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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/29/2025 has been entered.
Claims 1 and 3-6 are currently pending and under examination.
The rejection of claims 1 and 3-6 under 35 U.S.C. 103 as being unpatentable over Tanaka (JP2016188297 as cited in IDS, hereinafter Tanaka) in view of Masahiko (JP2000186214 as cited in IDS, hereinafter Masahiko), Yoshimoto (WO2016104136, hereinafter Yoshimoto) and Kuroda (WO 2007/074562 A1, hereinafter Kuroda), as evidenced by Film-2012 ("Film Properties of Plastics and Elastomers", L. W. McKeen, 3rd edition, Elsevier Inc., chapter 2, Pages 19-55, 2012, hereinafter Film-2012) is withdrawn in view of the above amendments.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 § 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.
Claims 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP 2016188297 A, hereinafter Tanaka) in view of Masahiko (JP 2000186214 A, hereinafter Masahiko), and Yamada (JP S59204632 A, hereinafter Yamada), as evidenced by Film-2012 ("Film Properties of Plastics and Elastomers", L. W. McKeen, 3rd edition, Elsevier Inc., chapter 2, Pages 19-55, 2012, hereinafter Film-2012), and Yoshimoto (WO 2016/104136 A1, hereinafter Yoshimoto).
Regarding claim 1, the limitation “for a low dielectric thermally conductive material” is an intended use and does not add structural difference, thus the intended use is extended little patentable weight. See MPEP § 2112.02.
Tanaka teaches a thermally conductive composition (para [0001], [0009]) comprising: 100 parts by mass of a (meth) acrylic resin composition (A) comprising (meth) acrylic acid ester polymer (A1), (meth) acrylic acid ester monomer (alpha 1), and 0.2 mass% to 3 mass% of polyfunctional monomer (alpha 2); and 150-600 parts by mass of thermally conductive filler (E). Thus, the (meth) acrylic resin composition (A) of Tanaka reads on the claimed acrylic resin composition. The (meth) acrylic acid ester monomer (alpha 1) of Tanaka reads on the claimed one or two or more types of (meth)acrylate monomers.
Tanaka teaches (para [0058]) that the (meth) acrylic acid ester polymer (A1) can be formed by polymerizing a (meth) acrylic acid ester monomer (a1m). Thus, the (meth) acrylic acid ester polymer (A1) of Tanaka reads on the claimed acrylic polymer formed by polymerizing one or two or more types of (meth)acrylates.
Tanaka teaches that the composition comprises 0.2 mass% to 3 mass % of polyfunctional monomer based on 100 mass% of the (meth) acrylic resin composition (A) (para [0079]), equaling to 0.2 parts by mass to 3 parts by mass of polyfunctional monomer based on 100 parts by mass of the (meth) acrylic resin composition (A), which overlaps with the claimed range of "from 0.01 parts by mass to 0.5 parts by mass".
Tanaka teaches that the polymerization initiator is preferably in an amount of 0.3-2 parts by mass per 100 parts by mass of the (meth) acrylic resin composition (A) (para [0117]), which overlaps with the claimed range of "from 0.6 parts by mass to 1.3 parts by mass".
Tanaka teaches that examples of the thermally conductive filler (E) include silica, calcium carbonate, and aluminum hydroxide, preferably aluminum hydroxide (para [0099]). Tanaka also teaches that the thermally conductive filler (E) has an average particle diameter of 0.5 μm or more and 25 μm or less (para [0101]), which overlaps with the claimed range of "7 μm or greater and 15 μm or less".
Tanaka teaches that based on 100 parts by mass of a (meth) acrylic resin composition (A), thermally conductive filler (E) is 150-600 parts by mass (para [0009]), which overlaps with the claimed range of "from 90 parts by mass to 190 parts by mass".
Tanaka also teaches that the composition is electrically insulating (para [0147], [0154]).
Film-2012 as an evidentiary reference shows that when the material is electrically insulating, the material has low dielectric constant (p. 39). Thus, the composition as taught by Tanaka has a low dielectric constant.
Tanaka further teaches that the thermally conductive composition has low hardness, excellent flexibility, and excellent shape followability (para [0119]). Tanaka also teaches that from the viewpoint of increasing shape followability and adhesion, the hardness of the thermally conductive composition can be zero (para [0119]).
Tanaka does not teach from 330 parts by mass to 440 parts by mass of crystalline silica.
However, Masahiko teaches that a sealing resin composition has good thermal conductivity ([0012]). Masahiko teaches that the sealing resin composition comprises a thermosetting resin, an inorganic filler, and a calcium carbonate filler having a smaller particle size than that of the inorganic filler (para [0001]),
wherein the thermosetting resin can be an acrylic resin (para [0014]);
the inorganic filler can be a crystalline silica filler, and the inorganic filler has an average particle diameter of 5 μm or more and 70 μm or less (para [0008]), which overlaps with the claimed range of "20 μm or greater";
the calcium carbonate filler has an average particle diameter of 0.05 μm or more and 5 μm or less ([0008]), which overlaps with the range of “0.5 μm or more and 25 μm or less” of the thermally conductive filler (E) in Tanaka.
Masahiko specifically teaches that the crystalline silica filler used in Examples 1-2 has an average particle size of 35 μm (para [0020]), which falls within the claimed range of "20 μm or greater".
Masahiko also teaches that when the resin composition comprises two types of fillers with different particle sizes, such as crystalline silica as an inorganic filler with larger particle size in an amount of 30 to 90% by weight, and another filler with smaller particle size in an amount of 5 to 50% by weight, the resin composition can have a better fluidity and wear resistance, and better thermal conductivity (para [0028]; Example 2; Table 1; [0012]). Thus, in Masahiko, the weight ratio of crystalline silica as an inorganic filler with larger particle size to another filler with smaller particle size can be 1.8 to 6.
Masahiko further teaches that the resin composition comprising silica filler has a low coefficient of thermal expansion, a low internal stress, good thermal conductivity, low moisture permeability, excellent mechanical properties, and low cost (para [0003]).
Furthermore, Yoshimoto as an evidentiary reference shows that crystalline silica filler is used to lower the dielectric constant of the resin composition for electronic material (para [0041]).
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 a thermally conductive composition comprising 150-600 parts by mass of a thermally conductive filler such as aluminum hydroxide having an average particle diameter of 0.5 μm or more and 25 μm or less as taught by Tanaka, further comprising crystalline silica filler having an average particle diameter of 5 μm or more and 70 μm or less such as 35 μm as taught by Masahiko, wherein the weight ratio of crystalline silica filler to the thermally conductive filler with smaller particle size is 1.8 to 6. For doing so, the composition comprising two types of fillers with different particle sizes, crystalline silica filler with larger particle size and aluminum hydroxide filler with smaller particle size, would have a better fluidity, wear resistance, and thermal conductivity with a reasonable expectation of success.
Furthermore, for doing so, it would make the composition having a low coefficient of thermal expansion, a low internal stress, good thermal conductivity, low moisture permeability, excellent mechanical properties, and low cost with a reasonable expectation of success, because the resin composition comprising silica filler has a low coefficient of thermal expansion, a low internal stress, good thermal conductivity, low moisture permeability, excellent mechanical properties, and low cost as recognized by Masahiko.
Thus, in the composition as taught by the combination of Tanaka and Masahiko, the crystalline silica filler can be in an amount of 270-1080 parts by mass, which overlaps with the claimed range of “from 330 parts by mass to 440 parts by mass”.
Furthermore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to expect that this composition as taught by the combination of Tanaka and Masahiko, would be low dielectric with a reasonable expectation of success, because the electrically insulating composition as taught by Tanaka has low dielectric constant as art recognized, and crystalline silica filler as taught by Masahiko lowers the dielectric constant of the resin composition for electronic material as art recognized.
Tanaka also teaches that the thermally conductive composition comprising a thermally conductive filler such as aluminum hydroxide, has excellent heat resistance ([0021]). Tanaka also teaches that the thermally conductive filler has an average particle diameter of 0.5 μm or more and 25 μm or less (para [0101]).
Tanaka does not teach low soda aluminum hydroxide having an amount of soluble sodium of less than 100 ppm and having an average particle size of 7 µm or greater and 15 µm or less.
However, Yamada teaches a resin composition having excellent heat resistance (abstract); and the resin composition comprising a polymer resin and aluminum hydroxide filler, wherein the aluminum hydroxide has an average particle diameter of 3 to 30 µm and a total soda content (calculated as Na2O) of 0.07% or less (abstract; p. 2, ll. 3-5), equaling to 700 ppm or less, which overlap with the claimed ranges of “less than 100 ppm” and “7 µm or greater and 15 µm or less”, and also overlaps with the range of “0.5 μm or more and 25 μm or less” of the thermally conductive filler such as aluminum hydroxide in Tanaka.
Yamada also teaches that this aluminum hydroxide filler is used to provide heat resistance to the polymer resin (p. 1, ll. 3-4).
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 aluminum hydroxide having an average particle diameter of 3 to 30 µm and a total soda content (calculated as Na2O) of 0.07% or less as taught by Yamada as the aluminum hydroxide having an average particle diameter of 0.5 μm or more and 25 μm or less in Tanaka, in order to make the thermally conductive composition having good heat resistance with a reasonable expectation of success, because the aluminum hydroxide having an average particle diameter of 3 to 30 µm and a total soda content (calculated as Na2O) of 0.07% or less as taught by Yamada provides heat resistance to polymer resin as recognized by Yamada.
Furthermore, Tanaka teaches that the thermally conductive composition has low hardness, excellent flexibility, and excellent shape followability (para [0119]). Tanaka also teaches that from the viewpoint of increasing shape followability and adhesion, the hardness of the thermally conductive composition can be zero (para [0119]).
Tanaka also teaches that the thermally conductive composition further comprises a plasticizer, and the plasticizer is liquid in the temperature range of 15°C to 100°C (para [0096]); when mixing the plasticizer with the composition, the plasticizer has good workability and facilitates molding of the composition (para [0096]).
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 reasonably expect that the claimed properties of the composition being liquid having fluidity at room temperature and the aggregation of the filler not occurring, would flow naturally from the teachings of Tanaka, Masahiko, and Yamada, because the teachings of the combination of Tanaka, Masahiko, and Yamada provide substantially the same composition comprising the same (meth)acrylate monomer, the same acrylic polymer, the same crystalline silica, the same low soda aluminum hydroxide, the same polyfunctional monomer, and the same polymerization initiator as claimed, and also because the composition of Tanaka can have a hardness of zero in order to have an excellent flexibility and shape followability, and the composition of Tanaka comprises a plasticizer in liquid form, and the liquid plasticizer has good workability and facilitates molding of the composition as recognized by Tanaka, and further because the resin composition comprising two types of fillers with different particle sizes, such as crystalline silica filler with larger particle size and another filler with smaller particle size, has a better fluidity as recognized by Masahiko. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 3, Tanaka teaches that the composition is cured to form a thermally conductive sheet-like molded body (para [0014], [0151]).
Regarding claim 4, Tanaka teaches that the thermally conductive sheet-like molded body has an asker C hardness of zero or more and 20 or less (para [0119]), which falls within the claimed range of "50 or less". Tanaka specifically teaches that an asker C hardness of the thermally conductive sheet-like molded body is 15 (Example 3; Table 1), which falls within the claimed range of "50 or less".
Tanaka teaches that the thermally conductive sheet-like molded body has a thermal conductivity of 1.0 W/m K or more (para [0145]), which overlaps with the claimed range of "1.4 W/m·K or greater". Tanaka specifically teaches that the thermal conductivity of the thermally conductive sheet-like molded body is 1.4 W/m·K (Example 3; Table 1), which falls within the claimed range of "1.4 W/m·K or greater".
Tanaka does not teach a relative dielectric constant.
However, Tanaka teaches that the thermally conductive sheet-like molded body is electrically insulating (para [0147], [0154]).
Film-2012 as an evidentiary reference shows that when the material is electrically insulating, the material has low dielectric constant (p. 39). Thus, the thermally conductive sheet-like molded body as taught by Tanaka has a low dielectric constant.
Masahiko teaches a resin composition comprising crystalline silica filler (para [0008], [0020]; Examples 1-2).
Yoshimoto as an evidentiary reference shows that crystalline silica filler lowers the dielectric constant of the resin composition for electronic material (para [0041]).
As discussed above, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make a thermally conductive composition as taught by Tanaka, further comprising crystalline silica filler as taught by Masahiko.
Thus, 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 thermally conductive molded body composed of this composition as taught by the combination of Tanaka and Masahiko would be low dielectric, such as a relative dielectric constant of 5.0 or less, because the electrically insulating composition as taught by Tanaka has low dielectric constant as art recognized, and crystalline silica filler as taught by Masahiko lowers the dielectric constant of the resin composition for electronic material as art recognized.
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. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 136668 (Fed. Cir. 2007). 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, 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 asker C hardness, the claimed relative dielectric constant, and the claimed thermal conductivity would flow naturally from the teachings of Tanaka, Masahiko and Yamada, because the teachings of the combination of Tanaka, Masahiko and Yamada provide substantially the same cured product of the same composition comprising the same acrylic polymer, the same (meth)acrylate monomer, the same crystalline silica, the same low soda aluminum hydroxide, the same polyfunctional monomer, and the same polymerization initiator as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 5 and 6, Tanaka teaches that the composition is cured to form a thermally conductive sheet (para [0014], [0151]).
Response to Arguments
Applicant's arguments with respect to the prior rejections have been considered but are moot, because the arguments do not apply to all of the references being used in the current rejection. The current rejection utilizes a new reference, Yamada (JP S59204632 A), in addition to the previous references Tanaka (JP 2016188297 A) and Masahiko (JP 2000186214 A) under a new ground(s) of rejection which renders obvious the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIAJIA JANIE CAI whose telephone number is 571-270-0951. The examiner can normally be reached Monday-Friday 8:30 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761