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 amendment/remarks filed 12/12/2025.
Claims 1-14, 16-18, and 20 are currently pending and under examination.
The rejection of claims 1-10, 12, 13, and 16-20 under 35 U.S.C. 103 as being unpatentable over Kitazawa (US 2017/0260392 A1) in view of Yamada (JP 2006169343 A) is withdrawn in view of the above amendments.
The rejection of claim 11 under 35 U.S.C. 103 as being unpatentable over Kitazawa (US 2017/0260392 A1) in view of Yamada (JP 2006169343 A) and Nara (JP 2011151280 A) is withdrawn in view of the above amendments.
The rejection of claim 14 under 35 U.S.C. 103 as being unpatentable over Kitazawa (US 2017/0260392 A1) in view of Yamada (JP 2006169343 A) and Kitada (US 2016/0312097 A1) is withdrawn in view of the above amendments.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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14, 16-18, and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites that a heat-conducting composition comprising a non-reactive silicone oil, wherein a second viscosity of the heat-conducting composition is 530 Pa·s or less as measured at a rotating speed of 1 rpm at 25°C by using the rotational viscometer, wherein an average particle diameter of the heat-conducting filler is 28 to 80 µm, and wherein a content of the heat-conducting filler in the heat-conducting composition is 71 to 85% by volume.
The support for the limitation of “a second viscosity of the heat-conducting composition is 530 Pa·s or less as measured at a rotating speed of 1 rpm at 25°C by using the rotational viscometer” can only be found in Examples 1, 4, and 6 in Table 1 of the instant invention (instant Table 1).
However, Examples 1, 4, and 6 in Table 1 of the instant invention show that an average particle diameter of the heat-conducting filler is 11 to 25 µm, a content of the heat-conducting filler in the heat-conducting composition (i.e. packing fraction of the heat-conducting filler) is 62 to 65% by volume (instant Table 1), which are outside the claimed ranges of “28 to 80 µm” and “71 to 85% by volume” in claim 1.
Therefore, claim 1 contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claims 2-14, 16-18, and 20 depend from claim 1. Therefore, claims 2-14, 16-18, and 20 are also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
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 1, 2, 17, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa ’552 (JP 2018062552 A, published 04/19/2018, hereinafter Kitazawa ’552), as evidenced by “Density of Polymers” (Density of Polymers Information from scipoly.com, 2026, hereinafter “Density of Polymers”), and “Alumina Property” (“Alumina Property”, from Accuratus Ceramic Corporation, 2025, hereinafter “Alumina Property”).
Regarding claims 1, 2, 17, 18, and 20, Kitazawa ’552 teaches ([0010], claims 1 and 4) a thermally conductive composition comprising:
component (A) an organosilicon compound-modified copolymer, which reads on the claimed binder;
component (B) a thermally conductive filler, which reads on the claimed heat- conducting filler;
component (C) an organopolysiloxane, and component (C) an organopolysiloxane can be a non-reactive organopolysiloxane such as dimethylpolysiloxane ([0043], [0064]), which reads on the claimed non-reactive silicone oil.
Kitazawa ’552 teaches that component (A) the organosilicon compound-modified copolymer contains a polybutadiene structural unit ([0012], [0019]), and the alkenyl group in the polybutadiene can react with Si-H group in a silicone compound (e.g. an organohydrogenpolysiloxane) in the presence of a platinum catalyst under a hydrosilylation reaction to form a cured product ([0021]). Thus, component (A) the organosilicon compound-modified copolymer of Kitazawa ’552 comprises an addition reaction curable silicone.
Kitazawa ’552 also teaches that component (A) the organosilicon compound-modified copolymer contains polysiloxane structure unit such as poly(dimethylsiloxane) ([0054], [0058], [0062]), and can have a kinematic viscosity of 200 mm2/s to 1500 mm2/s ([0053], [0057], [0061]).
“Density of Polymers” as an evidentiary reference shows that polydimethylsiloxane has a density of about 0.97 g/cc (p. 3), and polysiloxanes including various substitutes can have a density in a range of about 0.88 to 1.1 g/cc (pp. 1-6).
Thus, component (A) the organosilicon compound-modified copolymer (i.e. a polysiloxane) of Kitazawa ’552 can have a viscosity of about 0.2 Pa·s to 1.5 Pa·s, which falls within the claimed range of “0.05 Pa·s to 2 Pa·s”, and reads on the claimed binder comprising an addition reaction curable silicone having a viscosity of 0.05 Pa·s to 2 Pa·s.
Kitazawa ’552 also teaches that component (C) an organopolysiloxane is in an amount of 20 to 80 mass % based on the total amount of components (A) and (C) ([0044]). Thus, in Kitazawa ’552, component (C) an organopolysiloxane (the claimed non-reactive silicone oil) can be in an amount of 25 to 400 parts by mass with respect to 100 parts by mass of component (A) the organosilicon compound-modified copolymer (the claimed binder and the claimed addition reaction curable silicone), which overlaps with the claimed range of “10 to 70 parts by mass”.
Kitazawa ’552 teaches that component (B) a thermally conductive filler preferably comprises a large particle component and a small particle component ([0038]), wherein the large particle component has an average particle size in the range of 0.1 to 100 μm, the small particle component has an average particle size in the range of 0.01 to 10 μm, the mass ratio of the large particle component to the small particle component is not particularly limited, and can be in a range of 9:1 to 1:9 (mass ratio) ([0039]).
Thus, component (B) the thermally conductive filler of Kitazawa ’552 can have an average particle size in a range of about 0.02 to 90 μm, which overlaps with the claimed range of “28 to 80 µm” and “28 to 42 µm”.
Kitazawa ’552 further teaches that if the particle size of the thermally conductive filler exceeds 100 μm, the resulting composition becomes non-uniform ([0039]).
Kitazawa ’552 does not teach that a content of particles larger than 128 µm of the thermally conductive filler is 5% by volume or lower.
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 reduce the amount of the thermally conductive filler which has particle size more than 100 μm, as little as about 0% by volume in the whole amount of the thermally conductive filler of Kitazawa ’552, in order to make the composition being uniform with a reasonable expectation of success, because if the particle size of the thermally conductive filler exceeds 100 μm, the composition becomes non-uniform as recognized by Kitazawa ’552. Thus, the content of particles larger than 100 µm of the thermally conductive filler of Kitazawa ’552 is about 0% by volume, which falls within the claimed range of “5% by volume or lower”.
It is well established that optimization of a prior art range flows from the normal desire of scientists or artisans to improve upon what is already generally known. see Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. If the prior art does recognize that the variable affects the relevant property or result, then the variable is result-effective. Id. ('A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.'). See MPEP 2144.05.
Furthermore, Kitazawa ’552 teaches that component (B) the thermally conductive filler is in an amount of 10 to 95 mass % in the composition ([0040]).
Kitazawa ’552 also teaches that the composition comprises component (A) an organosilicon compound-modified copolymer containing polysiloxane structure unit such as dimethylpolysiloxane ([0054], [0058], [0062]), component (B) a thermally conductive filler such as alumina ([0038]), and component (C) an organopolysiloxane such as dimethylpolysiloxane ([0010], [0064]).
“Density of Polymers” as an evidentiary reference shows that polydimethylsiloxane has a density of about 0.97 g/cc (p. 3), and polysiloxanes including various substitutes can have a density in a range of about 0.88 to 1.1 g/cc (pp. 1-6).
“Alumina Property” as an evidentiary reference shows that alumina has a density of about 3.89 gm/cc (p. 1), equaling to 3.89 g/cm3.
Therefore, component (B) the thermally conductive filler can be in an amount of about 3% to 83% by volume in the composition of Kitazawa ’552, which overlaps with the claimed range of “71 to 85% by volume”.
Kitazawa ’552 further teaches that the viscosity of the composition at 25°C is 10 to 500 Pa·s, and the viscosity is measured at 25°C using a viscometer at a rotating speed of 10 rpm ([0047]), which overlaps with the claimed range of “50 to 300 Pa·s” of the claimed first viscosity being measured at a rotating speed of 10 rpm at 25°C.
Kitazawa ’552 does not teach a second viscosity of the composition is 530 Pa·s or less as measured at a rotating speed of 1 rpm at 25°C by using the rotational viscometer, and a ratio of the second viscosity to the first viscosity is 3 to 8, wherein the first viscosity is measured at a rotating speed of 10 rpm at 25°C.
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 claimed second viscosity as measured at a rotating speed of 1 rpm at 25°C by using the rotational viscometer, and the claimed ratio of the second viscosity to the first viscosity which is measured at a rotating speed of 10 rpm at 25°C, would flow naturally from the teachings of Kitazawa ’552, because the teachings of Kitazawa ’552 provide substantially the same heat conductive composition comprising the same binder comprising the same addition reaction curable silicone with the same viscosity, the same heat conductive filler with the same average particle size and the same amount, and the same non-reactive silicone oil with the same amount as claimed, and also because the viscosity of the composition is 10 to 500 Pa·s as measured at a rotating speed of 10 rpm at 25°C by a viscometer as recognized by Kitazawa ’552. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
2. Claims 1-10, 12, 13, 16-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa ’392 (US 2017/0260392 A1, hereinafter Kitazawa ’392) in view of Kitazawa ’552 (JP 2018062552 A, published 04/19/2018, hereinafter Kitazawa ’552) and Yamada (JP 2006169343 A, hereinafter Yamada), as evidenced by “Poly(dimethylsiloxane), vinyl terminated” (“Poly(dimethylsiloxane), vinyl terminated information”, from Millipore Sigma, 2025, hereinafter “Poly(dimethylsiloxane), vinyl terminated”), and “Alumina Property” (“Alumina Property”, from Accuratus Ceramic Corporation, 2025, hereinafter “Alumina Property”).
Regarding claims 1, 2, 17, 18, and 20, Kitazawa ’392 teaches ([0025]-[0030], claim 1) a thermally conductive curable silicone composition comprising:
component (A) 100 parts by weight of an organopolysiloxane containing at least two silicon-bonded aliphatic unsaturated hydrocarbon groups per molecule, which reads on the claimed addition reaction curable silicone;
component (B) 100 to 3,000 parts by weight of a heat conductive filler, which reads on the claimed heat-conducting filler;
component (C) an organohydrogenpolysiloxane containing at least two silicon-bonded hydrogen atoms (i.e., SiH groups) per molecule;
component (D) a platinum group metal complex which is a hydrosilylation catalyst ([0060]).
Kitazawa ’392 teaches that component (A) an organopolysiloxane containing at least two silicon-bonded aliphatic unsaturated hydrocarbon groups per molecule has a kinematic viscosity of 60 to 100,000 mm2/s at 25°C ([0042]), and the example of component (A) the organopolysiloxane can be dimethylpolysiloxane capped at both ends with dimethylvinylsilyl ([0093]-[0094]).
“Poly(dimethylsiloxane), vinyl terminated” as an evidentiary reference shows that poly(dimethylsiloxane) capped at both ends with dimethylvinylsilyl has a density of 0.965 g/ml at 25°C (p. 3, § PROPERTIES).
Thus, component (A) the organopolysiloxane containing at least two silicon-bonded aliphatic unsaturated hydrocarbon groups per molecule of Kitazawa ’392 can have a viscosity of about 0.06 to 100 Pa·s, which overlaps with the claimed range of “0.05 Pa·s to 2 Pa·s” of the claimed addition reaction curable silicone.
The combination of component (A) the organopolysiloxane containing at least two silicon-bonded aliphatic unsaturated hydrocarbon groups per molecule and component (C) the organohydrogenpolysiloxane containing at least two silicon-bonded hydrogen atoms (i.e., SiH groups) per molecule of Kitazawa ’392 reads on the claimed binder.
Kitazawa ’392 also teaches that component (B) a heat conductive filler preferably comprises a large particulate fraction and a small particulate fraction, wherein the large particulate fraction has an average particle size in the range of 0.1 to 100 μm, and the small particulate fraction has an average particle size in the range of 0.01 to 10 μm ([0051]).
Kitazawa ’392 does not teach the average particle size of component (B) the heat conductive filler.
However, Kitazawa ’552 teaches ([0010], claim 1) a thermally conductive composition comprising component (B) a thermally conductive filler.
Kitazawa ’552 also teaches that component (B) a thermally conductive filler preferably comprises a large particle component and a small particle component ([0038]), wherein the large particle component has an average particle size in the range of 0.1 to 100 μm, the small particle component has an average particle size in the range of 0.01 to 10 μm, the mass ratio of the large particle component to the small particle component is not particularly limited, and can be in a range of 9:1 to 1:9 (mass ratio), thereby making the resulting composition being uniform and having good extensibility ([0039]).
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 mass ratio of the large particle component having an average particle size of 0.1 to 100 μm to the small particle component having an average particle size of 0.01 to 10 μm in a range of 9:1 to 1:9 as taught by Kitazawa ’552 as the mass ratio of the large particle component having an average particle size of 0.1 to 100 μm to the small particle component having an average particle size of 0.01 to 10 μm in Kitazawa ’392, in order to make the composition being uniform and having good extensibility with a reasonable expectation of success.
Thus, component (B) the thermally conductive filler as taught by the combination of Kitazawa ’392 and Kitazawa ’552 can have an average particle size in a range of about 0.02 to 90 μm, which overlaps with the claimed range of “28 to 80 µm” and “28 to 42 µm”.
Kitazawa ’392 further teaches that if the particle size of the heat conductive filler exceeds 100 μm, the resulting composition becomes non-uniform ([0051]).
Kitazawa ’392 does not teach that a content of particles larger than 128 µm of the heat-conducting filler is 5% by volume or lower.
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 reduce the amount of the heat conductive filler which has particle size more than 100 μm, as little as about 0% by volume in the whole amount of the heat conductive filler of Kitazawa ’392, in order to make the composition being uniform with a reasonable expectation of success, because if the particle size of the heat conductive filler exceeds 100 μm, the composition becomes non-uniform as recognized by Kitazawa ’392. Thus, the content of particles larger than 100 µm of the heat-conducting filler of Kitazawa ’392 is about 0% by volume, which falls within the claimed range of “5% by volume or lower”.
It is well established that optimization of a prior art range flows from the normal desire of scientists or artisans to improve upon what is already generally known. see Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. If the prior art does recognize that the variable affects the relevant property or result, then the variable is result-effective. Id. ('A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.'). See MPEP 2144.05.
Furthermore, Kitazawa ’392 teaches that component (B) the heat conductive filler is 100 to 3,000 parts by weight per 100 parts by weight of component (A) the organopolysiloxane ([0053]). Kitazawa ’392 also teaches that component (B) the heat conductive filler can be alumina ([0050]), and component (A) the organopolysiloxane can be dimethylpolysiloxane capped at both ends with dimethylvinylsilyl ([0093]-[0094]).
Kitazawa ’392 further teaches that component (C) the organohydrogenpolysiloxane is about 1 to 14 parts by weight per 100 parts by weight of component (A) the organopolysiloxane (Table 1, Examples 1-8), and component (D) the platinum group metal complex is about 0.7 parts by weight per 100 parts by weight of component (A) the organopolysiloxane (Table 1, Examples 1-8).
“Alumina Property” as an evidentiary reference shows that alumina has a density of 3.89 gm/cc (p. 1), equaling to 3.89 g/cm3.
“Poly(dimethylsiloxane), vinyl terminated” as an evidentiary reference shows that poly(dimethylsiloxane) capped at both ends with dimethylvinylsilyl has a density of 0.965 g/ml at 25°C (p. 3, § PROPERTIES).
Therefore, component (B) the heat conductive filler can be in an amount of about 20% by volume to about 88% by volume in the curable silicone composition of Kitazawa ’392, which overlaps with the claimed range of “71 to 85% by volume”.
Kitazawa ’392 also teaches that non-reactive organo(poly)siloxanes such as methylpolysiloxane is included in the curable silicone composition for adjusting the viscosity of the composition ([0083]), which reads on the claimed non-reactive silicone oil.
Kitazawa ’392 does not teach the amount of the non-reactive silicone oil.
However, Yamada teaches a heat-dissipating silicone grease composition comprising component (A) an organopolysiloxane having an alkenyl group bonded to a silicon atom, component (B) an organohydrogenpolysiloxane having a hydrogen atom bonded to a silicon atom, component (C) thermally conductive filler, and component (D) a hydrosilylation reaction catalyst ([0005]-[0006]).
Yamada also teaches that the heat-dissipating silicone grease composition comprises a non-reactive organopolysiloxane, and the non-reactive organopolysiloxane is 0 to 50 parts by mass based on 100 parts by mass of the total amount of component (A) and component (B) ([0064]).
Yamada teaches that the non-reactive organopolysiloxane does not have a reactive group in the molecule ([0060]), and the non-reactive organopolysiloxane can be dimethylpolysiloxane ([0062]), which reads on the claimed non-reactive silicone oil, and the non-reactive organo(poly)siloxanes in Kitazawa ‘392.
Yamada also teaches that the non-reactive organopolysiloxane suitably adjusts the viscosity and workability of the resulting composition ([0060]).
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 make the non-reactive organo(poly)siloxanes as taught by Kitazawa ’392 being in an amount of 0 to 50 parts by mass based on 100 parts by mass of the total amount of component (A) an organopolysiloxane having an alkenyl group and component (B) an organohydrogenpolysiloxane as taught by Yamada, in order to adjust the viscosity of the composition with a reasonable expectation of success, because the non-reactive organopolysiloxane suitably adjusts the viscosity of the composition as recognized by both Kitazawa ’392 and Yamada, and the non-reactive organopolysiloxane is 0 to 50 parts by mass based on 100 parts by mass of the total amount of component (A) an organopolysiloxane having an alkenyl group and component (B) an organohydrogenpolysiloxane as recognized by Yamda.
Kitazawa ’392 teaches that component (C) the organohydrogenpolysiloxane is about 1 to 14 parts by weight per 100 parts by weight of component (A) the organopolysiloxane containing an alkenyl group (Table 1, Examples 1-8).
Thus, in the composition as taught by the combination of Kitazawa ’392 and Yamada, the non-reactive organopolysiloxanes can be in an amount of 0 to 58 parts by weight per 100 parts by weight of component (A) the organopolysiloxane containing an alkenyl group (the claimed addition reaction curable silicone), which overlaps with the claimed range of “10 to 70 parts by mass”.
Furthermore, Kitazawa ’392 teaches that the viscosity of the curable silicone composition at 25°C is 10 to 500 Pa·s, and the viscosity is measured at 25°C using a viscometer at a rotating speed of 10 rpm ([0086]), which overlaps with the claimed range of “50 to 300 Pa·s” of the claimed first viscosity being measured at a rotating speed of 10 rpm at 25°C.
Kitazawa ’392 does not teach a second viscosity of the composition is 530 Pa·s or less as measured at a rotating speed of 1 rpm at 25°C by using the rotational viscometer, and a ratio of the second viscosity to the first viscosity is 3 to 8, wherein the first viscosity is measured at a rotating speed of 10 rpm at 25°C.
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 claimed second viscosity as measured at a rotating speed of 1 rpm at 25°C by using the rotational viscometer, and the claimed ratio of the second viscosity to the first viscosity which is measured at a rotating speed of 10 rpm at 25°C, would flow naturally from the teachings of the combination of Kitazawa ’392, Kitazawa ’552, and Yamada, because the teachings of the combination of Kitazawa ’392, Kitazawa ’552, and Yamada provide substantially the same heat conductive composition comprising the same binder including the same addition reaction curable silicone with the same viscosity, the same heat conductive filler with the same average particle size and the same amount, and the same non-reactive silicone oil with the same amount as claimed, also because the viscosity of the curable silicone composition is 10 to 500 Pa·s as measured at a rotating speed of 10 rpm at 25°C by a viscometer as recognized by Kitazawa ’392, and further because the non-reactive organopolysiloxane adjusts the viscosity of the composition as recognized by both Kitazawa ’392 and Yamada. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 3, the instant invention recites that the thermosetting polymer can be an addition reaction-type polymer, and the addition reaction-type polymer can be an organopolysiloxane ([0015]).
Kitazawa ‘392 teaches that the curable silicone composition comprises component (A) the organopolysiloxane containing an alkenyl group, and component (C) the organohydrogenpolysiloxane (0025]-[0030]), which are both an organopolysiloxane, and read on the claimed thermosetting polymer.
Kitazawa ‘392 also teaches that the curable silicone composition is cured under an addition cure reaction ([0090]).
Kitazawa ‘392 does not teach that an OO hardness specified in ASTM D2240-05 of the heat-conducting composition after curing is 5 to 80.
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 the claimed OO hardness specified in ASTM D2240-05 of the heat-conducting composition after curing, would flow naturally from the teachings of the combination of Kitazawa ’392, Kitazawa ’552, and Yamada, because the teachings of the combination of Kitazawa ’392, Kitazawa ’552, and Yamada provide substantially the same cured product of the same heat conductive composition comprising the same binder, the same heat conductive filler, and the same non-reactive silicone oil as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 4, the curable silicone composition of Kitazawa ‘392 comprises no solvent ([0025]-[0031], claim 1). Kitazawa ‘392 also teaches that component (D) the platinum catalyst is synthesized in the absence of a solvent ([0070]). The non-reactive organopolysiloxane as taught by Kitazawa ‘392 is not a solvent ([0083]). Thus, the composition as taught by the combination of Kitazawa ’392, Kitazawa ’552, and Yamada comprises no solvent, which reads on the claimed heat-conducting composition comprising substantially no solvent when weight loss after the heat-conducting composition is heated at 100oC for 2 hours is 1% by mass or lower.
Regarding claim 5, the term “for screen printing” is an intended use and does not add structural difference, thus the intended use is extended little patentable weight. See MPEP § 2112.02.
Regarding claims 6 and 7, Kitazawa ‘392 teaches that the curable silicone composition is applied as a thin film having a thickness of up to 1,500 μm and exposed to air, addition cure reaction takes place at room temperature ([0090]). Thus, the film in Kitazawa ‘392 comprises a cured product made by curing the curable silicone composition. The film in Kitazawa ‘392 reads on the claimed heat-conducting member. The film in Kitazawa ‘392 has a thickness of up to 1,500 μm ([0090]), equaling to up to 1.5 mm, which overlaps with the claimed ranges of “0.03 to 1 mm” and “0.3 to 1 mm”.
Kitazawa ‘392 does not teach that an OO hardness specified in ASTM D2240-05 of the heat-conducting member is 5 to 80.
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 claimed OO hardness specified in ASTM D2240-05 of the heat-conducting member would flow naturally from the teachings of the combination of Kitazawa ’392, Kitazawa ’552, and Yamada, because the teachings of the combination of Kitazawa ’392, Kitazawa ’552, and Yamada provide substantially the same heat-conducting member with the same thickness and comprising the same cured product of the same composition as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 8-10, Kitazawa ‘392 does not teach a surface tack of the cured product, a pitch size of regular projections and depressions formed on at least one surface of the heat-conducting member, and an average height from the depressions to the projections.
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 claimed surface tack of the cured product, the claimed pitch size of regular projections and depressions, and the claimed average height from the depressions to the projections, would flow naturally from the teachings of the combination of Kitazawa ’392, Kitazawa ’552, and Yamada, because the teachings of the combination of Kitazawa ’392, Kitazawa ’552, and Yamada provide substantially the same heat-conducting member with the same thickness and comprising the same cured product of the same composition as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 12, 13 and 16, Kitazawa ‘392 teaches that the curable silicone composition is a highly heat conductive silicone grease ([0001]), and is used as a heat dissipating grease ([0009], [0023]). Kitazawa ‘392 teaches that the curable silicone composition is applied as a thin film and is cured ([0090]).
Kitazawa ‘392 also teaches that a semiconductor package comprises a heat generating member, a cooling member, and a heat dissipating grease/film having a high thermal conductivity, wherein the heat dissipating grease/film is disposed between the heat generating member and the cooling member in order to prevent air intervention to avoid the heat transfer inefficiency ([0002]-[0003]). The cooling member in Kitazawa ‘392 reads on the claimed heat-dissipating element. The heat generating member in Kitazawa ‘392 reads on the claimed heat-generating element. The heat dissipating grease/film in Kitazawa ‘392 reads on the claimed heat-conducting member.
3. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa ’392 (US 2017/0260392 A1, hereinafter Kitazawa ’392) in view of Kitazawa ’552 (JP 2018062552 A, published 04/19/2018, hereinafter Kitazawa ’552) and Yamada (JP 2006169343 A, hereinafter Yamada), as evidenced by “Poly(dimethylsiloxane), vinyl terminated” (“Poly(dimethylsiloxane), vinyl terminated information”, from Millipore Sigma, 2025, hereinafter “Poly(dimethylsiloxane), vinyl terminated”), and “Alumina Property” (“Alumina Property”, from Accuratus Ceramic Corporation, 2025, hereinafter “Alumina Property”) as applied to claims 1-10, 12, 13, 16-18, and 20 above, and further in view of Nara (JP 2011151280 A, hereinafter Nara).
The disclosure of Kitazawa ‘392 in view of Kitazawa ’552 and Yamada is relied upon as set forth above.
Regarding claim 11, Kitazawa ‘392 teaches that the curable silicone composition is applied as a thin film having a thickness of up to 1,500 μm and exposed to air, addition cure reaction takes place at room temperature ([0090]). Thus, the film in Kitazawa ‘392 comprises a cured product made by curing the curable silicone composition. The film in Kitazawa ‘392 reads on the claimed heat-conducting member. The film in Kitazawa ‘392 has a thickness of up to 1,500 μm ([0090]), which overlaps with the claimed range of “100 to 500 µm”.
Kitazawa ‘392 teaches that the curable silicone composition is a highly heat conductive silicone grease ([0001]), and is used as a heat dissipating grease ([0009], [0023]).
Kitazawa ‘392 also teaches that a semiconductor package comprises a heat generating member, a cooling member, and a heat dissipating grease/film having a high thermal conductivity, wherein the heat dissipating grease/film is disposed between the heat generating member and the cooling member in order to prevent air intervention to avoid the heat transfer inefficiency ([0002]-[0003]). The cooling member in Kitazawa ‘392 is a heat-dissipating element.
Kitazawa ‘392 does not teach screen printing.
However, Nara teaches using a screen printing method for applying a thermally conductive resin composition to a heat dissipation member, then curing the resin composition; and this screen printing method efficiently produces a heat dissipation member which is coated with a thermally conductive resin composition ([0008], [0015]).
Nara teaches coating a resin composition (emulsion) on a screen printing plate ([0020]), and in the screen printing plate, wire diameter (the claimed fiber diameter) is 18 to 250 μm, and mesh opening is in the range of 30 to 500 mesh ([0021]), which overlap with the claimed ranges of “20 to 250 µm” and “10 to 150 mesh”.
Nara also teaches that the screen printing plate is obtained by selecting a thickness, and charging the resin composition onto a screen printing plate having an application surface limited by the emulsion so as to have a desired shape ([0028]).
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 pattern the curable silicone composition of Kitazawa ‘392 as an emulsion on a screen printing plate having wire diameter of 18 to 250 μm and mesh opening of 30 to 500 mesh as taught by Nara, in order to efficiently coat the curable thermally conductive composition onto a heat dissipation member with a reasonable expectation of success, because the screen printing method efficiently coats the curable thermally conductive resin composition onto a heat dissipation member as recognized by Nara.
A person of ordinary skill in the art would reasonably expect that if the heat conductive composition/film needs to have a thickness of 1,500 μm or less as taught by Kitazawa ‘392 in order to form a cured product to fill the gap between the heat generating member and the cooling member (i.e. the heat dissipation member), an emulsion of the composition in a thickness of 1,500 μm or less would be patterned on the screen printing plate, because the screen printing plate is obtained by selecting a thickness for a desired shape as recognized by Nara. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
4. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa ’392 (US 2017/0260392 A1, hereinafter Kitazawa ’392) in view of Kitazawa ’552 (JP 2018062552 A, published 04/19/2018, hereinafter Kitazawa ’552) and Yamada (JP 2006169343 A, hereinafter Yamada), as evidenced by “Poly(dimethylsiloxane), vinyl terminated” (“Poly(dimethylsiloxane), vinyl terminated information”, from Millipore Sigma, 2025, hereinafter “Poly(dimethylsiloxane), vinyl terminated”), and “Alumina Property” (“Alumina Property”, from Accuratus Ceramic Corporation, 2025, hereinafter “Alumina Property”) as applied to claims 1-10, 12, 13, 16-18, and 20 above, and further in view of Kitada (US 2016/0312097 A1, hereinafter Kitada).
The disclosure of Kitazawa ‘392 in view of Kitazawa ’552 and Yamada is relied upon as set forth above.
Regarding claim 14, Kitazawa ‘392 teaches that a semiconductor package comprises a heat generating member, a cooling member, and a heat dissipating grease/film having a high thermal conductivity, wherein the heat dissipating grease/film is disposed between the heat generating member and the cooling member in order to prevent air intervention to avoid the heat transfer inefficiency ([0002]-[0003]). The cooling member in Kitazawa ‘392 reads on the claimed heat-dissipating element. The heat generating member in Kitazawa ‘392 reads on the claimed heat-generating element.
Kitazawa ‘392 does not teach that the cooling member (the claimed heat-dissipating element) is a heat sink.
However, Kitada teaches a heat dissipation structure comprising a heat-generating body, a heat-dissipating body, and a curable thermally conductive grease that is provided between the heat-generating body and the heat-dissipating body to facilitate heat transfer from the heat-generating body to the heat-dissipating body ([0023]), wherein the heat-dissipating body is a heat sink ([0002]).
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 heat sink as taught by Kitada as the cooling member in Kitazawa ‘392, in order to dissipate heat with a reasonable expectation of success, because the cooling member in Kitazawa ‘392 is used to remove heat as recognized by Kitazawa ‘392, and the heat sink as a heat-dissipating body is used to remove heat as recognized by Kitada. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Response to Arguments
1. 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, Kitazawa ’552 (JP 2018062552 A), in addition to the previous references Kitazawa ’392 (US 2017/0260392 A1) and Yamada (JP 2006169343 A) under a new ground(s) of rejection which renders obvious the instant claims.
As stated above, claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa ’552 (JP 2018062552 A), as evidenced by “Density of Polymers” (Density of Polymers Information from scipoly.com, 2026), and “Alumina Property” (“Alumina Property”, from Accuratus Ceramic Corporation, 2025).
Claim 1 is also rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa ’392 (US 2017/0260392 A1) in view of Kitazawa ’552 (JP 2018062552 A) and Yamada (JP 2006169343 A), as evidenced by “Poly(dimethylsiloxane), vinyl terminated” (“Poly(dimethylsiloxane), vinyl terminated information”, from Millipore Sigma, 2025), and “Alumina Property” (“Alumina Property”, from Accuratus Ceramic Corporation, 2025).
2. Applicant argues that Table 1 of the instant Specification shows, in Examples 2, 3, and 7, the unexpectedly excellent shape retention and a high average height of projections and depressions on surface achieved by the features of the amended claims; Examples 2, 3, and 7 have an average particle diameter of the heat-conducting filler is in the range of 28 to 80 μm, and, as a result, achieve a shape retention property that is rated A (i.e., excellent shape retention); Examples 2, 3, and 7 show that when the packing fraction of the heat-conducting filler in the heat conducting composition is in the range of 71 to 85% by volume, as a result, average height of projections and depressions on surface is high (p. 6, last para; p. 7, 1st para).
In response, Applicant’s argument is not persuasive.
Claim 1 requires that a heat-conducting composition comprising a non-reactive silicone oil, wherein a second viscosity of the heat-conducting composition is 530 Pa·s or less as measured at a rotating speed of 1 rpm at 25°C by using the rotational viscometer.
However, Table 1 of the instant Specification (reproduced below) shows that Examples 2, 3, and 7 do not contain a non-reactive silicone oil which is required in claim 1; Examples 2, 3, and 7 have a second viscosity of the composition of 1000 Pa·s and 980 Pa·s as measured at a rotating speed of 1 rpm at 25°C, which are out of the claimed range of “530 Pa·s or less” in claim 1.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02 (d).
Here, the alleged unexpectedly result is from Examples 2, 3, and 7 of the instant Table 1. However, Examples 2, 3, and 7 are outside the claimed range.
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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