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 .
This communication responds to the amended claim set filed 01/15/2026. Claims 1-4, 6-8, 11-17 are current pending. Elected Claims 1-4, 6-8, 11-13 and 16-17 are under examination.
Non-elected claims 14-15 are withdrawn.
The 35 USC 103 rejections of 10/16/2025 based on Zhou et al. (CN109054719A) are WITHDRAWN due to Applicant’s amendments.
Claims 1-4, 6-8, 11-13 and 16-17 are rejected for the reasons set forth below.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a previous Office Action.
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/15/2-26 has been entered.
Claim Rejections - 35 USC § 112
Claims 7 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 7 and 13 are dependent on Claim 1. Each of Claims 7 and 13 recites “FV is a reaction-inhibitory functional value,” however, none of claims 1, 7, and 13 gives calculation of the value, therefore, it is not clear how to calculation FV, consequently, claims 7 and 13 are indefinite. For the purpose of compacted prosecution, Claims 7 and 13 are interpreted as depending on Claim 6.
Claim Rejections - 35 USC § 103
Claims 1-4, 6, 11, 13 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kong et al. (US2021/0371620 A1)
Regarding Claims 1-4, Kong teaches polyurethane resin formed from two parts of a polyol component and an isocyanate-functionalized component (claim 1), wherein the isocyanate-functionalized component comprising one or more mono-, di-, and multifunctional isocyanates. Kong further teaches the polyol component containing a catalyst ([0071]). Kong furthermore teaches each component comprising 85 wt.% to 95 wt.% of the thermally conductive filler based on the total weight of each component ([0040]). Moreover, Kong teaches the polyol component comprising antioxidants including phenolic hydroxyl group-containing antioxidants ([0051-52] and Table 1), such as 1,3,5-trimethyl-2,4,6-tris-(3,5-di-tert-butyl-4-hydroxybenzyl)-benzene ([0053]). The phenolic hydroxyl groups can consume isocyanates, as such inhibit or delay the curing reaction of between polyol and isocyanates. Therefore, the phenolic hydroxyl group-containing antioxidants read on reaction inhibitors.
Kong is silent on the claimed properties; however, the claimed properties are expected because Kong teaches a substantially identical composition to that of instant Claim 1. Case law holds that "Products of identical chemical composition cannot have mutually exclusive properties. "A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (See MPEP 2112.01 II). In this case, the phenolic hydroxyl group-containing antioxidants inhibit or delay the curing reaction of between polyol and isocyanates, consequently resulting in the desired waiting time.
Regarding Claim 6, the FV of 1,3,5-trimethyl-2,4,6-tris-(3,5-di-tert-butyl-4-hydroxybenzyl)-benzene=3/775.2=0.004.
Regarding Claim 8, The weight ratio of antioxidant blend to catalyst of Example 1 composition is 2 (Table 1). Kong further teaches the antioxidants of the composition can be phenolic hydroxyl group-containing compounds ([0052-53]). As discussed above, phenolic hydroxyl group-containing compounds having inhibiting effect on curing reaction of between polyol and isocyanates. Therefore, Kong discloses the weight ratio of the reaction inhibitor to catalyst can be 2.
Regarding Claim 11, Kong teaches that suitable isocyanates include 1,6-hexyl diisocyanate, 4,4- diphenylmethane diisocyanate ([0020-0021]). The NCOV of 1,6-hexyl diisocyanate=2/168.9=0.012; the NCOV of diphenylmethane diisocyanate=2/250.25=0.008.
Regarding Claim 13, the calculated R3 value of composition of Example 1 is lower than the
claimed 50 to 500, however, R3=FV/NCOV * w2/w3; w2 is the weight ratio of the antioxidants to the
isocyanate compound and w3 is reciprocal of w2, therefore, a small increase of antioxidants amount and small decrease of isocyanate amount lead great increase of the R3 value. Therefore, the R3 value would be considered a result effective variable before the effective filling date of instant application. As such, without showing unexpected results, the claimed R3 value cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of instant application would have optimized, by routine experimentation, the amounts of antioxidants and the isocyanate compound, to reach the desired R3 value. It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. ( See MPEP 2144.05 II). In this case, increasing the amount of the reaction inhibitor and decreasing the amount of isocyanates would slow the curing process as such obtaining a composition with a desired waiting time.
Regarding Claim 16, Kong teaches that suitable commercial fillers include DAW-45 aluminum oxide fillers from Denka and aluminum oxide fillers Showa-Denko ([0038]), DAW-45 fillers have D50 of 42.8 µm and Showa-Denko aluminum oxide fillers have D50 from 0.6 μm to 3.1 μm.
Regarding Claim 17, Kong teaches the composition comprising 0.1 to 3 wt.% of antioxidants including phenolic hydroxyl group-containing compounds ([0052-53]) which function as inhibitor for curing of the composition.
Claims 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kong, as applied to Claim 1 above, and as evidenced by DOW Voranol® polypropylene glycol products information.
Regarding Claim 7, Kong discloses that suitable commercial polyols include DOW Voranol® polypropylene glycol (PPG) series ([0014]). Further, the Example 2 comprising 57 parts PPG triol and 41.5 parts PPG diol and 2 parts antioxidant. In view of Example 1, the antioxidant can be in the component of polyol. In according to DOW Voranol® PPG product information, the PPG toil VORANOL™ CP 755 has an average molecular weight of 700 and hydroxyl value of 250 mg KOH/g (VORANOL™ CP 755 technical information); and the PPG diol Voranol® P 400 has an average molecular weight of around 400 and hydroxyl value of 250 mg KOH/g (see US20220127457 A1 [0113]); therefore, the average molecular weight of polyol of Example 2 is 584 (700*57/98.5+425*41.5/98.5). Consequently, R1=(98.5/2*250/584)-(0.004*2/98.5)=21.
Regarding Claim 12, because Kong teaches diphenylmethane diisocyanate is a suitable isocyanate compound for the isocyanate component, for convenience of calculation, isocyanate compound of the composition of Example 2 can be replaced by diphenylmethane diisocyanate, consequently,
R2=(250/584*98.5/100)/(0.008/100/98.5)=51.
Response to Arguments
Applicant’s arguments with respect to claim 1 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.
Conclusion
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/HUIHONG QIAO/ Examiner, Art Unit 1763
/CATHERINE S BRANCH/ Primary Examiner, Art Unit 1763