Action has [allegedly] extracted certain elements from Nam’s multi-component heat-dissipating composition, selectively the organosilane and the metal nitride fillers, while [allegedly] simultaneously recharacterizing Nam’s trace-level alkali base catalysts as the metal hydroxide structural component called for by claim 1, and then [allegedly] discarding all of Nam’s other components (zinc powder, alumina, colloidal silica, titanium isopropoxide, graphite) that one of ordinary skill in the art would actually incorporate when combining Nam with Ichie,” arguing that this alleged “selective extraction is particularly telling given the quantitative data in Nam’s own working example: as [allegedly] shown in translated paragraphs [0071] and [0072] of Nam, the silane compound constitutes only approximately 20 wt% of Nam’s total composition, a proportion that, as [allegedly] demonstrated by Comparative Example 1-4 and Tables 1 and 2 of the present application, would [allegedly] be insufficient to achieve the thermal conductive range of General Formula 1.” However, the Examiner respectfully disagrees. 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). With respect to the working example of Nam argued by the Applicant, it is again noted that the example actually contains 27 wt% of silane compounds that read upon the claimed silane compound represented by the claimed Chemical Formula 1 as recited in instant claim 1 falling within the claimed range of 25 to 75wt% as discussed in detail above, and given that the claimed invention does not exclude the additional components argued by the Applicant nor require any specific metal hydroxide or “structural” properties thereof in instant claim 1 as discussed in detail above, and actually recites a metal hydroxide range overlapping almost the entire alleged “trace-level” range taught by Nam, Applicant’s arguments on page 11 with respect to alleged “selectively extracted certain elements…while simultaneously recharacterizing Nam’s trace-level alkali base catalysts as the metal hydroxide structural component called for by claim 1” and improper hindsight reasoning are not persuasive. In terms of any alleged “unexpected” improvements or unexpected results based upon Applicant’s examples and data shown in Tables 1 and 2, it is noted that the data and examples relied upon by the Applicant are not commensurate in scope with the claimed invention and/or are inconclusive with respect to any clear showing of unexpected results over the closest prior art reference, namely Nam. In looking at the examples relied upon by the Applicant in Tables 1-2 of the instant specification, it is noted that none of the examples correspond to the teachings of Nam given that Nam clearly teaches that the coating comprises the silane compound and the metal nitride, with a working example including both in a content within the claimed ranges, and although Nam also clearly teaches the metal hydroxide, Nam does not specifically include the metal hydroxide in the examples, while the only comparative example of the instant specification that excludes the metal hydroxide also excludes the metal nitride and thus consists of 100% silane which is different from the teachings of Nam and thus cannot be utilized to support any showing of unexpected results over Nam. It is also noted that the examples summarized in Tables 1-2 fail to support any clear showing of criticality and/or unexpected with respect to the claimed weight percentages ranges as recited in instant claim 1 for each of the claimed components, i.e. 0.1-40wt% of the metal nitride, 25-75wt% of the silane compound, and 0.5-60wt% of the metal hydroxide. For example, as discussed in detail in a prior office action, the metal nitride is only provided in contents ranging from about 0.56wt% to 36.84wt% for the inventive examples, with the only comparative examples being at 0wt%, i.e. no metal nitride at all, and at 40wt% which is actually the upper endpoint of the claimed range, however, there are no data points outside of the claimed range other than complete absence of the metal nitride which is clearly taught by Nam as being present in the coating. In terms of the silane compound, the content thereof in the inventive examples ranges from about 31.6wt% to about 72.16wt% with no data points near the lower endpoint of 25wt% and no data points above the upper endpoint of 75wt% other than the example consisting of 100wt% silane which again is not representative of the teachings of Nam and is substantially greater than the claimed upper endpoint of 75wt%. With respect to the metal hydroxide, the content thereof in the inventive examples ranges from about 20.6wt% to about 53.8wt% which is substantially narrower than the claimed 0.5-60wt%, with the comparative examples at 0wt%, although said example also excludes the metal nitride as noted above; 60wt% which is actually the upper endpoint of the claimed range; and 90wt% and 100wt% which are substantially higher the claimed upper endpoint of 60wt%, such that the data fail to support any showing of criticality of the claimed 0.5-60wt% range. Additionally, the examples utilize very specific silane compounds and given that one skilled in the art could not reasonably extent the probative value thereof to any and all silane compounds as represented by the claimed Chemical Formula 1, or even the claimed Chemical Formula 2, the examples are not commensurate in scope with the claimed invention. Further, given that more than one parameter changes between the examples and none of the examples represent the teachings of Nam, the data and results are inconclusive with respect to any clear showing of unexpected results of the claimed invention over the closest prior art reference. Hence, Applicant’s arguments with respect to the data in Tables 1-2 and the claimed content ranges are not persuasive and the Examiner maintains her position that the claimed invention would have been obvious over the cited prior art as presented above, especially given that the claimed coating composition is not limited to “precisely…three elements.”
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 4/27/2026.
THIS ACTION IS MADE FINAL. 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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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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