DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed May 22, 2025, with respect to the rejection(s) under 35 U.S.C. 103 in view Zoeller et al. (WO2019120924, hereinafter referred to as “Zoeller”) in view of Takezawa et al. (US2018/0148622, hereinafter referred to as “Takezawa”) and further in view of Inomata et al. (US 5,008,307, hereinafter referred to as “Inomata”) and Hofius et al. (US20190135648, hereinafter referred to as “Hofius”) have been fully considered and are persuasive. Applicant has amended claim 1 to recite wherein the spherical fillers comprise a filler having an average particle diameter in a range of 60 to 200 µm. However, after further consideration, a new grounds of rejection is made over Zoeller et al. (WO2019120924, hereinafter referred to as “Zoeller”) in view of Takezawa et al. (US2018/0148622, hereinafter referred to as “Takezawa”) and further in view of Takanashi et al. (US20180127629, hereinafter referred to as “Takanashi”), Inomata et al. (US 5,008,307, hereinafter referred to as “Inomata”), and Tsuzuki et al. (US20090188701, hereinafter referred to as “Tsuzuki”). The rejection in view of Hofius is withdrawn in view of the narrower range for an amount of α-phase fillers recited in new claim 16.
Regarding the amendment to claim 1 which recites wherein the spherical fillers comprise a filler having an average particle diameter in a range of 60 to 200 µm, Takanashi teaches exemplary thermally conductive fillers that are spherical alumina having a particle size of 100 µm, which is within the claimed range. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
Applicant argues that Zoeller and Takezawa teach away from each other as Takezawa relies on maximum physical volume packing for rigidity, while Zoeller relies on mixing different conductive materials by weight to preserve flexibility. However, Takezawa is only relied upon for its teaching regarding thermally conductive filler blends having different particle size distributions, which is recognized within the art as imparting enhanced thermal conductivity to the resultant composition. A person having ordinary skill in the art would not predict the overall final properties of Takezawa, which is based on a different resin/curing system than Zoeller, to inherently result only from thermally conductive filler blends having different particle size distributions alone. It is therefore the position of the Office that the proposed modification of Zoeller only regarding the relative amounts of particle size distribution would not render the composition of Zoeller, i.e., a thermally conductive polyurethane composition, inoperable. Applicant also argues that the physical processing environment of Zoeller and Takezawa are mutually exclusive based on the different processing temperatures disclosed within the references. Likewise, the modification within the rejection of record does not rely or incorporate the processing conditions for the resin system of Takezawa. Takezawa is only relied upon for its teaching regarding thermally conductive filler blends having different particle size distributions, which is recognized within the art as imparting enhanced thermal conductivity to the resultant composition.
Applicant further argues that Inomata teaches a particle size for spherical fillers that is below the claimed range. However, while Inomata expresses a preference for a smaller particle size of a spherical filler, the prior art as a whole recognizes that spherical thermally conductive fillers having a particle size within the claimed range are known as suitable for thermally conductive resin compositions and therefore would not be expected to render the composition of Zoeller as modified inoperable.
Applicant’s arguments in view of Hofius are considered moot as the rejections over this reference have been withdrawn.
Applicant’s arguments and amendments have been considered and are fully addressed in the remarks above and rejections below.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-7, 10, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Zoeller et al. (WO2019120924, hereinafter referred to as “Zoeller”) in view of Takezawa et al. (US2018/0148622, hereinafter referred to as “Takezawa”) and further in view of Takanashi et al. (US20180127629, hereinafter referred to as “Takanashi”), Inomata et al. (US 5,008,307, hereinafter referred to as “Inomata”), and Tsuzuki et al. (US20090188701, hereinafter referred to as “Tsuzuki”).
As to Claim 1: Zoeller teaches a thermally conductive adhesive polyurethane composition (Abstract and Title) which may comprise a first component A and a second component B (i.e., a two-component urethane resin composition) wherein component A comprises at least one polyol (i.e., a main composition comprising a polyol resin) and a first thermally conductive filler A1 and at least a second thermally conductive filler A2 (i.e., a filler component), and wherein component B comprises at least one NCO-terminated compound (i.e., a curing agent composition comprising an isocyanate compound) (pg. 2, para. 5).
Regarding the limitation “wherein the filler components comprise two or more fillers having different average particle diameters from each other,” Zoeller is silent towards the particle diameters of each of the two fillers.
Takezawa teaches a resin composition comprising a thermosetting resin and a thermally conductive filler wherein said thermally conductive filler is divided into filler group (A) having a particle diameter of from 10 μm to 100 μm, a filler group (B) having a particle diameter of from 1.0 μm to smaller than 10 μm, and a filler group (C) having a particle diameter of from 0.1 μm to smaller than 1.0 μm (Abstract), which reads on the claimed two or more fillers having different average particle diameters from each other. Takezawa further teaches exemplary compositions comprising said resin composition having a thermal conductivity of 8.5 W/m*K, which is within the claimed range ([0155], Table 1, Example 1). Zoeller and Takezawa are considered analogous art because they are directed towards the same field of endeavor, namely, thermally conductive resin compositions comprising blends of two or more thermally conductive fillers. A person having ordinary skill in the art before the effective filing date of the claimed invention would have looked to Takezawa for its teaching of at least two groups of thermally conductive fillers having different particle size distributions to modify the thermally conductive composition of Zoeller and the motivation would have been that Takezawa teaches that utilizing groups of thermally conductive fillers having different particle size distributions is known within the art to increase thermal conductivity ([0006]), which is an explicit objective of the invention of Zoeller (pg. 2, para. 2).
Regarding the limitation wherein “the spherical fillers comprise a filler having an average particle diameter in a range of 60 to 200 µm,” Zoeller is silent towards the particle diameters of each of the two fillers.
Takanashi teaches a related thermally conductive composition comprising at least a spherical thermally conductive filler which may be alumina ([0028]) and a resin component (Abstract). Takanashi further teaches exemplary spherical alumina having an average particle size of 100 µm (Spherical Alumina A-1, Table 1), which is within the claimed range. Takanashi contemplates that the particle size of the fillers within the composition are selected such that thermal conductivity is enhanced ([0025]). Zoeller and Takanashi is considered analogous art because they are directed towards the same field of endeavor, namely, resinous compositions comprising thermally conductive fillers. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a species of alumina filler for the composition of Zoeller that is a spherical filler has a particle diameter within the range of 60 to 200 µm (such as 100 µm, see Table 1 of Takanashi) based on the finding that Takanashi teaches that such an alumina filler is recognized within the art as suitable for inorganic filler blends within resin compositions to enhance thermal conductivity thereof. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
Zoeller does not teach the shape or sphericity of the first thermally conductive filler A1 or second thermally conductive filler A2.
Inomata teaches a thermally conductive resin composition comprising a thermally conductive alumina powder mixture having different particle sizes (Abstract and col. 5, ln. 27-46). Inomata further teaches that the alumina filler may comprise a substantially spherical or round alumina (a) and a non-spherical alumina (b) (col. 5, ln. 27- 69) wherein the mixing ratio of spherical/round to non-spherical alumina may be 10 to 95 wt% spherical (a) to 5 to 90 wt% non-spherical alumina (b), which overlaps with the claimed range for an amount of spherical filler. Inomata further teaches exemplary resin compositions comprising 75 parts of a compound A (a spherical alumina) and 25 parts of a compound B (a non-spherical alumina) (Table 2, Example 2), which is within the claimed range for an amount of a spherical alumina. Zoeller and Inomata are considered analogous art because they are directed towards the same field of endeavor, namely, thermally conductive resin compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use an amount of a spherical thermally conductive filler (e.g., alumina) that is within the claimed range for the thermally conductive fillers taught by Zoeller and the motivation would have been that Inomata teaches that using a blend of both spherical and non-spherical fillers improves thermally conductive compositions by overcoming issues associated by using only one of a spherical or non-spherical filler, specifically balancing the thermal conductivity and viscosity of the composition while preventing settling and crystallization of the filler (col. 5, ln. 27-69).
Zoeller is silent towards the crystal type/phase of the filler (i.e., α-phase filler).
Tsuzuki teaches a related resin composition filled with an inorganic powder having a multimodal particle size distribution (Abstract) wherein said inorganic powder may be alumina having an α-phase fraction of 30 to 75 mass% ([0066]), which is within the claimed range. Zoeller and Tsuzuki are considered analogous art because they are directed towards the same field of endeavor, namely, thermally conductive resin compositions comprising alumina. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select an alumina having the claimed α-phase filler, such as an amount of from 30 to 75 mass%, based on the finding that Tsuzuki teaches that such an amount of α-phase alumina is recognized within the art as suitable for the intended purpose of filling resinous compositions to impart high thermal conductivity. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
Zoeller is silent towards the load value of the composition and wherein the thermal conductivity of the composition is 3.0 W/mK or more.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (the instant specification suggests that the thermal conductivity and load value result from controlling the ratio of particle sizes of the filler components, see para. [46] of the instant specification). Therefore, the claimed effects and physical properties, i.e. load value and thermal conductivity would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 2: Zoeller and Takezawa teach the composition of claim 1 (supra).
Zoeller is silent towards the particle diameters of each of the two fillers.
Takezawa further teaches wherein the thermally conductive filler is divided into filler group (A) having a particle diameter of from 10 μm to 100 μm, a filler group (B) having a particle diameter of from 1.0 μm to smaller than 10 μm, and a filler group (C) having a particle diameter of from 0.1 μm to smaller than 1.0 μm (Abstract), the ranges of which overlap with values that satisfy the claimed General Formula 1 (e.g., wherein filler group (A) = D50A having a particle diameter of 100 μm and filler group (C) = D50C having a particle diameter of 1 μm such that
D
50
A
D
50
C
=
100
μ
m
1
μ
m
=
100
, which is within the claimed range). In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range taught by Takezawa for the thermally conductive fillers of Zoeller, and the motivation to have done so would have been, as Takezawa suggests, that the overlapping portion is a useful range for the particle size of a first and second thermally conductive filler having different particle sizes within a thermally conductive resin composition having improved degradation lifetime and increased thermal conductivity ([0006]).
As to Claim 3: Zoeller and Takezawa teach the composition of claim 2 (supra).
Zoeller is silent towards the particle diameters of each of the two fillers.
Takezawa teaches wherein the thermally conductive filler comprises a filler group (A) having a particle diameter of from 10 μm to 100 μm (Abstract), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range taught by Takezawa for the thermally conductive fillers of Zoeller, and the motivation to have done so would have been, as Takezawa suggests, that the overlapping portion is a useable range for the particle size of a subset of a thermally conductive filler within a resin composition having improved degradation lifetime and increased thermal conductivity ([0006]).
As to Claim 4: Zoeller and Takezawa teach the composition of claim 2 (supra).
Zoeller is silent towards the particle diameters of each of the two fillers.
Takezawa further teaches wherein the thermally conductive filler comprises a filler group (C) having a particle diameter of from 0.1 μm to smaller than 1.0 μm (Abstract), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range taught by Takezawa for the thermally conductive fillers of Zoeller, and the motivation to have done so would have been, as Takezawa suggests, that the overlapping portion is a useable range for the particle size of a subset of a thermally conductive filler within a resin composition having improved degradation lifetime and increased thermal conductivity ([0006]).
As to Claim 5: Zoeller and Takezawa teach the composition of claim 1 (supra).
Zoeller teaches that the composition may comprise additional fillers beyond the first and second thermally conductive fillers (pg. 6, para. 6), but is silent towards wherein the fillers differ in particle size.
Takezawa further teaches wherein the thermally conductive filler is divided into filler group (A) having a particle diameter of from 10 μm to 100 μm, a filler group (B) having a particle diameter of from 1.0 μm to smaller than 10 μm, and a filler group (C) having a particle diameter of from 0.1 μm to smaller than 1.0 μm (Abstract), which reads on the claimed three or more fillers having different average particle diameters from each other. A person having ordinary skill in the art before the effective filing date of the claimed invention would have looked to Takezawa for its teaching of three groups of thermally conductive fillers having different particle size distributions to modify the thermally conductive composition of Zoeller, and the motivation would have been that Takezawa teaches that utilizing groups of thermally conductive fillers having different particle size distributions is known within the art to increase thermal conductivity ([0006]), which is an explicit objective of the invention of Zoeller (pg. 2, para. 2).
As to Claim 6: Zoeller and Takezawa teach the composition of claim 1 (supra).
Zoeller teaches that the composition may comprise additional fillers beyond the first and second thermally conductive fillers (pg. 6, para. 6), but is silent towards the particle size distributions thereof.
Takezawa further teaches wherein the thermally conductive filler is divided into filler group (A) having a particle diameter of from 10 μm to 100 μm, a filler group (B) having a particle diameter of from 1.0 μm to smaller than 10 μm, and a filler group (C) having a particle diameter of from 0.1 μm to smaller than 1.0 μm (Abstract), which overlaps with the claimed ranges. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range taught by Takezawa for the thermally conductive fillers of Zoeller, and the motivation to have done so would have been, as Takezawa suggests, that the overlapping portion is a useable range for the particle size of a first, second, and third thermally conductive filler having different particle sizes within a resin composition having improved degradation lifetime and increased thermal conductivity ([0006]).
As to Claim 7: Zoeller and Takezawa teach the composition of claim 1 (supra).
Zoeller further teaches an exemplary composition comprising thermally conductive fillers in an amount of 65.3 wt% of Component A (i.e., analogous to the claimed main composition comprising a resin component and a filler component and calculated from boron nitride: 5 wt% of Component A and aluminum oxide: 60.3 wt% of Component A, see Example 1, pg. 10 of Zoeller). Zoeller further teaches that Component A may be mixed with component B in a ratio of 5:1 to 1:1 (A:B) (pg. 7, para. 1). Thus, all possible mixing ratios contemplated by Zoeller when applied to the amount of thermally conductive filler disclosed for Example 1 of Zoeller would yield an amount of thermally conductive filler within the claimed range.
As to Claim 10: Zoeller and Takezawa teach the composition of claim 1 (supra).
Zoeller further teaches that the first thermally conductive filler A1 and at least a second thermally conductive filler A2 may both be, inter alia, aluminum oxide (i.e., alumina) (pg. 4, para. 1 and pg. 4, final 2 paragraphs).
As to Claim 16: Zoeller and Takezawa teach the composition of claim 1 (supra).
Zoeller is silent towards the crystal type/phase of the filler (i.e., α-phase filler).
Tsuzuki teaches a related resin composition filled with an inorganic powder having a multimodal particle size distribution (Abstract) wherein said inorganic powder may be alumina having an α-phase fraction of 30 to 75 mass% ([0066]), which is within the claimed range. Zoeller and Tsuzuki are considered analogous art because they are directed towards the same field of endeavor, namely, thermally conductive resin compositions comprising alumina. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select an alumina having the claimed α-phase filler, such as an amount of from 30 to 75 mass%, based on the finding that Tsuzuki teaches that such an amount of α-phase alumina is recognized within the art as suitable for the intended purpose of filling resinous compositions to impart high thermal conductivity. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Butterbach et al. (US20170362473, hereinafter referred to as “Butterbach”) teaches a thermally conductive adhesive composition comprising a (co)polymer (Abstract) which may be a polyurethane ([0019]), and further comprising a combination of different fillers ([0033]) having different particle sizes ranges wherein at least one filler (1) (or first filler) has an average particle size of 2 to 150 μm, at least one filler (2) (or second filler) has an average particle size of 0.5 to 100 μm, and at least one filler (3) (or third filler) has an average particle size of 1 to 100 μm ([0042]-[0044]). Butterbach does not teach that the composition is a two-part polyurethane composition, but does recognize that blends of thermally conductive fillers having different particle sizes is known within the art for thermally conductive adhesive compositions wherein the resin component is a polyurethane.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on (571) 272-1197. 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.
/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
Prosecution Insights