DETAILED ACTION
Applicant’s reply and request for continued examination (RCE), filed 12 March 2026 in response to the Final Office action mailed 29 December 2025 and the Advisory action mailed 4 March 2026, has been entered and fully considered. As per Applicant’s filed claim amendments claims 1, 5-7, 9-10 and 18-20 are pending under examination, wherein: claims 1, 6, 11 and 19 have been amended, claims 5, 9-10, 12-13 and 18 are as originally filed, claims 7 and 20 are as previously presented, claim 14 is withdrawn by previous restriction requirement, and claims 2-4, 8 and 15-17 have been cancelled by this and/or previous amendment(s).
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12 March 2026 has been entered.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 5-7, 9-13 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. (US PGPub 2020/0157350) in view of Kokubo et al. (US PGPub 2013/0082369) and Yoshida et al. (US PGPub 2016/0122611).
Regarding claims 1, 9, 11 and 19, Sakamoto teaches thermally conductive polyorganosiloxane compositions (abstract; [0022]-[0023]) comprising (A) a thermally conductive filler component, (B) a polyorganosiloxane resin having curable functional group(s), (C) a siloxane compound, (D) a hydrogenpolyorganosiloxane, and (E) a platinum catalyst ([0010]-[0015]), and further optional components ([0067]). Sakamoto further teaches molded and cured products thereof ([0006]; [0091]; [0093]; [0095]) used as thermally conductive parts including sheets ([0002]; [0091]; [0093])(instant claim 11).
Sakamoto teaches the polyorganosiloxane resin (B) is a resin having curable groups includes a combination ([0034]-[0035]) of a linear polyorganosiloxane having one curable functional group ([0031]; [0033] and a linear polyorganosiloxane having an aliphatic unsaturated group at both ends having general formula (2) where the Ra groups are vinyl groups and n is a number satisfying a viscosity of 0.01 to 50 Pa·s at 23°C ([0034])(instant general formula (1); instant claims 6 and 19).
Sakamoto teaches the thermally conductive filler (A) is present from 100 to 3,000 parts ([0029]) and is selected from thermally conductive fillers including aluminum oxide, zinc oxide, silica, silicon carbide, boron nitride, aluminum nitride, etc. ([0025])(instant claim 9). Sakamoto further teaches that the thermally conductive filler has a total average particle diameter of 300 µm or less ([0026]) and is present as a combination of three particle sizes comprising 30-70 mass% of a ‘larger particle size’ having a particle diameter range of 20 µm or more (instant B3), and an ‘intermediate particle size’ having a particle diameter of less than 20 µm to 1 µm or more (instant B2) and a ‘smaller particle size’ having a particle diameter range of less than 1 µm (instant B1), wherein the ‘intermediate’ and ‘smaller’ particle sizes are in a ratio amount of 1:40 to 40:1 (intermediate:smaller)([0027]).
Sakamoto further teaches the filler may be surface treated by the siloxane compound (C) component ([0037]) selected from siloxane compounds having aliphatic unsaturated group(s) of 2-6 carbons, preferably terminal double bond(s) ([0043]; [0048] at pg 6 col 2) in order to enhance the affinity for the thermally conductive filler with the base polymer ([0043])(instant surface treated with a surface treatment agent containing a reactive group having an unsaturated bond; instant vinyl group; instant formula (2); instant B-2 and B-3 treated with formula (2)).
Sakamoto teaches surface treating the fillers with the noted compound (C) but does not specifically teach treating the smallest particle size (instant B1) with a surface treatment agent containing a reactive group having no unsaturated bonds, and which is a silane coupling agent containing an alkyl group. However, Kokubo teaches curable silicone resin compositions comprising a filler combination of: (E) two or more inorganic fillers selected from metal oxides and nitrides, etc. ([0206]-[0208]; [0218]), having particle sizes ranging from 0.1 to 120 µm ([0214]), and which have been surface-treated with a silicone treatment agent having reactive groups including vinyl and acryl groups ([0209]-[0211]); and (F) a white pigment filler selected from metal oxides and nitrides, etc. ([0222]-[0224]), having a particle size ranging from ≤ 1 µm and ≥ 0.05 µm ([0226]-[0227]), and which has been surface-treated with an organosilicon compound ([0230]-[0231]) which does not contain carbon-carbon double bonds to avoid reduction of thermal resistance, including silanes containing alkyl groups (compounds as recited in [0234] = instant general formula (1)). Kokubo and Sakamoto are analogous art and are combinable because they are concerned with the same field of endeavor, namely curable thermally conductive silicone compositions comprising a combination of similar fillers of different particle sizes which are surface treated. At the time of filing it would have been obvious to one of ordinary skill in the art to surface treat using an alkyl silane which does not contain carbon-carbon double bonds as taught by Kokubo the smaller particle size of Sakamoto and would have been motivated to do so as Sakamoto invites surface treatment of the fillers in general and further as Kokubo teaches surface treatment of fillers having a particle size range of ≤ 1 µm and ≥ 0.05 µm should be surface treated with an organosilicon treatment agent that does not contain carbon-carbon double bonds in order to avoid a reduction in thermal resistance ([0234]).
Sakamoto teaches the above noted (E) a platinum catalyst ([0010]-[0015]) and further optional components ([0067]) and also teaches using known curing methods to obtain the cured silicone rubber products ([0068]). Sakamoto does not specifically teach an organic peroxide curing catalyst in an amount of 1 to 20 parts by mass per 100 parts of component A. However, Yoshida teaches similar curable silicone rubber forming compositions comprising similar linear organopolysiloxane end-capped components (A) ([0023]; [0027] teaches dimethylsiloxane units both ends capped with divinylmethylsiloxy groups), thermally conductive powders (B) ([0028]) which may be surface treated ([0038]), carbon black (C) ([0041]) and a curing agent (D) (abstract; [0001]; [0016]-[3]/[4]; [0045]). Yoshida teaches that the addition-type curing agent, comprising the combination of an organohydrogenpolysiloxane (D-1) and 0.5 to 1,000 ppm of a platinum addition reaction catalyst (D-2) ([0046]; [0054]), and the organic peroxide curing agent (D-3) ([0055]), used in an amount of .1 to 10 parts by weight ([0056]), are equivalent and interchangeable curing agents (D) suitable for use in curing component (A) by either hydrosilyation addition-reactions or by crosslinking-reactions to obtain a thermally conductive rubber silicone composition ([0001]; [0016]; [0045]). Yoshida also teaches it is known and suitable to use both (D-1)/(D-2) and (D-3) catalyst systems together ([0057]). Yoshida and Sakamoto are analogous art and are combinable because they are concerned with the same field of endeavor, namely curable thermally conductive silicone compositions comprising similar components (A), thermally conductive powders, and curing agents. At the time of filing a person of ordinary skill in the art would have found it obvious to 1) substitute the platinum curing catalysts of Sakamoto with the organic peroxide curing agents of Yoshida, given the recognition by Yoshida that the addition-reaction catalyst system and the organic peroxide catalyst systems are equivalent and interchangeable, and thereby arrive at the present invention (mere substitution of an equivalent is not an act of invention where equivalency is known in the prior art (MPEP 2144.06)); and/or to 2) combine the organic peroxide catalyst system of Yoshida with the hydrosilyation addition reaction curing system of Sakamoto (who teaches D) hydrogenpolyorganosiloxane in combination with E) platinum catalyst-see above) and would have been motivated to do so as Sakamoto invites additional components known ([0067]) and invites known curing methods ([0068]) to form the silicone rubber and further as Yoshida teaches the combination is known and suitable to obtain both addition type curing and crosslinking of the component (A) ([0045]; [0046]; [0055]; [0057]).
Further regarding the claim 11 recitation of a tensile strength of 5 MPa or more: Sakamoto does not specifically test tensile strength of the resultant molded and cured products (examples) and as such is silent to the claimed tensile strength. However, Sakamoto, and Sakamoto in view of Kokubo, renders obvious the combination of claimed components A, B1, B2, B3 and C, present in the claimed amounts and having the claimed identities, which are used to make cured products by a substantially similar method. The instant original specification teaches that sheets made of the claimed components A-C, present in the claimed amounts and having the claimed identities, will result in a sheet having a tensile strength of 5 MPa or more (instant original specification: [0022]; examples). 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 In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “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.”; MPEP 2112.01)).
Regarding claims 5 and 18, Sakamoto in view of Kokubo and Yoshida render obvious the thermally conductive composition as set forth in claim 1 above and the sheets thereof as set forth in claim 11 above. Sakamoto is silent as to the degree of plasticity before curing. However, Sakamoto, and Sakamoto in view of Kokubo, renders obvious the combination of claimed components A, B1, B2, B3 and C, present in the claimed amounts and having the claimed identities, which are used to make cured products by a substantially similar method. The instant original specification teaches that compositions/sheets made of the claimed components A-C, present in the claimed amounts and having the claimed identities, will result in a degree of plasticity before curing of 1 to 50 (instant original specification: [0020]; examples). 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 In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “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.”; MPEP 2112.01)).
Regarding claims 7, 10 and 20, Sakamoto in view of Kokubo and Yoshida render obvious the thermally conductive composition as set forth in claim 1 above and the sheets thereof as set forth in claim 11 above.
Sakamoto teaches the total amount of thermally conductive filler (A) is from 100 to 3,000 parts ([0029]) and further teaches of that amount the ‘larger particle size’ (instant B3) is present at 30-70 mass% and the remainder (70-30 mass% thereof) is a ratio of 1:40 to 40:1 of the ‘intermediate particle size’ (instant B2) to the ‘smaller particle sizes’ (instant B1), which are ranges that substantially overlap and render taught/obvious the claimed ranges. The mixing ratio as claimed, where no surface area is recited/claimed and no cross section is recited/claimed, are held met by Sakamoto who teaches the above noted types of fillers, having the above noted particle size ranges and whose fillers can have any combination of two or more shapes ([0028]), absent evidence to the contrary. It is additionally noted that changes in size/proportion are generally held as prima facie obvious (MPEP 2144.04).
Regarding claim 12, Sakamoto in view of Kokubo and Yoshida renders obvious the sheet as set forth in claim 11 above. Sakamoto further teaches high thermal conductivity ([0002]; [0007]; [0093]; [0095]) and exemplifies values of 9.1 and 9.4 W/m·K (Table 1). It is further noted that 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 In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “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.”; MPEP 2112.01)).
Regarding claim 13, Sakamoto in view of Kokubo and Yoshida renders obvious the sheet as set forth in claim 11 above. Sakamoto further does not teach or require a reinforcement sheet.
Response to Arguments/Amendments
The objections to claims 6 and 19 are withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 103 rejection of claims 1-7, 9-13 and 15-20 as unpatentable over Sakamoto (US PGPub 2020/0157350) in view of Kokubo (US PGPub 2013/0082369) and Yoshida (US PGPub 2016/0122611) is maintained. Applicant’s arguments (Remarks, pages 8-10) have been fully considered but were not found persuasive.
Applicant points to Table 3 and argues unexpected results arise from the combination of fillers (B-1) treated with formula (1), (B-2) treated with formula (2), and (B-3) treated with either formula (1) or formula (2).
As set forth in the above rejection, the secondary reference of Kokubo teaches that when multiple fillers of different particle sizes are combined ((E) two or more inorganic fillers having a size range from 0.1 to 120 µm; (F) white pigment filler having a size range from ≤ 1 µm and ≥ 0.05 µm), where the larger particles ((E)) are surface treated with a silicone treatment agent having reactive groups (vinyl, acryl, etc.), it is advantageous to surface treat the smaller filler ((F)) with a silicone treatment agent that does not contain carbon-carbon double bonds (alkyl; instant not unsaturated) for the purpose of avoiding a reduction of thermal resistance (see rejection; [0234]). The primary reference of Sakamoto teaches three fillers of different sizes wherein the fillers may be surface treated (see above rejection). As such, one of ordinary skill in the art having been appraised of the teachings of Sakamoto of surface treating multiple fillers of different particle sizes would have found it obvious to look to the teachings of Kokubo for a teaching that the smallest particle sizes should be surface treated with an organosilicon compound that does not contain unsaturated carbon-carbon double bonds in order to avoid thermal resistance reduction known to occur when the surface treatment agent does contain carbon-carbon double bonds ([0234]).
Applicant asserts in Table 3 the inventive examples demonstrated a tensile strength of 5 MPa or more. It is noted that the asserted range of “5 MPa” or more is not demonstrated by the Table, wherein the Table provides no examples at or otherwise near 5 MPa in order to conclude a minimum value of 5 MPa be an unexpected (or occurring at all) result. Similarly, Applicant asserts a thermal conductivity of 1 W/mK or more is demonstrated as unexpected by the Table 3. It is noted that the asserted range of “1 W/mK” or more is not demonstrated by the Table, wherein the Table provides no examples at or otherwise near 1 W/mK in order to conclude that a minimum value of 1 W/mK be an unexpected (or occurring at all) result. It is further noted all comparative examples meet the asserted 1 W/mK or more.
Applicant argues that comparative examples 1, 2 and 4 have tensile strength lower than 5 MPa due to filler B-2 not using a surface treatment agent containing an unsaturated bond. Again it is noted that Table does not establish unexpectedness for the value of 5 MPa. Further the primary reference of Sakamoto teaches that filler of the size of instant B-2 is surface treated with a siloxane compound having an unsaturated group (see rejection).
Applicant argues that comparative example 3 has a degree of plasticity of greater than 50 due to B-1 being surface treated having a reactive group with an unsaturated bond. Applicant implies that a degree of plasticity of greater than 50 is a bad result. It is noted that Table 3 does not establish a particular limit on degree of plasticity where a value would or would not be unexpected. There is no demonstration that a degree of plasticity of 50 (greater than, less than, or at all) is a line of unexpectedness. Further, as noted above, the secondary reference of Kokubo teaches that fillers of a particle size of B-1 should not be surface treated with a surface treating agent having a carbon-carbon double bond because that is known to result in a loss/reduction in thermal resistance (see above).
In response to Applicant’s argument that the instant invention has achieved unexpected results, the Office points out that enhancing and improving upon existing properties is not necessarily equated to the generation of unexpected results. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP §716.02. Further, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d). In this case, the claims are not commensurate with the examples at least with respect to the filler, the broadly recited size ranges of each of fillers B-1, B-2 and B-3 compared to the tested sizes wherein the entire range is not demonstrated for any filler recited, and the surface treatment compounds used with respect to B-1, B-2 and B-3 and the relative amounts of each.
Applicant argues that Sakamoto ‘focuses’ on the use of a particular siloxane in particular amounts to achieve improved curing rates. The Examiner notes that Sakamoto is in fact “focused on” thermally conductive polysiloxane compositions ([0001]) comprising a combination of fillers and polyorganosiloxanes, similar to that claimed, which improve curing rate but also maintain viscosity, hardness, and thermal conductivity ([0008]). Applicant argues that Kokubo ‘focuses’ on a different combination of organic silicone compounds for use in semiconductor packages. The Examiner notes that Kokubo and Sakamoto are analogous art and are combinable for the reasons set forth above, notably because they are both concerned with the same field of endeavor, namely curable thermally conductive silicone compositions comprising similar combinations of fillers of different particle sizes which have been surface treated.
Applicant argues that the claimed fillers are not taught or suggested by either Sakamoto or Kokubo. The Examiner directs Applicant’s attention to the above set forth rejection wherein the combination of Sakamoto in view of Kokubo renders obvious the claimed filler combination.
Applicant argues that neither Sakamoto nor Kokubo suggest the ‘potential’ for ‘advantageous properties or how such might be achieved’. Sakamoto in view of Kokubo recognizes, and gives rise to, a plurality of potentially advantages properties achievable by the combination of multiple fillers of different particle sizes which have been surface treated. Sakamoto and Kokubo are not required to be concerned with or to recognize the exact same ‘advantageous properties’ in order to render obvious the instant invention. Applicant is reminded that the rejection under 35 U.S.C. 103 is based upon a combination of references and that the reason or motivation to modify the prior art reference(s) may often suggest what the inventor has done, but for a different purpose or to solve a different problem. Furthermore, it is noted that it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. The motivation question arises in the context of the general problem confronting the inventor, rather than the specific problem solved by the invention (see In re Kahn, 441 F.3d 977, 987, 78 USPQ 2d 1329, 1336 (Fed. Cir. 2006); see also Cross Med. Prods., Inc. v. Medtronic Sofamore Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) one of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings; see also In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990); MPEP 2144 and 2141.01).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767