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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/25/2025 has been entered.
The amendment filed 8/25/2025 has been entered. Claims 5, 7, 10-11, 13, 16-17, 19-20, 22-23, and 30-32 have been canceled. Claims 1-4, 6, 8-9, 12, 14-15, 18, 21, and 24-29 are pending in the application. Claims 9, 12, 14-15, 18, 21, and 24-29 have been withdrawn from consideration as being directed to non-elected inventions. Election was made without traverse in the reply filed 5/13/2024. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Nam (KR20100079046A, please refer to the attached machine translation for the below cited section). 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, about 8.2 wt% of tetraethoxysilane, 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.
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 with respect to claims 1-4, 6, and 8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 8/25/2025.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787