Prosecution Insights
Last updated: July 17, 2026
Application No. 17/629,100

THERMAL CONDUCTIVITY IMPROVER, THERMAL CONDUCTIVITY IMPROVEMENT METHOD, THERMAL-CONDUCTIVE RESIN COMPOSITION AND THERMAL-CONDUCTIVE RESIN MOLDED PRODUCT

Non-Final OA §103
Filed
Jan 21, 2022
Priority
Sep 10, 2019 — JP 2019-164406 +1 more
Examiner
DIAZ, MATTHEW R
Art Unit
1761
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Setolas Holdings Inc.
OA Round
5 (Non-Final)
54%
Grant Probability
Moderate
5-6
OA Rounds
0m
Est. Remaining
97%
With Interview

Examiner Intelligence

Grants 54% of resolved cases
54%
Career Allowance Rate
283 granted / 529 resolved
-11.5% vs TC avg
Strong +44% interview lift
Without
With
+43.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
46 currently pending
Career history
583
Total Applications
across all art units

Statute-Specific Performance

§101
0.3%
-39.7% vs TC avg
§103
83.2%
+43.2% vs TC avg
§102
5.6%
-34.4% vs TC avg
§112
6.8%
-33.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 529 resolved cases

Office Action

§103
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/02/2026 has been entered. This action is responsive to Applicant’s request for continued examination and amendment/remarks filed 04/02/2026. Claims 1, 4-8, and 10-13 are currently pending. Response to Amendment & Arguments The rejection under 35 U.S.C. 103 over Butterbach et al. (US 2017/0362473 A1) in view of Manabe et al. (US 2015/0000887 A1) and Suzuki et al. (US 2014/0235753 A1) is withdrawn in view of the above amendment. Likewise, the rejection under 35 U.S.C. 103 over Ashiba et al. (WO 2018/235918 A1, utilizing US 2020/0216659 A1 as an English language equivalent of the reference) in view of Manabe et al. (US 2015/0000887 A1) and Suzuki et al. (US 2014/0235753 A1) is withdrawn in view of the above amendment. While Manabe et al. teach a magnesium hydroxide filler having a coating layer formed thereon containing silicon oxide (para. 0031), the prior references of record fail to teach or suggest a magnesium oxide filler having a coating layer formed thereon containing silicon oxide or a silicon hydroxide as presently amended. However, the current rejection utilize a new secondary reference, Kiyokawa et al. (JP 2004-027177 A1), in addition to the prior Butterbach et al., Ashiba et al., and Manabe et al. references under a new ground(s) of rejection which renders obvious the instant claims as amended. See the new 103 rejections over 1) Butterbach et al. in view of Manabe et al. and Kiyokawa et al. and 2) Ashiba et al. in view of Manabe et al. and Kiyokawa et al., below. Applicant’s arguments filed 04/02/2026 with respect to the prior 103 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 presently cited prior art, including the new Kiyokawa et al. reference, meet the newly added limitations that the first thermally conductive filler (i.e., magnesium hydroxide) has formed thereon a coating having acid resistance and contains an oxide of silicon and/or a hydroxide of silicon (met via the Manabe et al. secondary reference) and the second thermally conductive filler (i.e., magnesium oxide) has formed thereon a coating having acid resistance and contains an oxide of silicon and/or a hydroxide of silicon (met via the new Kiyokawa et al. secondary reference). For the sake of completeness, regarding any of Applicant’s arguments against any of the prior Butterbach et al., Ashiba et al., and Manabe et al. 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). 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, 4-8, and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Butterbach et al. (US 2017/0362473 A1) in view of Manabe et al. (US 2015/0000887 A1) and Kiyokawa et al. (JP 2004-027177 A1). Citations to Kiyokawa et al. are with respect to the English language machine translation attached to the supplied copy of the reference unless indicated otherwise. As to claim 1, Butterbach et al. teach an adhesive composition with improved thermal conductivity comprising at least one binder and a combination of different fillers (abstract), which reads on a thermally conductive resin composition comprising a resin and a combination of different fillers. There are three distinct fillers in Butterbach et al.’s composition (see, generally, para. 0037-0044). Butterbach et al.’s “third filler” (also termed the “filler different from (1) and (2)”) has an aspect ratio of more than 10, preferably 10.5 to 100 and most preferably 30 to 60, may comprise magnesium hydroxide, and has an average particle size of 1 to 100 microns, preferably 2 to 80 microns, and most preferably 10 to 60 microns (para. 0037, 0039, 0040, & 0044). The reference’s third filler read on the claimed first thermally conductive filler. The broad(er) aspect ratio(s) overlap that claimed and the most preferred aspect ratio is within that (30 or more) claimed, the chemical identity of the filler overlaps that (magnesium hydroxide) claimed, and the average particle size of the filler overlaps that (long diameter of less than 30 microns) claimed. Butterbach et al.’s “second filler” (also termed “the filler different from (1)”) has an aspect ratio of 1 to 10, preferably 2 to 9, and may comprise a thermally conductive metal oxide such as magnesium oxide (para. 0037, 0038, & 0040). The reference’s second filler read on the claimed second thermally conductive filler. The aspect ratio(s) overlap and touch those claimed (“1 to 10” overlaps “2 or less”, and “2 to 9” touches “2 or less”), and the chemical identity of the filler overlaps that (magnesium oxide) claimed. See also Butterbach et al.’s explanation of aspect ratio at para. 0041. While Butterbach et al. fail to disclose a working example that meets a composition comprising a resin, a ≥30 high aspect ratio magnesium hydroxide filler, and a ≤2 low aspect ratio magnesium oxide filler under the meaning of anticipation, at the time of the effective filing date it would have been obvious for a person of ordinary skill in the art to formulate and arrive at a composition overlapping/encompass/within the claimed limitations with a reasonable expectation of success since the reference amounts to teaching a thermally conductive resin composition comprising a thermally conductive filler having an aspect ratio overlapping 2 or less that may comprise magnesium oxide, meeting the claimed second thermally conductive filler and another distinct thermally conductive filler having an aspect ratio overlapping, if not within, 30 or more, that may comprise magnesium hydroxide and have a long diameter overlapping less than 30 microns. Regarding the claimed weight of the first thermally conductive filler to weight of the second thermally conductive filler range, Butterbach et al. further teach the composition comprises less than 65 wt.%, preferably 10-55 wt.%, of their second filler (meeting the claimed second filler) (para. 0047), less than 25 wt.%, preferably 2.5-20 wt.%, of their third filler (meeting the claimed first filler) (para. 0047), which overlaps and encompasses the claimed weight ratio of first to second thermally conductive filler is 0.1 or more and 0.6 or less, i.e., 0.1:1 to 0.6:1. For example, amounts of 10 wt.% second filler and 2.5 wt.% third filler encompassed by the preferred teachings arrives at a weight ratio (in terms of the claims) of 0.25. Similarly, amounts of 55 wt.% second filler and 20 wt.% third filler encompassed by the preferred teachings arrives at a weight ratio (in terms of the claims) of 0.36. Similarly, amounts of 45 wt.% second filler and 7 wt.% third filler encompassed by the preferred teachings arrives at a weight ratio (in terms of the claims) of 0.15. Butterbach et al. fail to teach their second filler (meeting the claimed second filler and including, selected as, selectable as, and/or obviously magnesium oxide, Id.) and third filler (meeting the claimed first filler and including, selected as, selectable as, and/or obviously magnesium hydroxide, Id.) both have formed thereon a coating layer having acid resistance containing an oxide of silicon and/or a hydroxide of silicon and a further surface treatment. However, Manabe et al. is similarly drawn to a thermal (heat) conductivity improving agent that provides high thermal conductivity to a resin and comprises magnesium hydroxide particle having an aspect ratio of not less than 10, preferably not less than 15, more preferably 10 to 100, and much more preferably 50 to 100 (abstract & para. 0015). Manabe et al. teach coating a coating agent made of silicon oxide or hydroxide on the surface of the magnesium hydroxide particle to enhance the acid resistance of the magnesium hydroxide particle (para. 0031-0032). Manabe et al. also further teach the surface of the coating layer may be treated with at least one surface treating agent (para. 0033). Kiyokawa et al. is similarly drawn to thermally conductive resin compositions containing magnesium oxide powder as a filler (abstract). Kiyokawa et al. teach the magnesium oxide powder is coated with a coating layer containing a silicon oxide on its surface (abstract & para. 0012-0013). The coated magnesium oxide powder obtains excellent thermal conductivity with improved mechanical strength and dispersibility in resin while providing and maintaining hydration (moisture) resistance to the magnesium oxide (para. 0018). Kiyokawa et al. teach the coated magnesium oxide powder may be further subjected to a surface treatment (para. 0018). Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to: 1) provide the acid resistant silicon oxide and/or hydroxide surface coating and further surface treatment taught by Manabe et al. to Butterbach et al.’s high aspect ratio magnesium hydroxide third inorganic particles in order to obtain a thermally conductive resin composition where the magnesium hydroxide particles have an improved acid resistance with a reasonable expectation of success, and 2) provide the moisture resistant silicon oxide-containing surface coating and further surface treatment taught by Kiyokawa et al. to Butterbach et al.’s low aspect ratio magnesium oxide second inorganic particles in order to obtain a thermally conductive resin composition where the magnesium oxide particles have an improved moisture resistance, mechanical strength, and dispersibility with the resin with a reasonable expectation of success. While it is acknowledged Kiyokawa et al. teach their silicon oxide-coated magnesium oxide filler has moisture resistance imparted from the silicon oxide-containing coating layer rather than acid resistance imparted from the silicon oxide-containing coating layer as claimed, note that the coating layers nevertheless contain the same component disclosed and claimed as imparting the acid resistance (silicon oxide), and the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art 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). As to claim 4, regarding the claimed first thermally conductive filler having a thickness of 10 nm to 200 nm, Butterbach et al. teach the aspect ratio and major diameter of their plate-like second inorganic particles can be varied and tailored across ranges that overlap and encompass the claimed thickness range. See for example (and as cited above), para. 0037, 0039, 0040, & 0044 teaching the aspect ratio is more than 10, preferably 10.5 to 100 and most preferably 30 to 60, and the average particle size is 1 to 100 microns, preferably 2 to 80 microns and most preferably 10 to 60 microns. For example, a 10 micron major diameter particle size / 60 aspect ratio particle encompassed by the most preferred teachings arrives at a thickness of 167 nm. Similarly, a 3 micron major diameter particle size / 100 aspect ratio particle encompassed by the broad(er) teachings arrives at a thickness of 30 nm. As to claim 5, regarding the claimed first thermally conductive filler having a long diameter of 20 microns or less, as similarly cited above regarding the independent claim’s broad long diameter range of 30 microns or less, Butterbach et al. teach the third filler has an average particle size of 1 to 100 microns, preferably 2 to 80 microns, and most preferably 10 to 60 microns (Id., para. 0037, 0039, 0040, & 0044), which overlaps the claimed long diameter range. As to claim 6, Butterbach et al. teach their second filler have a more preferable average particle size of 2 to 50 microns and a most preferable particle size of 3 to 50 microns (para. 0043), which is equivalent to the claimed second thermally conductive filler having a particle diameter of 2 microns or more. The same cited also has broader teachings that overlap the claimed range (e.g., 0.5-100 microns or 1-80 microns). As to claim 7, regarding the claimed second thermally conductive filler having a particle diameter larger than the long diameter of the first thermally conductive filler, Butterbach et al. teach it is preferable to use a bimodal or trimodal particle size distribution to allow for dense packing of the filler in the binder matrix (para. 0046). This means that any one of Butterbach et al.’s fillers is or may be relative larger than the other(s). As there is a limited number of relative configurations (7) encompassed by the cited bimodal distribution (e.g., first=second>third, first=third>second, first>second=third, second=third>first, second>first=third, second=first>third, or third>first=second) and a limited number of relative configurations (6) encompassed by the cited trimodal distribution (e.g., first>second>third, first>third>second, second>first>third, second>first>third, third>first>second, or third>second>first), a person of ordinary skill in the art would at-once envisage providing Butterbach al.’s second filler with an average size larger than the average size of the third filler, meeting the claimed limitations. Alternatively, see also the particle size ranges of the second and third fillers listed at para. 0043 and 0044 which fairly paint the picture that the sizes are selected independently from one another, encompassing the claimed limitation that the claimed second thermally conductive filler having a particle diameter larger than the long diameter of the first thermally conductive filler. As to claim 8, as similarly cited above, Butterbach et al. teach the composition comprises less than 65 wt.%, preferably 10-55 wt.%, of their second filler (meeting the claimed second filler) (para. 0047), less than 25 wt.%, preferably 2.5-20 wt.%, of their third filler (meeting the claimed first filler) (para. 0047), and 5-40 wt.%, preferably 10-50 wt.%, of the polymer binder (meeting the claimed resin) (para. 0056) with all fillers (first, second, and third) totality 5-80 wt.% (para. 0056), which cumulatively overlaps the claimed 90 to 700 parts by weight of the first+second thermally conductive filler with respect to 100 parts by weight of the resin. As to claim 10, note that Butterbach et al. teach their concentrations in weight percentage rather than volume percentage (Id.). While Butterbach et al. teach their concentrations in weight percentage rather than volume percentage as claimed, the totality of the cited weight percentages of Butterbach et al. (e.g., para. 0047 and 0058) overlap and encompass the claimed total volume ratio of the first thermally conductive filler and second thermally conductive filler is 25-70% if the weight percentages were converted to volume percentages. As to claims 11 and 12, Butterbach et al. teach the adhesive composition is used to bond two substrates and produce an article of manufacture (para. 0059). The article is obtained by applying the composition in molten state on a substrate surface and then pressed into the other substrate to be bonded (para. 0059-0062). This reads on a molded product, intrinsically if not directly one with a sheet shape, comprising a molded product formed from the thermally conductive resin composition (pressing the composition between two substrates to bond them creates a layer/sheet between the two substrates). As to claim 13, while Butterbach et al. fails to quantify that the heat conductivity of the composition in a thickness direction to the heat conductivity of the thermally conductive resin in a plane direction is 0.5 or more, this claimed limitation would nevertheless flow naturally from the cited teachings of the reference because the reference teaches substantially the same composition as that claimed (thermally conductive composition comprising two distinct species of filler with substantially the same chemical compound structures, particle sizes, and aspect ratios in a resin/polymer formed into a thermally conductive article thereof). If this were not enough, note that Butterbach et al. further teach the bonded substrates in the obtained article include metal plates used for heat transfer that bond heat-generating structures to a metal substrate and thermal conductivity of the adhesive composition is important in the invention (para. 0059) which heavily implies if not serves as a direct teaching the composition is significantly more heat conductive in the thickness direction (substrate to substrate) rather than in the plane direction (along the plane of the bond between the substrates). Claims 1, 4-8, and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ashiba et al. (WO 2018/235918 A1, utilizing US 2020/0216659 A1 as an English language equivalent of the reference) in view of Manabe et al. (US 2015/0000887 A1) and Kiyokawa et al. (JP 2004-027177 A1). Citations to Ashiba et al. are with respect to the US PGPub being utilized as the English language equivalent unless indicated otherwise. Citations to Kiyokawa et al. are with respect to the English language machine translation attached to the supplied copy of the reference unless indicated otherwise. As to claim 1, Ashiba et al. teach a resin material comprising first inorganic particles having an average particle diameter of 1 to 20 microns and an aspect ratio of 2 or less, second inorganic particles having an average major diameter of 2 microns or more and aspect ratio of more than 2, and a binder resin (abstract). The first inorganic particles and second inorganic particles may be surface treated with a surface treatment agent (para. 0073). See para. 0042 to 0058 for details of the reference’s first inorganic particles. Therein, the first inorganic particles are preferably an insulating filler and magnesium oxide is listed as a suitable species of the first inorganic particles (para. 0054). The reference’s first inorganic particles read on the claimed second thermally conductive filler. See para. 0059 to 0071 for details of the reference’s second inorganic particles. Therein, it is specified that it is preferred that the aspect ratio is preferably 4 to 15 and/or a plate shape (para. 0060), the average major diameter is 2 to 40 microns or 5 to 20 microns (para. 0064), and the second inorganic particles are preferably boron nitride (para. 0068). However, all of these particular teachings are merely preferred embodiment(s) that do not limit the reference’s second inorganic particles only to boron nitride and/or the preferred sizes and aspect ratios. Rather, the reference paints a much more broad disclosure for their high-aspect ratio second inorganic particle beginning at para. 0059. There, the second inorganic particles are preferably particles having insulating particles (para. 0059). Ashiba et al. also teach their inorganic particles are providing thermal conductivity to the composition (para. 0021). Reading para. 0021 and 0059 in combination with the base requirements specified in the reference’s abstract, a person of ordinary skill in the art would recognize Ashiba et al.’s base requirements for their second inorganic particles is that they may be any and all thermally conductive, electrically insulating particles so long as they have an average aspect ratio of more than 2 (with no set maximum) and an average major diameter of 2 microns or more. Ashiba et al. fail to sufficiently teach their second inorganic particles is/at-once comprises all of magnesium hydroxide, an aspect ratio of 30 or more, a long diameter of less than 30 microns, and a coating layer thereon having acid resistance containing an oxide of silicon and/or a hydroxide of silicon as claimed. However, Manabe et al. is similarly drawn to a thermal (heat) conductivity improving agent that provides high thermal conductivity to a resin and comprises magnesium hydroxide particle having a thickness of 10 nm to 0.2 microns and an aspect ratio of not less than 10 (abstract). Manabe et al. teach the magnesium hydroxide particles impart excellent mechanical strength and high heat conductivity to a molded article obtained therefrom (para. 0007). The aspect ratio is preferably not less than 15, more preferably 10 to 100 and much more preferably 50 to 100 (para. 0015) where the preferred range of 10 to 100 overlaps the claimed range and the more preferred range of 50 to 100 falls within the claimed range. The long diameter of Manabe et al.’s magnesium hydroxide can be obtained by multiplying the thickness by the aspect ratio. Accordingly, a magnesium hydroxide particle with a thickness of 10 nm to 0.2 microns with the more preferred aspect ratio of 10 to 100 corresponds to a long diameter range of 0.1 to 20 microns, within the claimed range of 30 microns or less. Similarly, a magnesium hydroxide particle with a thickness of 10 nm to 0.2 microns with the most preferred aspect ratio of 50 to 200 corresponds to a long diameter range of 0.5 to 40 microns, overlapping the claimed range of 30 microns or less. Furthermore, the more preferred thickness is 10 nm to 0.08 microns (para. 0014), and a magnesium hydroxide particle with the more preferred thickness of 10 nm to 0.08 microns with the most preferred aspect ratio of 50 to 200 corresponds to a long diameter range of 0.5 to 16 microns, within the claimed range of 30 microns or less. Manabe et al.’s magnesium hydroxide particles meet and read on the claimed first thermally conductive filler. Also, magnesium hydroxide is well-known in the art as an electrical insulator. Manabe et al. also teach coating a coating agent made of silicon oxide or hydroxide on the surface of the magnesium hydroxide particle to enhance the acid resistance of the magnesium hydroxide particle (para. 0031-0032). Manabe et al. also further teach the surface of the coating layer may be treated with at least one surface treating agent (para. 0033); the teachings of para. 0033 of Manabe et al. and/or para. 0073 of Ashiba et al. read on the claimed further surface treatment in addition to the claimed coating layer with acid resistance. Accordingly, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the thermal conductivity-improving, electrically insulating scale/plate-shaped, acid resistant surface coated, surface treated magnesium hydroxide particle having a thickness of 10 nm to 0.2 microns (and subset(s)) and an aspect ratio of 10-100/50-200 taught by Manabe et al. as Ashiba et al.’s second inorganic particles (that only are required to broadly be thermally conductive, electrically insulating particles so long as they have an average aspect ratio of more than 2 with no set maximum and an average major diameter of 2 microns or more, Id.) in order to obtain a thermally conductive resin with sufficient (or improved) mechanical strength and high heat conductivity with a reasonable expectation of success. Ashiba et al. also fail to teach their spherical first inorganic particles (which may be magnesium oxide, Id.) comprise a coating layer thereon having acid resistance as claimed. However, Kiyokawa et al. is similarly drawn to thermally conductive resin compositions containing magnesium oxide powder as a filler (abstract). Kiyokawa et al. teach the magnesium oxide powder is coated with a coating layer containing a silicon oxide on its surface (abstract & para. 0012-0013). The coated magnesium oxide powder obtains excellent thermal conductivity with improved mechanical strength and dispersibility in resin while providing and maintaining hydration (moisture) resistance to the magnesium oxide (para. 0018). Kiyokawa et al. teach the coated magnesium oxide powder may be further subjected to a surface treatment (para. 0018); the teachings of para. 0018 of Kiyokawa et al. and/or para. 0073 of Ashiba et al. read on the claimed further surface treatment in addition to the claimed coating layer with acid resistance. Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the moisture resistant silicon oxide-containing surface coating and further surface treatment taught by Kiyokawa et al. to Ashiba et al.’s spherical magnesium oxide first inorganic particles in order to obtain a thermally conductive resin where the magnesium oxide particles have an improved moisture resistance, mechanical strength, and dispersibility with the resin with a reasonable expectation of success. While it is acknowledged Kiyokawa et al. teach their silicon oxide-coated magnesium oxide filler has moisture resistance imparted from the silicon oxide-containing coating layer rather than acid resistance imparted from the silicon oxide-containing coating layer as claimed, note that the coating layers nevertheless contain the same component disclosed and claimed as imparting the acid resistance (silicon oxide), and the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art 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). The combination of references reads on the claimed limitation that a weight of the first thermally conductive filler to a weight of the second thermally conductive filler is 0.1 or more and 0.6 or less, i.e., 0.1:1 to 0.6:1. Ashiba et al. further teach the second inorganic particles (meeting the claimed first thermally conductive filler via Manabe et al.’s particular magnesium hydroxide particles) are contained in an amount of more than 40%, more preferably 45% or more, by volume relative to 100% by volume of the sum of the first inorganic particles (meeting the claimed second thermally conductive filler via Kiyokawa et al.’s coating/treatment) and the second inorganic particles (again, meeting the claimed first thermally conductive filler via Manabe et al.’s particular magnesium hydroxide particles) (para. 0071). As described above, Ashiba et al. teach the first inorganic particles may be magnesium oxide (Id.) and Manabe et al.’s particles (provided as Ashiba et al.’s second inorganic particles) are magnesium hydroxide (Id.). The relative volume range(s) of the pair of particles can be converted to a relative weight by multiplying the volume fraction by each compound’s density and then comparing the relative weight amounts of first and second particles. Magnesium oxide has a density of 3.58 g/cm3, and magnesium hydroxide has a density of 2.34 g/cm3. Accordingly, a 60/40 volume blend (the broadest end point disclosed in Ashiba et al. para. 0071) of magnesium oxide particles and magnesium hydroxide particles contains 2.148 mass units of magnesium oxide particles and 0.936 mass units of magnesium hydroxide particles in a given volume; 0.936/2.148 equals about 0.436:1, within the claimed range of 0.1:1 to 0.6:1. Similarly, a 55/45 volume blend (a preferred end point disclosed in Ashiba et al. para. 0071) of magnesium oxide particles and magnesium hydroxide particles contains 1.969 mass units of magnesium oxide particles and 1.053 mass units of magnesium hydroxide particles in a given volume; 1.053/1.969 equals about 0.535:1, within the claimed range of 0.1:1 to 0.6:1. As to claim 4, the combination of references meets the claimed limitation regarding the first thermally conductive filler has a thickness of 10 nm or more and 200 nm or less. Manabe et al. teach their magnesium hydroxide particle has a thickness of 10 nm to 0.2 microns (Id.) which is the same exact thickness range as claimed. As to claim 5, the combination of references meets the claimed limitation regarding the first thermally conductive filler has a long diameter of 20 microns or less. As described and quantified above, the long diameter of Manabe et al.’s magnesium hydroxide can be obtained by multiplying the thickness by the aspect ratio. Accordingly, a magnesium hydroxide particle with a thickness of 10 nm to 0.2 microns with the more preferred aspect ratio of 10 to 100 corresponds to a long diameter range of 0.1 to 20 microns, within the claimed range of 20 microns or less. Similarly, a magnesium hydroxide particle with a thickness of 10 nm to 0.2 microns with the most preferred aspect ratio of 50 to 200 corresponds to a long diameter range of 0.5 to 40 microns, overlapping the claimed range of 20 microns or less. Furthermore, the more preferred thickness is 10 nm to 0.08 microns (Id., para. 0014), and a magnesium hydroxide particle with the more preferred thickness of 10 nm to 0.08 microns with the most preferred aspect ratio of 50 to 200 corresponds to a long diameter range of 0.5 to 16 microns, within the claimed range of 20 microns or less. As to claim 6, Ashiba et al. teach their first inorganic particles preferably have an average major diameter of 2 microns or more (Id. in abstract), which is equivalent to the claimed second thermally conductive filler having a particle diameter of 2 microns or more. As to claim 7, the combination of references reads on the claimed limitation that the second thermally conductive filler having a particle diameter larger than the long diameter of the first thermally conductive filler. Ashiba et al. teach the absolute value of the difference between the average particle diameter of the first inorganic particles (meeting the claimed second thermally conductive filler via Kiyokawa et al.’s coating/treatment) and the average major diameter of the second inorganic particles (meeting the claimed first thermally conductive filler and long diameter thereof via Manabe et al.’s particular magnesium hydroxide particles) is 10 microns or less (para. 0026 & 0066). This means that one of the resultant composition’s inorganic particles (via Ashiba et al. in view of Manabe et al. and Kiyokawa et al.) is or may be relatively larger than the other. As there is a limited number of relative configurations (3) encompassed by these cited teachings (e.g., first>second, second>first, or first=second), a person of ordinary skill in the art would at-once envisage providing Ashiba et al.’s first inorganic particles with an average diameter larger than the average major diameter of Ashiba et al.’s second inorganic particles (in view of the particulars imparted from Manabe et al.), meeting the claimed limitations. In any event, while Ashiba et al.’s working examples are drawn to other provision of other compounds (e.g., boron nitride), they are still helpful in determining what is encompassed by the reference. Ashiba et al.’s Example 1 of the reference is a thermally conductive composition comprising 19.7 wt.% of a binder resin, 30.3 wt.% / 18 vol.% of aluminum oxide particles having an average particle diameter of 9 microns and an aspect ratio of 1.2, and 48.9 wt.% / 42 vol.% boron nitride particles having an average major diameter of 8 microns and an average aspect ratio of 12 (see Table 1 with the inorganic particles key at para. 0115-0126). This example demonstrates Ashiba et al.’s disclosure (and the disclosure of Ashiba et al. in view of Manabe et al. and Kiyokawa et al. as set forth above) includes provision of the round/spherical particles with a diameter larger than the major diameter of the plate-shaped particles, as claimed. As to claim 8, the combination of references reads on the claimed limitation that the composition comprises 90-700 parts by weight of the first and second thermally conductive fillers with respect to parts per hundred of the resin. Ashiba et al. teach the first inorganic particles (meeting the claimed second thermally conductive filler via Kiyokawa et al.’s coating/treatment) are preferably present in a volume content of preferably 5% to 35% by volume based on the entire composition (para. 0057), the second inorganic particles (meeting the claimed first thermally conductive filler via Manabe et al.’s particular magnesium hydroxide particles) are preferably present in a volume content of preferably 25 to 60% by volume based on the entire composition (para. 0070), and the resin component(s) are preferably present in a volume content of preferably 20 to 50% by volume based on the entire composition (para. 0088). Note that Ashiba et al. teach their general concentrations of thermally conductive fillers and resin material in volume percent rather than weight percent (Id.). While Ashiba et al. (in view of Manabe et al.) generally teach their concentrations in volume percentage rather than weight percentage as claimed, the totality of the cited weight percentages of Ashiba et al. (e.g., para. 0070 and 0088) overlap and encompass the claimed 90-700 parts by weight of the first and second thermally conductive fillers with respect to parts per hundred of the resin if the volume percentages were converted to weight percentages. In any event, while Ashiba et al.’s working examples are drawn to other provision of other compounds (e.g., boron nitride), they are still helpful in determining what is encompassed by the reference. Note that Example 1 (Id.) contains a combined content of about 400 parts by weight of the plate-shaped particles and round/spherical particles with respect to 100 parts by weight of the resin (30.3 wt.% round/spherical particles, 48.9 wt.% plate-shaped particles, and 19.7 wt.% binder resin). A person of ordinary skill in the art would therefore understand Ashiba et al. (and Ashiba et al. in view of Manabe et al. and Kiyokawa et al. as set forth above) encompasses a composition containing an amount of first and second thermally conductive fillers overlapping, if not within, 90-700 parts by weight of the first and second thermally conductive fillers with respect to parts per hundred of the resin, as claimed. As to claim 10, regarding the claimed total volume ratio of the first thermally conductive filler and the second thermally conductive filler being 25% to 70% of the entire thermally conductive resin composition, Ashiba et al. teach the first inorganic particles (meeting the claimed second thermally conductive filler via Kiyokawa et al.’s coating/treatment) are preferably present in a volume content of preferably 5% to 35% by volume based on the entire composition (para. 0057) and the second inorganic particles (meeting the claimed first thermally conductive filler via Manabe et al.’s particular magnesium hydroxide particles) are preferably present in a volume content of preferably 25 to 60% by volume based on the entire composition (para. 0070), which, combined, overlaps the claimed total volume ratio range. In any event, while Ashiba et al.’s working examples are drawn to other provision of other compounds (e.g., boron nitride), they are still helpful in determining what is encompassed by the reference. Note that Example 1 (Id.) contains a total volume amount of 60 vol% of the round/spherical particles and plate-shaped particles based on the entire composition. A person of ordinary skill in the art would therefore understand Ashiba et al. (and Ashiba et al. in view of Manabe et al. and Kiyokawa et al. as set forth above) encompasses a composition containing a total volume ratio of the first and second thermally conductive fillers overlapping, if not within, 25-70%, as claimed. As to claims 11-13, Ashiba et al. teach their compositions are molded into sheets/laminates (see para. 0091-0105, 0130, and Examples). The ratio of a heat conductivity of the thermally conductive resin in a thickness direction to a heat conductivity of the thermally conductive resin in a plane direction being 0.5 or more would flow naturally from the teachings of the reference(s) as Ashiba et al. (in view of Manabe et al.) teach a sheet made from a blend of high aspect ratio thermally conductive filler of the same compound having the same/overlapping long diameter, thickness, and aspect ratio ranges and low aspect ratio thermally conductive filler of the same compound(s) having the same/overlapping diameter and aspect ratio range ranges each present in substantially the same/overlapping concentrations with a resin. Furthermore, the Ashiba et al. also teaches the orientation of the second inorganic particle is controlled which enhances the thermal conductivity of the thickness direction of the laminate/sheet versus the plane direction (para. 0039-0040). Prior Art Cited But Not Applied The following prior art is made of record and not relied upon but is considered pertinent to applicant's disclosure: Nakajima (JP 2017-078122 A) teach a thermally conductive filler providing thermal conductivity to a resin comprising a refractive index control layer provide on the surface of the thermally conductive particles (abstract). The heat conductive filler may be composed of an oxide such as magnesium oxide (p.2), and the shape of the thermally conductive filler/particles may be spherical (p.2). The refractive index control layer is preferably a silicon oxide (p.3), and the thermally conductive filler may further be surface-treated (p.3). In other words, Nakajima et al. effectively teach a thermally conductive filler comprising magnesium oxide, having an aspect ratio of 2 or less, having formed thereon a coating layer containing an oxide of silicon, and has further been subjected to a surface treatment and is equivalent/cumulative to the Kiyokawa et al. secondary reference of record. The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST. Examiner interviews are available via telephone 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 https://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. /MATTHEW R DIAZ/Primary Examiner, Art Unit 1761 /M.R.D./ July 1, 2026
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Prosecution Timeline

Show 8 earlier events
Sep 18, 2025
Non-Final Rejection mailed — §103
Dec 02, 2025
Response Filed
Jan 20, 2026
Final Rejection mailed — §103
Mar 30, 2026
Examiner Interview Summary
Mar 30, 2026
Applicant Interview (Telephonic)
Apr 02, 2026
Request for Continued Examination
Apr 05, 2026
Response after Non-Final Action
Jul 07, 2026
Non-Final Rejection mailed — §103 (current)

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Prosecution Projections

5-6
Expected OA Rounds
54%
Grant Probability
97%
With Interview (+43.9%)
2y 9m (~0m remaining)
Median Time to Grant
High
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