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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed October 7, 2025, with respect to the rejection(s) under 35 U.S.C. 103 in view of Hirabayashi et al. in view of Tang et al. and Maton et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant argues that Hirabayashi does not teach or suggest the inorganic particles being coated with an adhesive polymer before being mixed with the other components. However, as the Examiner noted in the previously mailed Office Action (emphasis added):
“…Hirabayashi teaches that the inorganic filler (E) is surface treated (ln. 791-801). Therefore, the subsequent mixing steps contemplated by Hirabayashi (ln. 791-801 and 802-812) are interpreted as referring to the inorganic filler (E) including the surface treatment. The unexpected results presented by applicant appear to result from surface treating the inorganic particles (a) with an adhesive polymer in a manner that is substantially similar to that of Hirabayashi when considering the above. Any order of subsequent mixing of the inorganic filler (E) including the surface treatment (i.e., that which reads on the claimed inorganic particles (a) having been coated with an adhesive polymer), with inorganic particles of Hirabayashi which read on the claimed inorganic particles (b) or the claimed base polymer would therefore appear to form a final product to have substantially similar properties.”
That is, the inorganic filler (E) of Hirabayashi may be coated or surface treated (ln. 729-731, 851) with surface treating agents including polymethylhydrogensiloxane (ln. 852), 3-glycidoxypropyltrimethoxysilane (line 855) (i.e., an epoxy group-containing alkyltrialkoxysilane), and cyclosiloxanes, such as methylcyclotetrasiloxane (ln. 844) (i.e., a cyclic polysiloxane oligomer), which reads on the claimed inorganic particles coated with an adhesive polymer. Subsequent mixing steps contemplated by Hirabayashi (ln. 706-801) are construed to include the which read on the claimed inorganic particles and the adhesive polymer. Based on this interpretation, it is the position of the Office that the limitation of “the inorganic particles (a) having been coated with the adhesive polymer before being mixed with the base polymer and the inorganic particles (b)” is met by Hirabayashi and therefore the unexpected results alleged by Applicant would also arise naturally and be achieved by the composition of Hirabayashi.
Applicant’s amendments and arguments are considered fully responded to within the rejections below.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 7, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hirabayashi et al. (WO 2013051600, English translation provided for citations, hereinafter referred to as “Hirabayashi”) in view of Tang et al. (US20150361320) and further in view of Maton (US 20080312366, hereinafter referred to as “Maton”).
As to Claim 1: Hirabayashi teaches a curable composition comprising silicone polymers, including:
polydimethylsiloxane (line 686) which preferably includes vinyl groups (lines 690-695), which reads on the claimed base polymer that is an addition curable silicone polymer,
component (E) which may be an inorganic filler (e.g., silica, alumina (ln. 757-768), titanium oxide (line 816)), which reads on the claimed thermally conductive particles including inorganic particles (a). Hirabayashi further teaches that the composition may comprise a component (F) which may be, inter alia, magnesium oxide (ln. 813-815) (which reads on the claimed thermally conductive particles including inorganic particles (b) according to the instant specification para. [0017]),
wherein said inorganic fillers may be coated or surface treated (ln. 729-731, 851) with surface treating agents including polymethylhydrogensiloxane (ln. 852), 3-glycidoxypropyltrimethoxysilane (line 855) (i.e., an epoxy group-containing alkyltrialkoxysilane), and cyclosiloxanes, such as methylcyclotetrasiloxane (ln. 844) (i.e., a cyclic polysiloxane oligomer), which reads on the claimed inorganic particles coated with an adhesive polymer.
Hirabayashi is silent towards the surface area of components (E) and (F), but teaches that the specific surface area of the inorganic filler (E) may be chosen as is standard for fillers within the art (pg. 19, ln 776-777).
Tang teaches a related thermally conductive cured/curable silicone composition (Abstract) for bonding, inter alia, semiconductor components ([0006]), wherein said thermally conductive composition may comprise a thermally conductive filler component (f) ([0052]) which may be aluminum oxide/alumina ([0053] and [0061]). Tang further teaches that the conductive filler component (f) which may be alumina may be a mixture of a first alumina filler and a second alumina having a different particle sizes ([0061]). Tang further teaches embodiments wherein alumina having a larger surface area of greater than 0.5 m2/g ([0163]) is mixed with alumina having a smaller particle size of less than 0.5 m2/g ([0171]). Hirabayashi and Tang are considered analogous art because they are directed towards the same field of endeavor, namely, curable polymeric silicone compositions comprising thermally conductive fillers intended for semiconductor/electronic heat dissipation applications. These ranges overlap with the claimed ranges for thermally conductive particles including inorganic particles (a) with a specific surface area of 0.1 to 0.5 m2/g and inorganic particles (b) with a specific surface area of more than 1 m2/g. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have applied the overlapping portion of the claimed range taught by Tang for the inorganic particles of Hirabayashi, and the motivation to have done so would have been, as Tang suggests, that mixing a thermally conductive filler having a larger surface area and a thermally conductive filler having a smaller surface area within curable silicone compositions is known to improve compositions comprising the same by increasing packing efficiency of the fillers, reducing viscosity and enhancing heat transfer ([0058]).
Hirabayashi contemplates various orders of mixing the inorganic filler component (E) which may be surface treated (ln. 791-801), thus any subsequent mixing steps are construed to include both the inorganic filler component (E) and the surface coating which reads on the claimed inorganic particles (a) having been coated with an adhesive polymer. The selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). See MPEP § 2144.04(IV). Any order of subsequent mixing of the inorganic filler (E) including the surface treatment (i.e., that which reads on the claimed inorganic particles (a) having been coated with an adhesive polymer), with inorganic particles of Hirabayashi which read on the claimed inorganic particles (b) or the claimed base polymer would therefore appear to form a final product to have substantially similar properties.
Hirabayashi is silent towards the composition comprising a silicone oil, but teaches that the composition may comprise plasticizers (page 31, ln. 1-3).
Maton teaches a related organosiloxane composition which comprises at least one or more siloxanes capable of undergoing addition type reactions ([0041]) (i.e., addition curable silicone polymer), thermally conductive fillers ([0157]). Maton further teaches that the composition further comprises a plasticizer which may be a polydimethylsiloxane having a viscosity in the range of from about 5 to about 100,000 mPa*s ([0015]) (which reads on the claimed silicone oil according to the instant specification para. [0049]). Maton further teaches that said plasticizer is included in an amount from 5 wt% to 70 wt% ([0117]), which overlaps with the claimed range. Hirabayashi and Maton are considered analogous art because they are directed towards the same field of endeavor namely curable organosiloxane compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include the claimed silicone oil in the claimed amounts within the composition of Hirabayashi because Hirabayashi teaches that the composition may comprise plasticizers (page 31, lines 1-3), and Maton teaches that plasticizers, including polydimethylsiloxane having a viscosity within the range which reads on the claimed silicone oil according to the instant specification para. [0049] are known within the art as plasticizer additives for curable silicone compositions having at least one siloxane capable of undergoing addition type reactions ([0041]) (i.e., addition curable silicone polymer) further comprising thermally conductive fillers ([0157]). In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). Furthermore, the motivation would have been that Maton teaches that including said plasticizer in the claimed amount is known within the art to improve the performance of cured materials comprising the composition (e.g., decreased likelihood of fracture from substrates bonded to the composition) ([0167]), or to reduce the viscosity of the composition ([0118]).
Hirabayashi is silent towards the tensile lap-shear stress of the adhesive polymer.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Hirabayashi teaches all of the claimed ingredients (i.e., the claimed components of the claimed adhesive polymer) in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. tensile lap-shear strength, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Hirabayashi is silent towards a value for the thermal conductivity of the composition, but does contemplate the use of fillers for the purpose of increasing thermal conductivity of the composition (page 19, ln. 757-768).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. thermal conductivity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Hirabayashi is silent towards the degree of coverage of the surface treating agent on the inorganic filler (i.e., wherein the surfaces of the inorganic particles (a) are “entirely coated” with the adhesive polymer). However, a person having ordinary skill in the art at the time of the invention would have recognized that the extent/degree of coverage of the surface treating agent on the inorganic filler would dictate the effects achieved by coating of the inorganic particles as contemplated by Hirabayashi (e.g., curability and adhesiveness (ln. 738), wettability of the surface of the inorganic filler (ln. 810-811), and dispersibility and strength of cured products containing the same (ln. 888-891)). As such, it would have been considered to be a result effective variable by a person having ordinary skill in the art at the time of the invention. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05(II). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have optimized the degree of coverage of the surface treating agent on the inorganic filler of Hirabayashi through routine experimentation, and the motivation to have done so would have been, as Hirabayashi suggests, that said surface treating agents control curability and adhesiveness (ln. 738), wettability of the surface of the inorganic filler (ln. 810-811), and dispersibility and strength of cured products containing the same (ln. 888-891). That is, a person having ordinary skill in the art would reasonably expect that, because the above effects are the result of the presence of the surface treating agent, maximizing the coverage of the inorganic filler with the surface treating agent, such as up to the claimed “entirely coated,” would also maximize said effects.
As to Claim 7: Hirabayashi and Maton render obvious the composition of claim 1 (supra).
Hirabayashi further teaches that the inorganic fillers may be silica, alumina (lines 757-768), or titanium oxide (line 816).
As to Claim 9: Hirabayashi and Maton render obvious the composition of claim 1 (supra).
Hirabayashi further teaches that the component (F) which reads on the claimed inorganic particles (b) may be surface treated with organic siloxane treating agents including silanes (e.g., silanes having epoxy functional group) (ln. 851-857).
As to Claim 10: Hirabayashi and Maton render obvious the composition of claim 1 (supra).
Hirabayashi further teaches that the composition may be in the form of a molded article (lines 10-13). Thus, a person having ordinary skill in the art before the effective filing date of the claimed invention could recognize that the composition of Hirabayashi is capable of forming a sheet.
As to Claim 11: Hirabayashi and Maton render obvious the composition of claim 1 (supra).
Hirabayashi teaches that the inorganic filler component (e.g., component F which may be surface treated titanium oxide (lines 73-75)) with surface treating agents including polymethylhydrogensiloxane (line 852), 3-glycidoxypropyltrimethoxysilane (line 855) (i.e., an epoxy group-containing alkyltrialkoxysilane), and cyclosiloxanes, such as methylcyclotetrasiloxane (line 844) (i.e., a cyclic polysiloxane oligomer), which read on the claimed adhesive polymer, is present in an amount of 10% by weight or more in the entire resin composition (lines 93-94). Hirabayashi does not disclose the amount of the compounds which read on the claimed adhesive polymer relative to the surface coated inorganic particle. However, the range for the component including the inorganic particle and surface coating polymer (i.e., 10% by weight or more) would necessarily overlap with the claimed range for the claimed adhesive component. This range overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Hirabayashi suggests, that the overlapping portion is a useable range for surface treating compounds on inorganic particles within composite silicone materials.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767