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 Amendment
Predicated on an indication of allowable subject matter in claim 18, Applicant has simply cancelled the claims subject to rejection leaving as pending claims 18-23. However, upon further scrutiny of the Iwata (WO ‘501) disclosure it was discovered that the subject matter of Example 1 had been misread and the subject matter of claim 18 should, likewise, have been deemed unpatentable. The Examiner sincerely regrets that Applicant had not been correctly apprised of the status of these claims at an earlier stage of prosecution.
Claim Rejections - 35 USC § 103
Claims 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over Iwata et al., WO 2021/095501 in view of Hu et al., WO 2020/093258 and/or U.S. 2018/0030327 and/or the YouTube video entitled "Application of Thermal Interface Material" available at the URL https://www.youtube.com/watch?v=AtTaAUd6-js.
Iwata (WO ‘501), Hu, and Zhang are all germane for the reasons outlined previously with the caveat that the Examiner had previously concluded that a hydrosilyl group-terminated polydimethylsiloxane chain extender had not been disclosed but his earlier construal was incorrect. Example 1-1 of Iwata does not teach the incorporation of 10.6 total parts of a methylhydrogensiloxane crosslinking compound adhering to formula (6) as had been earlier asserted. Instead, 1.26 g of said crosslinker is added and subsequently 9.4 parts of a chain extender (8) anticipatory of the siloxane contained within the second reactant composition is introduced. The calculated amount of the chain extender as a fraction of the total is 0.83% which, while lower than 1%, is not substantially lower and, to reiterate, there is nothing in the current record that suggests 1 wt.% to represent a critical endpoint below which the invention is inoperable. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected [the claimed product and a product disclosed in the prior art] to have the same properties.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
As before, Iwata is silent as to the provision of the curable composition to a vessel, and more precisely a syringe, from which it can later be dispensed but Hu, Zhang, and the YouTube video verify this aspect to be obvious and widely practiced. Although there is no express suggestion of keeping the curable composition in said vessel for at least 24 hours prior to use, it is understood that the composition-filled vessel represents a form for commercial sale and that the mixture would reside in the syringe for much more than 24 hours. Paragraph [0190] says that curing conditions are the same as are conventionally known, and 40° to 180° C for 1 minute to hour in particular.
Subject matter addressing the limitations of claims 20-23 is summarized in the text of the previous Office action dated November 26, 2025.
Finality of the rejection is withdrawn given that Applicant had not previously been confronted with the rejections formulated herein.
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January 12, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765