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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 28, 2025 has been entered.
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 of Zoeller et al. and Takezawa et al. (cited in the previous Office Action). Applicant has amended the claims to change the scope of the claims outside the scope of the previous prior art. Applicant has amended claim 1 to recite wherein the composition comprises spherical fillers and α-phase fillers in an amount of 30 to 90 wt% and 90 wt% or less (respectively). Applicant’s arguments with respect to the rejection in view of Takanashi with regard to the classification of the “roundish” particles as spherical particles is recognized by the Office and accordingly, the rejection in view of Takanashi, which teaches an amount of spherical particles which is outside the claimed range, is withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Zoeller et al. in view of Takezawa et al. (cited in the previous Office Action) 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”).
Applicant’s arguments and amendments are considered fully responded to within the comments 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 and 10 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 Inomata et al. (US 5,008,307, hereinafter referred to as “Inomata”) and Hofius et al. (US20190135648, hereinafter referred to as “Hofius”).
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).
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).
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).
Hofius teaches alumina product and polymer formulations comprising the same for applications necessitating high thermal conductivity (Abstract) wherein the composition may comprise alumina components having different particle sizes ([0002] and [0004]-[0005]). Hofius further teaches that the composition may comprise a content of α-alumina content in the range of 80 to 100 wt% of the overall alumina mixture (i.e., irrespective of particle size) ([0046]), which overlaps with the claimed range. Zoeller and Hofius are considered analogous art because they are directed towards the same field of endeavor, namely, polymeric/resin compositions having thermally conductive additives. The range for an amount of α-phase filler taught by Hofius 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 for an amount of an α-type filler (e.g., alumina) within the composition of Zoeller, and the motivation to have done so would have been, as Hofius suggests, that the overlapping portion is a useable range for an amount of an α-type filler used as a thermally conductive filler within a resin composition. (It is noted that Takezawa teaches that it is known within the art that α-type fillers are recognized within the art as the preferred crystal form of thermally conductive fillers (e.g., alumina) due to high thermal conductivity, a high melting point, a high mechanical strength and an excellent electrical insulation. Thus, a person having ordinary skill in the art would construe the disclosure of Hofius as teaching that an amount of α-type filler less than 100%, e.g., > 80 wt%, is an acceptable amount of an α-type filler for use as a thermally conductive filler).
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 (see above).
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).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767