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 amendments/remarks filed 11/25/2025.
Claims 1-7, 9, 11, 12, 14, 15, and 17-28 are currently pending, of which claims 15 and 17-25 are withdrawn. Claims 1-7, 9, 11, 12, 14, and 26-28 are currently under examination.
The rejection of claims 1-7, 9, 11, 12, and 14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendments.
The rejection of claims 1, 2, 4, 5, 11, and 14 under 35 U.S.C. 103 as being unpatentable over Saga (US 2018/0230290 A1, hereinafter Saga) is withdrawn in view of the above amendments.
The rejection of claims 3, 6 and 9 under 35 U.S.C. 103 as being unpatentable over Saga (US 2018/0230290 A1, hereinafter Saga) is withdrawn in view of the above amendments.
The rejection of claim 7 under 35 U.S.C. 103 as being unpatentable over Saga (US 2018/0230290 A1, hereinafter Saga) in view of I’Abee (US 2012/0228542 A1, hereinafter I’Abee) is withdrawn in view of the above amendments.
The rejection of claim 12 under 35 U.S.C. 103 as being unpatentable over Saga (US 2018/0230290 A1, hereinafter Saga) in view of Fujikawa (US 2017/0081579 A1, hereinafter Fujikawa) is maintained in view of the above amendments.
The rejection of claims 1-7, 9, 11, 12, and 14 being provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 9-13, 18, 19, and 21 of copending Application No. 17/996,169 is maintained 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 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 depends from claim 11, and claim 11 depends from claim 1.
Claim 1 recites “a dispersant in an amount of 0.01 % by volume to 20 % by volume based on total volume of the composition”.
Claim 11 depends from claim 1 and recites that the composition further comprises an additive.
Claim 12 depends from claim 11 and recites “the dispersant is present in an amount of 0.01 % by volume to 20 % by volume based on total volume of the composition”. Thus, claim 12 fails to further limit the subject matter of claim 11.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-6, 9, 11, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Saga (US 2018/0230290 A1, hereinafter Saga) in view of Fujikawa (US 2017/0081579 A1, hereinafter Fujikawa), as evidenced by “Boron nitride properties” (“Boron nitride material properties from Accuratus”, 2017, hereinafter “Boron nitride properties”), “Polyamide property” (“Polyamide property from Azo Materials”, 2001, hereinafter “Polyamide property”), “Butyl acetate property” (“Butyl acetate property from Chemical Book”, 2018, hereinafter “Butyl acetate property”), and “DISPERBYK-111 property” (“DISPERBYK-111 technical data sheet”, 2021, hereinafter “DISPERBYK-111 property”).
Regarding claim 1, the instant invention discloses that suitable thermally conductive and electrically insulative filler materials include boron nitride (instant para [0057]).
Saga teaches a thermally conductive polymer paste composition comprising (a) a polymer, (b) a boron nitride filler, and (c) a solvent (claim 9, para [0007]), wherein the polymer is a thermoplastic polymer (para [0021]), and the boron nitride filler is an electrically insulating and thermally conductive filler (para [0027]). Thus, the boron nitride filler can be in an amount of 100% by volume based on the total volume of the fillers (i.e. the boron nitride filler) in Saga, which falls within the claimed range of “at least 50% by volume”.
“Boron nitride properties” as an evidentiary reference shows that boron nitride has a thermal conductivity of 30 W/m·K (p. 1, § Thermal), which falls within the claimed range of “at least 5 W/m·K”. “Boron nitride properties” as an evidentiary reference also shows that boron nitride has a volume resistivity of more than 1014 ohm·cm ((p. 1, § Electrical), equaling to more than 1012 ohm·m (Ω⋅m), which falls within the claimed range of “at least 10 Ω·m”.
Saga does not teach that boron nitride has a thermal conductivity of at least 5 W/m·K measured according to ASTM D7984 and a volume resistivity of at least 10 Ω⋅m measured according to ASTM D257, C611, or B193.
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 expect that the boron nitride filler in Saga would have a thermal conductivity of 30 W/m·K measured according to ASTM D7984, and a volume resistivity of more than 1014 ohm·cm measured according to ASTM D257, C611, or B193 with a reasonable expectation of success, because boron nitride has a thermal conductivity of 30 W/m·K and a volume resistivity of more than 1014 ohm·cm as evidenced by the reference “Boron nitride properties”. No matter what kind of method is used to measure the thermal conductivity and volume resistivity of boron nitride, it will not change the fact that boron nitride has a thermal conductivity of 30 W/m·K and a volume resistivity of more than 1014 ohm·cm as art evidenced.
Saga also teaches that the thermally conductive polymer paste composition can comprise a dispersing agent ([0041]), which reads on the claimed dispersant.
Saga does not teach the amount of the dispersing agent.
However, Fujikawa teaches a thermal conductive polymer composition comprising thermal conductive inorganic particles and an electrically insulating polymer (para [0020]), wherein the thermal conductive inorganic particles comprise boron nitride particles (para [0020]), and the electrically insulating polymer is a thermoplastic polymer (para [0093]).
Fujikawa teaches that the thermal conductive polymer composition further comprises a dispersant (para [0133]), and the dispersant enhances the wettability of the thermal conductive inorganic particles (e.g. boron nitride) to the polymer and suppresses aggregation of the thermal conductive inorganic particles (e.g. boron nitride) (para [0133]). Fujikawa also teaches that the dispersant in the polymer composition is in an amount of 0.01 parts by mass to 10 parts by mass per 100 parts by mass of the thermal conductive inorganic particles (para [0135], [0136]).
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 a dispersant in an amount of 0.01 parts by mass to 10 parts by mass per 100 parts by mass of the thermal conductive inorganic particles as taught by Fujikawa as the amount of the dispersant in Saga, in order to enhance the wettability of the thermal conductive inorganic particles (e.g. boron nitride) to the polymer and suppress aggregation of the thermal conductive inorganic particles (e.g. boron nitride) with a reasonable expectation of success.
Saga also teaches that the thermally conductive polymer paste composition comprises (a) 30 to 60 parts by weight of a polymer, (b) 100 parts by weight of a boron nitride filler, and (c) 2 to 60 parts by weight of a solvent (para [0007], claim 9), wherein the polymer is a thermoplastic polymer such as polyamide (para [0021], [0025]), and the solvent can be butyl acetate (para [0040]).
Fujikawa also teaches that the dispersant can be a dispersant with trade name “DISPERBYK-111” (para [0218]).
Thus, the composition as taught by the combination of Saga and Fujikawa can comprise 30 to 60 parts by weight of a polymer, 100 parts by weight of a boron nitride filler, 2 to 60 parts by weight of a solvent, and 0.01 to 10 parts by weight of a dispersant.
“Boron nitride properties” as an evidentiary reference shows that boron nitride has a density of 1.9 gm/cc (p. 1, § Mechanical), equaling to 1.9 g/cm3.
“Polyamide property” as an evidentiary reference shows that polyamide has a density of 1.14 g/cm3 (p. 1, § Typical Properties).
“Butyl acetate property” as an evidentiary reference shows that butyl acetate has a density of 0.88 g/ml (p. 1, § Butyl acetate Properties), equaling to 0.88 g/cm3.
“DISPERBYK-111 property” as an evidentiary reference shows that the dispersant “DISPERBYK-111” has a density of 1.16 g/ml (p. 1, § Typical Properties), equaling to 1.16 g/cm3.
Therefore, in the composition as taught by the combination of Saga and Fujikawa, the dispersant can be in an amount of 0.005% by volume to 9.6% by volume based on the total volume of the composition, which overlaps with the claimed range of “0.01 % by volume to 20 % by volume”.
Furthermore, Saga teaches that the viscosity of the thermally conductive polymer paste composition is 10 to 300 Pa·s (para [0016]), which falls within the claimed range of “1 to 700 Pa·s”. Saga also teaches that the solvent adjusts viscosity of the paste to be preferable for applying on a substrate (para [0037]).
Saga does not teach that the thermally conductive polymer paste composition has a viscosity of 1 Pa·s to 700 Pa·s at a shear rate of 10 s-1 as measured by an MARS II rheometer at 80ᵒC using a cone plate with a diameter of 20 mm and an angle 1ᵒ.
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 viscosity at a shear rate of 10 s-1 as measured by an MARS II rheometer at 80ᵒC using a cone plate with a diameter of 20 mm and an angle 1ᵒ, would flow naturally from the teachings of the combination of Saga and Fujikawa, because the teachings of the combination of Saga and Fujikawa provide substantially the same composition comprising the same thermoplastic polymer, the same thermally conductive filler package comprising the same amount of the same thermally conductive and electrically insulative filler particles, and the same amount of dispersant as claimed, also because the thermally conductive polymer paste composition has a viscosity of 10 to 300 Pa·s as recognized by Saga, and further because the solvent in the thermally conductive polymer paste composition adjusts viscosity of the paste composition as recognized by Saga. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 2, the instant invention discloses that the composition can comprise a solvent (instant para [0087]), and the solvent can be present in the composition in an amount of 1% by volume to 60% by volume based on total volume of the composition (instant para [0088]).
Saga teaches a thermally conductive polymer composition comprising (a) 30 to 60 parts by weight of a polymer, and (b) 100 parts by weight of a boron nitride filler (abstract, para [0012], claim 1), wherein the polymer is a thermoplastic polymer (para [0021]), and the boron nitride filler is an electrically insulating and thermally conductive filler (para [0027]). Saga also teaches that the thermally conductive polymer composition can be molded to make an insulating article (para [0014]).
Saga further teaches that the thermally conductive polymer composition is combined with a solvent to form a thermally conductive polymer paste composition (para [0016]). Saga teaches that the thermally conductive polymer paste composition comprises (a) 30 to 60 parts by weight of a polymer, (b) 100 parts by weight of a boron nitride filler, and (c) 2 to 60 parts by weight of a solvent (para [0007], claim 9), wherein the polymer is a thermoplastic polymer (para [0021], [0025]). Saga also teaches that the thermally conductive polymer paste composition can comprise a dispersing agent ([0041]).
Saga does not teach that the thermally conductive polymer paste composition has a leakage current of less than 0.5 mA/mm2 measured according to IEC 60243.
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 leakage current measured according to IEC 60243, would flow naturally from the teachings of the combination of Saga and Fujikawa, because the teachings of the combination of Saga and Fujikawa provide substantially the same composition comprising the same thermoplastic polymer, the same thermally conductive filler package comprising the same amount of the same thermally conductive and electrically insulative filler particles, and the same amount of dispersant as claimed, and also because the thermally conductive polymer composition of Saga is molded to make an insulating article as recognized by Saga. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 3, 6 and 9, the instant invention discloses that “total solids” refers to the non-volatile content of the composition, i.e., materials which will not volatilize when heated to 105°C and standard atmospheric pressure (101325 Pa) for 60 minutes (instant para [0094]).
Saga teaches that the thermally conductive polymer paste composition comprises (a) 30 to 60 parts by weight of a polymer, (b) 100 parts by weight of a boron nitride filler, and (c) 2 to 60 parts by weight of a solvent (para [0007], claim 9), wherein the polymer is a thermoplastic polymer such as polyamide (para [0021], [0025]), and the solvent can be butyl acetate (para [0040]). Saga also teaches that the thermally conductive polymer paste composition can comprise a dispersing agent ([0041]).
Fujikawa teaches that the dispersant in the polymer composition is in an amount of 0.01 parts by mass to 10 parts by mass per 100 parts by mass of the thermal conductive inorganic particles (para [0135], [0136]). Fujikawa also teaches that the dispersant can be a dispersant with trade name “DISPERBYK-111” (para [0218]).
As discussed in claim 1 above, the composition as taught by the combination of Saga and Fujikawa can comprise 30 to 60 parts by weight of a polymer, 100 parts by weight of a boron nitride filler, 2 to 60 parts by weight of a solvent, and 0.01 to 10 parts by weight of a dispersant.
“Boron nitride properties” as an evidentiary reference shows that boron nitride has a density of 1.9 gm/cc (p. 1, § Mechanical), equaling to 1.9 g/cm3.
“Polyamide property” as an evidentiary reference shows that polyamide has a density of 1.14 g/cm3 (p. 1, § Typical Properties).
“Butyl acetate property” as an evidentiary reference shows that butyl acetate has a density of 0.88 g/ml (p. 1, § Butyl acetate Properties), equaling to 0.88 g/cm3.
“DISPERBYK-111 property” as an evidentiary reference shows that the dispersant “DISPERBYK-111” has a density of 1.16 g/ml (p. 1, § Typical Properties), equaling to 1.16 g/cm3.
Therefore, the thermoplastic polymer (i.e. the thermoplastic polymer such as polyamide) can be in an amount of about 17% to 49% by volume based on the total volume of the composition as taught by the combination of Saga and Fujikawa, which falls within the claimed range of “1% by volume to 70% by volume”.
The boron nitride filler can be in an amount of about 29% to 65% by volume based on the total volume of the composition as taught by the combination of Saga and Fujikawa, which overlaps with the claimed range of “30% by volume to 99% by volume”.
The total amount of the polymer (i.e. the thermoplastic polymer such as polyamide) and the boron nitride filler can be in an amount of about 51% to 98% by volume based on the total volume of the composition as taught by the combination of Saga and Fujikawa, which falls within the claimed range of “40% by volume to 100% by volume”.
Regarding claim 4, the instant invention discloses that the thermoplastic polymer can be a thermoplastic elastomer such as fluoroelastomer (instant para [0039]).
Saga teaches that the polymer is a thermoplastic polymer such as fluoroelastomer (para [0021], [0025]), which reads on the claimed elastomeric material.
Regarding claim 5, Saga teaches that the polymer is a thermoplastic polymer such as polyamide (para [0021], [0025]), which reads on the claimed thermoplastic polymer being substantially free of silicone.
Regarding claim 11, Saga teaches that the thermally conductive polymer paste composition can further comprise an additive ([0041]).
Regarding claim 12, as discussed in claim 1 above, in the composition as taught by the combination of Saga and Fujikawa, the dispersant can be in an amount of 0.005% by volume to 9.6% by volume based on the total volume of the composition, which overlaps with the claimed range of “0.01 % by volume to 20 % by volume”.
Regarding claim 14, Saga teaches that the thermally conductive polymer paste composition is applied on a substrate, then the applied thermally conductive polymer paste composition is dried to form a thermally conductive polymer layer (i.e. a thermally conductive polymer composition) for sealing material (para [0017], [0018], [0014]), which reads on the claimed composition being a sealant composition.
2. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Saga (US 2018/0230290 A1, hereinafter Saga) in view of Fujikawa (US 2017/0081579 A1, hereinafter Fujikawa), as evidenced by “Boron nitride properties” (“Boron nitride material properties from Accuratus”, 2017, hereinafter “Boron nitride properties”), “Polyamide property” (“Polyamide property from Azo Materials”, 2001, hereinafter “Polyamide property”), “Butyl acetate property” (“Butyl acetate property from Chemical Book”, 2018, hereinafter “Butyl acetate property”), and “DISPERBYK-111 property” (“DISPERBYK-111 technical data sheet”, 2021, hereinafter “DISPERBYK-111 property”) as applied to claims 1-6, 9, 11, 12, and 14 above, and further in view of I’Abee (US 2012/0228542 A1, hereinafter I’Abee).
The disclosure of Saga in view of Fujikawa as evidenced by “Boron nitride properties”, “Polyamide property”, “Butyl acetate property”, and “DISPERBYK-111 property” is relied upon as set forth above.
Regarding claim 7, Saga teaches a thermally conductive polymer paste composition comprising (a) a polymer, (b) a boron nitride filler, and (c) a solvent (claim 9, para [0007]), wherein the polymer is a thermoplastic polymer (para [0021]), and the boron nitride filler is an electrically insulating and thermally conductive filler (para [0027]).
Saga also teaches applying the thermally conductive polymer paste composition on a substrate, then drying the applied thermally conductive polymer paste composition to form a thermally conductive polymer layer (i.e. a thermally conductive polymer composition) (para [0017], [0018]), and the thermally conductive polymer composition is molded to make an insulating article for heat dissipation (para [0014]).
Saga does not teach that the filler further comprises (i) thermally conductive, electrically conductive filler particles having a thermal conductivity of at least 5 W/m·K measured according to ASTM 7984 and a volume resistivity of less than 1 Ω·m measured according to ASTM D257, C611, or B193 and present in an amount of no more than 50% by volume based on total volume of the filler package, and/or (ii) non-thermally conductive, electrically insulative filler particles having a thermal conductivity of less than 5 W/m·K measured according to ASTM 7984 and a volume resistivity of at least 1Ω·m measured according to ASTM D257, C611, or B193 and present in an amount of no more than 10% by volume based on total volume of the filler package.
However, I’Abee teaches a composition comprising (a) from 35 to 80 vol % of a thermoplastic polymer, (b) from 5 to 45 vol % of a low thermally conductive and electrically insulative filler, (c) from 2 to 15 vol % of a high thermally conductive and electrically insulative filler, and (d) from 2 to 15 vol % of a high thermally conductive and electrically conductive filler (para [0003]-[0010]), wherein the high thermally conductive and electrically insulative filler (c) is boron nitride (para [0096]). Thus, based on the total volume of the filler of I’Abee, the high thermally conductive and electrically conductive filler (d) can be in an amount of 3% by volume to 23% by volume, which falls within the claimed range of “no more than 50% by volume based on total volume of the filler package”.
I’Abee teaches that the high thermally conductive and electrically conductive filler (d) has a thermal conductivity greater than or equal to 50 W/m·K and a resistivity less than or equal to 1 Ohm·cm (para [0097]), equaling to less than or equal to 0.01 Ohm·m (Ω·m), which fall within the claimed ranges of “at least 5 W/m·K” and “less than 1 Ω·m”.
I’Abee also teaches that the composition displays thermally conductive and electrically insulative properties (para [0131]), and the composition has a thermal conductivity of at least 1.0 W/m·K and a volume resistivity of at least 107 Ohm·cm (para [0003]-[0010], [0131]).
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 thermally conductive polymer paste composition comprising a boron nitride filler as taught by Saga, further comprising a thermally conductive and electrically conductive filler having a thermal conductivity greater than or equal to 50 W/m·K and a resistivity less than or equal to 1 Ohm·cm as taught by I’Abee, wherein the thermally conductive and electrically conductive filler is in an amount of 3% by volume to 23% by volume based on the total volume of the filler. For doing so, a person of ordinary skill in the art would make the thermally conductive polymer paste composition being thermally conductive and electrically insulative with a reasonable expectation of success, because the thermally conductive polymer paste of Saga is applied to make an insulating article for heat dissipation as recognized by Saga, and when the thermally conductive and electrically conductive filler is in an amount of 3% by volume to 23% based on the total volume of the filler, the composition comprising a thermoplastic polymer, a thermally conductive and electrically insulative filler, and the thermally conductive and electrically conductive filler has thermally conductive and electrically insulative properties as recognized by I’Abee.
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 high thermally conductive and electrically conductive filler as taught by I’Abee would have a thermal conductivity greater than or equal to 50 W/m·K measured according to ASTM 7984, and a resistivity less than or equal to 1 Ohm·cm measured according to ASTM D257, C611, or B193, because the high thermally conductive and electrically conductive filler of I’Abee has a thermal conductivity greater than or equal to 50 W/m·K and a resistivity less than or equal to 1 Ohm·cm as recognized by I’Abee. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
3. Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Saga (US 2018/0230290 A1, hereinafter Saga) in view of Fujikawa (US 2017/0081579 A1, hereinafter Fujikawa), as evidenced by “Boron nitride properties” (“Boron nitride material properties from Accuratus”, 2017, hereinafter “Boron nitride properties”), “Polyamide property” (“Polyamide property from Azo Materials”, 2001, hereinafter “Polyamide property”), and “DISPERBYK-111 property” (“DISPERBYK-111 technical data sheet”, 2021, hereinafter “DISPERBYK-111 property”).
Regarding claim 26, the instant invention discloses that suitable thermoplastic polymers include polyamides (instant [0039]); suitable thermally conductive and electrically insulative filler materials include boron nitride (instant [0057]); suitable dispersants include DISPERBYK-111 (instant [0077]); the thermoplastic polymer is present in an amount of 1% by volume to 70% by volume based on total volume of the composition (instant [0043]); the filler package is present in an amount of 30% by volume to 99% by volume based on total volume of the composition (instant [0055]).
Saga teaches a thermally conductive polymer composition comprising (a) 30 to 60 parts by weight of a polymer and (b) 100 parts by weight of a boron nitride filler (abstract, para [0012], claim 1), wherein the polymer is a thermoplastic polymer (para [0021]), and the boron nitride filler is an electrically insulating and thermally conductive filler (para [0027]).
Thus, the boron nitride filler can be in an amount of 100% by volume based on the total volume of the fillers (i.e. the boron nitride filler) in Saga, which falls within the claimed range of “at least 50% by volume”.
“Boron nitride properties” as an evidentiary reference shows that boron nitride has a thermal conductivity of 30 W/m·K (p. 1, § Thermal), which falls within the claimed range of “at least 5 W/m·K”. “Boron nitride properties” as an evidentiary reference also shows that boron nitride has a volume resistivity of more than 1014 ohm·cm ((p. 1, § Electrical), equaling to more than 1012 ohm·m (Ω⋅m), which falls within the claimed range of “at least 10 Ω·m”.
Saga does not teach that boron nitride has a thermal conductivity of at least 5 W/m·K measured according to ASTM D7984 and a volume resistivity of at least 10 Ω⋅m measured according to ASTM D257, C611, or B193.
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 expect that the boron nitride filler in Saga would have a thermal conductivity of 30 W/m·K measured according to ASTM D7984, and a volume resistivity of more than 1014 ohm·cm measured according to ASTM D257, C611, or B193 with a reasonable expectation of success, because boron nitride has a thermal conductivity of 30 W/m·K and a volume resistivity of more than 1014 ohm·cm as evidenced by the reference “Boron nitride properties”. No matter what kind of method is used to measure the thermal conductivity and volume resistivity of boron nitride, it will not change the fact that boron nitride has a thermal conductivity of 30 W/m·K and a volume resistivity of more than 1014 ohm·cm as art evidenced.
Saga also teaches that the thermally conductive polymer composition can comprise a dispersing agent ([0041]), which reads on the claimed dispersant.
Saga does not teach the amount of the dispersing agent.
However, Fujikawa teaches a thermal conductive polymer composition comprising thermal conductive inorganic particles and an electrically insulating polymer (para [0020]), wherein the thermal conductive inorganic particles comprise boron nitride particles (para [0020]), and the electrically insulating polymer is a thermoplastic polymer (para [0093]).
Fujikawa also teaches that the thermal conductive polymer composition further comprises a dispersant (para [0133]), and the dispersant enhances the wettability of the thermal conductive inorganic particles (e.g. boron nitride) to the polymer and suppresses aggregation of the thermal conductive inorganic particles (e.g. boron nitride) (para [0133]). Fujikawa also teaches that the dispersant in the polymer composition is in an amount of 0.01 parts by mass to 10 parts by mass per 100 parts by mass of the thermal conductive inorganic particles (para [0135], [0136]).
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 a dispersant in an amount of 0.01 parts by mass to 10 parts by mass per 100 parts by mass of the thermal conductive inorganic particles as taught by Fujikawa as the amount of the dispersant in Saga, in order to enhance the wettability of the thermal conductive inorganic particles (e.g. boron nitride) to the polymer and suppress aggregation of the thermal conductive inorganic particles (e.g. boron nitride) with a reasonable expectation of success.
Saga also teaches that the thermally conductive polymer composition comprises (a) 30 to 60 parts by weight of a polymer and (b) 100 parts by weight of a boron nitride filler (abstract, para [0012], claim 1), wherein the polymer is a thermoplastic polymer such as polyamide (para [0021], [0025]).
Fujikawa also teaches that the dispersant can be a dispersant with trade name “DISPERBYK-111” (para [0218]).
Thus, the polymer composition as taught by the combination of Saga and Fujikawa can comprise 30 to 60 parts by weight of a polymer, 100 parts by weight of a boron nitride filler, and 0.01 to 10 parts by weight of a dispersant.
“Boron nitride properties” as an evidentiary reference shows that boron nitride has a density of 1.9 gm/cc (p. 1, § Mechanical), equaling to 1.9 g/cm3.
“Polyamide property” as an evidentiary reference shows that polyamide has a density of 1.14 g/cm3 (p. 1, § Typical Properties).
“DISPERBYK-111 property” as an evidentiary reference shows that the dispersant “DISPERBYK-111” has a density of 1.16 g/ml (p. 1, § Typical Properties), equaling to 1.16 g/cm3.
Therefore, the dispersant can be in an amount of about 0.01% by volume to 9.8% by volume based on the total volume of the polymer composition as taught by the combination of Saga and Fujikawa, which falls within the claimed range of “0.01 % by volume to 20 % by volume”.
The thermoplastic polymer (e.g. polyamide) can be in an amount of about 30% by volume to 50% by volume based on the total volume of the polymer composition as taught by the combination of Saga and Fujikawa, which falls within the range of “1% by volume to 70% by volume based on total volume of the composition” of the thermoplastic polymer as disclosed in the instant invention [0043].
The boron nitride filler can be in an amount of about 46% by volume to 67% by volume based on the total volume of the polymer composition as taught by the combination of Saga and Fujikawa, which falls within the range of “30% by volume to 99% by volume based on total volume of the composition” of the filler package as disclosed in the instant invention [0055].
Furthermore, Saga teaches that the thermally conductive polymer composition is combined with a solvent to form a thermally conductive polymer paste composition (para [0016]). Thus, the thermally conductive polymer composition of Saga comprises no solvent.
Saga does not teach that the thermally conductive polymer composition has a viscosity of 1 Pa·s to 350 Pa·s at a shear rate of 10 s-1 as measured by an MARS II rheometer at 80ᵒC using a cone plate with a diameter of 20 mm and an angle 1ᵒ.
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 viscosity at a shear rate of 10 s-1 as measured by an MARS II rheometer at 80ᵒC using a cone plate with a diameter of 20 mm and an angle 1ᵒ, would flow naturally from the teachings of the combination of Saga and Fujikawa, because the teachings of the combination of Saga and Fujikawa provide substantially the same composition comprising the same thermoplastic polymer, the same thermally conductive filler package comprising the same amount of the same thermally conductive and electrically insulative filler particles, and the same amount of the same dispersant, and comprising no solvent as claimed, and also because the polymer composition as taught by the combination of Saga and Fujikawa comprises a thermoplastic polymer in an amount of about 30% by volume to 50% by volume, a boron nitride filler in an amount of about 46% by volume to 67% by volume, and a dispersant in an amount of about 0.01% by volume to 9.8% by volume, which all fall within the ranges of “1% by volume to 70% by volume” of the thermoplastic polymer, “30% by volume to 99% by volume” of the filler package, and “0.01 % by volume to 20 % by volume” of the dispersant as disclosed by the instant invention.
The court has held that “Products of identical chemical composition can not 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. Id. See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
4. Claims 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Koukami (US 2015/0351217 A1, hereinafter Koukami) in view of Fujikawa (US 2017/0081579 A1, hereinafter Fujikawa), as evidenced by “Polypropylene oxide Information” (“Density of Polymers (by density) – scipoly.com”, 2026, hereinafter “Polypropylene oxide Information”), “Aluminum hydroxide Information” (“Aluminum hydroxide from Sigma Aldrich”, 2026, hereinafter “Aluminum hydroxide Information”), and “Stearic acid Information” (“Stearic acid from Sigma Aldrich”, 2026, hereinafter “Stearic acid Information”).
Regarding claims 27-28, the instant invention discloses that suitable thermoplastic polymers include polyethers such as polypropylene oxide (instant [0039]); suitable thermally conductive and electrically insulative filler materials include aluminum hydroxide (instant [0057]); the filler package is present in an amount of 30% by volume to 99% by volume based on total volume of the composition (instant [0055]).
Koukami teaches a thermally conductive resin composition comprising a curable resin (I) and a thermally conductive filler (II) ([0063], claim 3),
wherein the curable resin can be curable polyether resin such as curable polypropylene oxide resin ([0066]), which reads on the claimed thermoplastic polymer,
and the thermally conductive filler can be aluminum hydroxide ([0071]; Table 1, Examples 1-5), which reads on the claimed thermally conductive and electrically insulative filler particles.
The court has held that “Products of identical chemical composition can not 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. Id. See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Thus, the properties of a thermal conductivity of at least 5 W/m·K measured according to ASTM D7984 and a volume resistivity of at least 10 Ω⋅m measured according to ASTM D257, C611, or B193, would be present in the identical compound (i.e. aluminum hydroxide) as taught by Koukami.
Koukami also teaches that the thermally conductive filler can be a single thermally conductive filler ([0079]). Thus, the aluminum hydroxide can be in an amount of about 100% by volume based on the total volume of the thermally conductive filler as taught by Koukami, which falls within the claimed range of “at least 50% by volume based on total volume of the filler package”.
Koukami specifically teaches that the thermally conductive filler in Example 1 contains 250 phr (i.e. parts per hundred rubber) of aluminum hydroxide and 50 phr of zinc oxide, the thermally conductive filler in Examples 2-5 contains 450 phr of aluminum hydroxide and 100 phr of zinc oxide (Table 1). Thus, the aluminum hydroxide is in an amount of more than 50% by volume based on the total volume of the thermally conductive filler in Examples 1-5 of Koukami, which falls within the claimed range of ““at least 50% by volume based on total volume of the filler package”.
The thermally conductive resin composition of Koukami can comprise no boron nitride. Koukami specifically teaches that the thermally conductive resin compositions of Examples 1-5 comprise no boron nitride (Table 1).
Koukami also teaches that the thermally conductive filler is surface-treated by a fatty acid in order to improve filler’s dispersibility in resin ([0072]).
The instant invention discloses that a dispersant is added to the composition in order to improve the wettability of the filler particles, reduce the filler particles’ surface tension, and improve the filler particles’ dispersibility in resin (instant [0076]); suitable dispersants include fatty acid (instant [0077]).
Thus, the fatty acid used to surface-treat the thermally conductive filler in Koukami reads on the claimed dispersant.
Koukami does not teach the amount of the fatty acid (the claimed dispersant).
However, Fujikawa teaches a thermal conductive polymer composition comprising thermal conductive inorganic particles and an electrically insulating polymer (para [0020]), wherein the thermal conductive inorganic particles comprise aluminum hydroxide (para [0055]), and the electrically insulating polymer is a thermoplastic polymer (para [0093]).
Fujikawa also teaches that the thermal conductive polymer composition further comprises a dispersant (para [0133]), and the dispersant enhances the wettability of the thermal conductive inorganic particles (e.g. aluminum hydroxide) to the polymer and suppresses aggregation of the thermal conductive inorganic particles (e.g. aluminum hydroxide) (para [0133]). Thus, the dispersant as taught by Fujikawa has the same function (i.e. improving filler’s dispersibility in resin) as the fatty acid in Koukami.
Fujikawa also teaches that the dispersant is in an amount of 0.01 parts by mass to 10 parts by mass per 100 parts by mass of the thermal conductive inorganic particles (para [0135], [0136]).
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 a dispersant in an amount of 0.01 parts by mass to 10 parts by mass per 100 parts by mass of the thermal conductive inorganic particles as taught by Fujikawa as the amount of the dispersant (i.e. fatty acid) in Koukami, in order to enhance the wettability of the thermal conductive inorganic particles (e.g. aluminum hydroxide) to resin and improve the dispersibility of the thermal conductive inorganic particles (e.g. aluminum hydroxide) in resin with a reasonable expectation of success.
Koukami also teaches that the thermally conductive filler is in an amount of 30% by volume to 90% by volume based on total volume of the composition ([0073]), which falls within the range of “30% by volume to 99% by volume based on total volume of the composition” of the filler package as disclosed in the instant invention [0055].
Koukami also teaches that the fatty acid is used to surface-treat the thermally conductive filler in order to improve the filler’s dispersibility in resin, and the fatty acid can be stearic acid ([0072]).
Thus, the thermally conductive resin composition as taught by the combination of Koukami and Fujikawa can comprise a curable resin (e.g. polyether resin such as polypropylene oxide resin) of 10-70% by volume, a thermally conductive filler (e.g. aluminum hydroxide) of 30-90% by volume, and a dispersant (i.e. a fatty acid such as stearic acid) of 0.01-10 parts by mass per 100 parts by mass of the thermal conductive filler (e.g. aluminum hydroxide).
“Polypropylene oxide Information” as an evidentiary reference shows that poly(propylene oxide) has a density of 1 g/cc (p. 4), equaling to 1 g/cm3.
“Aluminum hydroxide Information” as an evidentiary reference shows that aluminum hydroxide has a density of 2.42 g/cm3 (p. 3).
“Stearic acid Information” as an evidentiary reference shows that stearic acid has a density of 0.845 g/cm3 (p. 4).
Thus, a dispersant (i.e. a fatty acid such as stearic acid) can be in an amount of about 0.01% to 27% by volume based on the total volume of the thermally conductive resin composition as taught by the combination of Koukami and Fujikawa, which overlaps with the claimed range of “0.01 % by volume to 20 % by volume”.
Furthermore, Koukami teaches that the thermally conductive resin composition has a viscosity of 30 Pa·s to 3000 Pa·s ([0064]), which overlaps with the claimed range of “1 Pa·s to 350 Pa·s”.
Koukami specifically teaches that the thermally conductive resin composition of Examples 1-5 has a viscosity of 150 Pa·s to 300 Pa·s (Table 1), which falls within the claimed range of “1 Pa·s to 350 Pa·s”.
Koukami does not teach that the thermally conductive resin composition has a viscosity of 1 Pa·s to 350 Pa·s at a shear rate of 10 s-1 as measured by an MARS II rheometer at 80ᵒC using a cone plate with a diameter of 20 mm and an angle 1ᵒ.
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 viscosity at a shear rate of 10 s-1 as measured by an MARS II rheometer at 80ᵒC using a cone plate with a diameter of 20 mm and an angle 1ᵒ, would flow naturally from the teachings of the combination of Koukami and Fujikawa, because the teachings of the combination of Koukami and Fujikawa provide substantially the same composition comprising the same thermoplastic polymer, the same thermally conductive filler package comprising the same amount of the same thermally conductive and electrically insulative filler particles (i.e. aluminum hydroxide), and the same amount of the same dispersant, and comprising no boron nitride as claimed, and also because the thermally conductive resin composition of Koukami has a viscosity of 30 Pa·s to 3000 Pa·s, especially a viscosity of 150 Pa·s to 300 Pa·s as recognized by Koukami. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7, 9, 11, 12, and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 9-13, 18, 19, and 21 of copending Application No. 17/996,169 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other, because both sets of claims recite compositions comprising a thermoplastic polymer, and a thermally conductive filler package comprising thermally conductive, electrically insulative filler particles having a thermal conductivity of at least 5 W/m·K (measured according to ASTM D7984) and a volume resistivity of at least 10 Ω·m (measured according to ASTM D257) and present in an amount of at least 50% by volume based on total volume of the filler package, wherein the composition has a viscosity of 1 Pa·s to 700 Pa·s at a shear rate of 10 s−1 as measured by an MARS II rheometer at 80°C using a cone plate with a diameter of 20 mm and an angle 1°.
Specifically, the claims of the reference application recite that the composition comprises a leakage current of less than 0.5 mA/mm2 measured according to IEC 60243; the composition comprises a total solids content of 40% by volume to 100% by volume based on total volume of the composition; the composition comprises the thermoplastic polymer in an amount of 1% by volume to 70% by volume based on total volume of the composition; the thermoplastic polymer comprises an elastomeric material; the thermoplastic polymer is substantially free of silicone; the composition comprises the filler package in an amount of 30% by volume to 99% by volume based on total volume of the composition.
The claims of the reference application also recite that the composition comprises thermally conductive, electrically conductive filler particles having a thermal conductivity of at least 5 W/M·K measured according to ASTM 7984 and a volume resistivity of less than 1 Ω·m measured according to ASTM D257 and/or further comprises non-thermally conductive, electrically insulative filler particles having a thermal conductivity of less than 5 W/M·K measured according to ASTM 7984 and a volume resistivity of at least 1 Ω·m measured according to ASTM D257; the composition further comprises a dispersant and/or an additive; the composition comprises the dispersant in an amount of 0.01% by volume to 2% by volume based on total volume of the composition; the coating composition comprises a gap filler composition, a sealant composition, a 3D printable composition, a putty, a molding compound, a potting compound, and/or an adhesive composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 11/25/2025 have been fully considered but they are not persuasive.
1. Applicant argues that Saga does not describe or suggest that a dispersant by itself may be used to reduce the viscosity of a thermoplastic polymer to any degree (p. 9).
Applicant also argues that the polymers listed in Fujikawa include thermoplastic, thermoset, rubber and cured polymer compositions; Fujikawa does not describe or suggest that the relevant dispersant ranges for thermoplastics as claimed, and the dispersant can be used to change the viscosity of thermoplastics (p. 9); the examples of Fujikawa as shown in Tables 2-4 do not provide the viscosity of the examples (p. 10).
Applicant further argues that the cited DYSPERSYK-111 reference describes the features of a dispersant, but does not infer that such additive can be added to the compositions described in Saga, combined with Fujikawa and other cited references ("Boron nitride properties", "Polyamide property", and "Butyl acetate property"), to produce a workable thermoplastic composition in the range of 10 to 300 Pa•s as stated by Saga, or in the as-claimed range of 1 Pa•s to 700 Pa•s at a shear rate of 10 s-1 as measured by an MARS II rheometer at 80° C using a cone plate with a diameter of 20 mm and an angle 1 ° (p. 10).
In response, Applicant’s arguments are not persuasive.
Firstly, the fact that the inventor has recognized another advantage which would flow naturally from the combination of references cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). See MPEP 2145.II.
Saga teaches a thermally conductive polymer paste composition comprising (a) a polymer, (b) a boron nitride filler, and (c) a solvent (claim 9, para [0007]), wherein the polymer is a thermoplastic polymer (para [0021]), and the boron nitride filler is an electrically insulating and thermally conductive filler (para [0027]).
Saga also teaches that the thermally conductive polymer paste composition comprises a dispersing agent ([0041]).
Saga also teaches that the viscosity of the thermally conductive polymer paste composition is 10 to 300 Pa·s (para [0016]).
Furthermore, Fujikawa teaches a thermal conductive polymer composition comprising thermal conductive inorganic particles and an electrically insulating polymer (para [0020]), wherein the thermal conductive inorganic particles comprise boron nitride particles (para [0020]), and the electrically insulating polymer is a thermoplastic polymer (para [0093]).
Fujikawa teaches that the thermal conductive polymer composition comprises a dispersant (para [0133]), and the dispersant enhances the wettability of the thermal conductive inorganic particles to the polymer and suppresses aggregation of the thermal conductive inorganic particles (para [0133]). Fujikawa also teaches that the dispersant in the polymer composition is in an amount of 0.01 parts by mass to 10 parts by mass per 100 parts by mass of the thermal conductive inorganic particles (para [0135], [0136]).
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 a dispersant in an amount of 0.01 parts by mass to 10 parts by mass per 100 parts by mass of the thermal conductive inorganic particles as taught by Fujikawa as the amount of the dispersant in Saga, in order to enhance the wettability of the thermal conductive inorganic particles (e.g. boron nitride) to the polymer and suppress aggregation of the thermal conductive inorganic particles (e.g. boron nitride) with a reasonable expectation of success.
Thus, the fact that the inventor has recognized another advantage that the dispersant can reduce the viscosity of a thermoplastic polymer from the combination of Saga and Fujikawa cannot be the basis for patentability when the differences would otherwise be obvious.
Secondly, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
As stated in claim 1 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 provide a dispersant in an amount of 0.01 parts by mass to 10 parts by mass per 100 parts by mass of the thermal conductive inorganic particles as taught by Fujikawa as the amount of the dispersant in Saga, in order to enhance the wettability of the thermal conductive inorganic particles (e.g. boron nitride) to the polymer and suppress aggregation of the thermal conductive inorganic particles (e.g. boron nitride) with a reasonable expectation of success.
Thirdly, the cited references “DISPERBYK-111 property”, “Boron nitride properties”, “Polyamide property”, “Butyl acetate property” are all evidentiary references, and are used to calculate the volume% of the dispersant in the total volume of the thermally conductive polymer paste composition.
2. Applicant argues that Composition 1, comprising dispersant, had a lower viscosity than that of Composition 2, containing no dispersant, at all temperatures at which viscosity was measured; Composition 2 exhibited a 3411 % increase in viscosity at 23°C, a 4809% increase at 35°C, and a 4056% increase at 80°C as compared to Composition 1 at the same temperatures; thus, inclusion of only a dispersant in the composition, surprisingly allows the claimed composition to achieve a workable viscosity (p. 10, last para; p. 11, 1st para; Declaration filed 11/25/2025, Tables 1-2).
In response, Applicant’s arguments are not persuasive.
Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest prior art. See In re De Blawe, 222 USPQ 191 (FED. Cir. 1984), and In re Fenn, 208 USPQ 470 (CCPA 1981). See MPEP § 716.02(e).
Compositions 1-2 in Declaration is no probative value in the determining patentability of claims since they do not involve a comparison of applicant' s invention with the closest applied prior art. Composition 1 in Declaration is limited to a composition with a dispersant compared to Composition 2 in Declaration which does not contain a dispersant. However, Saga (US 2018/0230290 A1) constitutes closer prior art than Applicant's comparative example (Composition 2 in Declaration), because a dispersant is an expressly taught additive in Saga (Saga [0041]).
3. In response to Applicant' s request to hold in abeyance a response, such as, a terminal disclaimer to the copending Application No. 17/996,169 provisional non-statutory double patenting rejection, it is noted that the filing of a terminal disclaimer cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP § 804 (I)(B)(1): “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application' s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
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