DETAILED ACTION
Applicant’s reply, filed 31 December 2025 in response to the non-final Office action mailed 1 October 2025, has been fully considered. As per Applicant’s filed claim amendments claims 1-2, 4-5, 7 and 11-15 are pending, wherein: claim 1 has been amended, claims 2, 4-5, 7 and 12-14 are as originally filed, claims 11 and 15 are as previously presented, and claims 3, 6 and 8-10 have been cancelled by this and/or previous amendment(s).
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.
Claims 1-2, 4-5, 7 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Savin (US 5,252,632) in view of Choi (WO 2018/194418 A1; using US PGPub 2021/0188648 for English language citations).
Regarding claims 1-2, 4, 11 and 15, Savin teaches organic coating compositions comprising lightweight, non-coated, hollow glass microspheres, which are useful as coatings for attenuation of EMI/RFI interference in electronic components (abstract; col 1 ln 5-27) including for the plastic cabinetry holding the electronic equipment (col 5 ln 24-56; col 7 ln 48-57)(readable over instant repeater cabinet: instant claim 15).
Savin teaches the non-coated, hollow glass microspheres are dispersed throughout the coatings (col 6 ln 50-64) in amounts from 20 to 30% of the composition, and have diameters ranging from 1 to about 150 µm (col 8 ln 51-68). Savin teaches the hollow glass microspheres are selected from commercially available microspheres having a diameter in the range of 1 to 150 µm and a specific gravity of 0.3 to 1.2 and a desirable compressive strength/crush resistance (col 9 ln 10-57). Regarding the claim limitation of hollow silica, Savin teaches glass microspheres and it is generally held that a species (glass) anticipates the genus (silica) (MPEP 2131.02) where glass is known to be made from and contain silica in some amount (none claimed).
Savin further teaches the inclusion of a conductive phase present from about 10 to 30% (col 8 ln 51-68)(instant claim 11), selected as desired for the end-use, including metallic fillers of silver, gold, copper and nickel particles in the form of flakes, powders, metal coated spheres, or filaments (col 11 ln 52-60). Savin does not specifically teach a filler that is a graphite composite comprising graphite, nanoparticles bound to the surface of the graphite, and a catecholamine layer.
However, Choi teaches polymer composites comprising a graphite complex filler ([0012]-[0016]; [0049]-[0062]) wherein the graphite complex comprises a platy graphite, with an average particle size of 10 to 900 µm ([0016]; [0051]), having nanoparticles with an average particle size of 5 to 100 nm bound onto the surface thereof ([0053]; [0056]-[0057]), and having a catecholamine layer thereon, at a thickness of 5 to 100 nm ([0059]-[0062]) (renders taught instant average particle diameter of 10 to 40 micron).
Choi teaches the graphite complex fillers are suitable for use as heat-dissipation fillers which are light weight, have desired heat dissipation performance and result in excellent mechanical strength and durability ([0006]) and further teaches long term heat dissipation performance applicable to heat sources, housings, electrical parts, etc. ([0011]; [0041]). Choi and Savin are analogous art and are combinable because they are concerned with the same field of endeavor, namely polymer compositions comprising filler materials, suitable for use in electronic components/devices, etc. At the time of filing a person having ordinary skill in the art would have found it obvious to include the graphite complex fillers of Choi as the conductive phase fillers of Savin and would have been motivated to do so as Savin invites the inclusion of flakey and metallic type conductive fillers and further as Choi teaches the graphite complex materials are filler materials suitable and useful for incorporation into polymer resins for excellent heat dissipation, as well as mechanical and electrical effects, for similar end uses.
Regarding the preamble recitation of RF heat dissipation (instant claim 1), the dielectric constant of the first filler of 1.2 to 4.8 when measured at 28 GHz (instant claim 2), and the resultant dielectric constant of 96% or less compared to the polymer alone at 28 GHz (instant claim 4), it is 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)).
Savin further teaches the compositions suitable for use as coating compositions for the protection of metallic and non-metallic substrates from EMI/RFI interference (col 7 ln 48-57), including application to electronic equipment itself and/or to the plastic housings and cabinets containing the equipment (col 5 ln 24-55). Furthermore, the recitation that the basic formulation containing said polymer and hollow first filler is to be an ‘RF heat dissipation plastic’ does not confer patentability to the claims since the recitation of an intended use does not impart patentability to otherwise old compounds or compositions. This includes all dependent claims as they incorporate all of the limitations of claim 1, from which they depend (see In re Tuominen, 671 F.2d 1359, 213 USPQ 89 (CCPA 1982)). Furthermore, the recitation of a new intended use for an old product does not make a claim(s) to that product patentable (see In re Schreiber, 44 USPQ 2d 1429, (Fed. Cir. 1997)).
Regarding claim 5, Savin in view of Choi renders obvious the compositions as set forth above and, as noted, Savin teaches the hollow glass microspheres are selected from commercially available microspheres having a diameter in the range of 1 to 150 µm and a specific gravity of 0.3 to 1.2 and a desirable compressive strength/crush resistance (col 9 ln 10-57). Savin teaches products obtained from 3M, PQ Corporation, and Potter Industries as particularly suitable. While Savin does not specifically teach the hollow average diameter of the microspheres which have diameters in the range of 1 to 150 µm, given the overall average diameter and the fact that they microspheres are hollow, the hollow average diameter is necessarily narrower in range than the overall diameter which reads on the instantly claimed range, absent evidence to the contrary (see also below alternative 103 rejection).
Regarding claims 7 and 14, Savin in view of Choi renders obvious the compositions as set forth above and Savin further teaches the film-forming polymer is present in amounts of about 40 to about 60% (col 8 ln 51-68) and is selected from polyesters, oil-modified polyesters, alkyds, polymers of acrylic and methacrylic esters, etc. (col 9 ln 65 to col 10 ln 17)(multiple above recited polymers considered amorphous). As noted above, the hollow glass microspheres are present in amounts from 20 to 30% of the composition (col 8 ln 51-68).
Regarding claims 12-13, Savin in view of Choi renders obvious the compositions as set forth above and Savin further teaches selection of the film-forming polymers and the hollow glass particles for the purpose of obtaining a composition capable of attenuation of EMI/RFI interference signals. While Savin does not specifically recite the film-forming polymer having a dielectric constant of 2.0 to 4.3 when measured at 28 GHz or the resultant composition has a dielectric constant of 1.3 to 2.7 when measured at 28 GHz, and does not specifically recite the resultant flexural strength as compared to the polymer alone, it is again 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)).
Claim 5 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Savin (US 5,252,632) in view of Choi (WO 2018/194418 A1; using US PGPub 2021/0188648 for English language citations) and further in view of Sasaki et al. (US PGPub 2009/0030134).
Savin in view of Choi renders obvious the composition as set forth in claim 1 above and Savin further teaches the hollow glass microspheres as noted. Savin does not specifically teach the hollow average diameter of the hollow microspheres having particle diameters in the range of 1 to 150 µm. However, Sasaki teaches similar coating compositions (abstract) comprising fine inorganic hollow particles and a polymer matrix for application to electronic parts ([0044]). Sasaki teaches the hollowness of the fine inorganic hollow particles should be 75 to 85% of the particle by volume so as to obtain particles having a desired reduction in dielectric characteristics, reduced particle breakage, improved thermal insulation, and weight reduction of the final product ([0009]; [0012]). Sasaki and Savin are analogous art and are combinable because they are concerned with the same field of endeavor, namely coating compositions comprising hollow inorganic particles for application to electronics. At the time of filing a person having ordinary skill in the art would have found it obvious to select hollow inorganic particles having the hollowness of Sasaki as the hollow glass microspheres of Savin and would have been motivated to do so as Sasaki teaches that microparticles having 75 to 85 vol% hollowness is advantageous in such coatings so as to obtain a reduction in dielectric characteristics and reduced particle breakages of the particles as well as improved thermal insulation, dielectric characteristics and weight reduction of the final product.
Response to Arguments/Amendments
The 35 U.S.C. 103 rejection of claims 1-7 and 11-15 as unpatentable over Savin (US 5,252,632) in view of Choi (WO 2018/194418 A1; using US PGPub 2021/0188648 for English language citations) is maintained. Applicant’s arguments (Remarks, pages 5-8) have been fully considered but were not found persuasive.
Applicant argues that Savin teaches glass spheres and not hollow silica. The Examiner notes that Savin teaches glass microspheres and it is generally held that a species (glass) anticipates the genus (silica) (MPEP 2131.02), absent a showing otherwise, where glass is known to be made from and contain silica in some amount (none claimed).
Applicant argues that the function of the hollow glass microspheres of Savin is different from the function of the claimed hollow first filler (silica). This argument is not persuasive. Savin is not required to utilize a component for the same reason as Applicant in order to read on the instant invention. Applicant is reminded that the prior art 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).
Applicant argues that Savin teaches glass is better than silica and cites col 11 ln 40-52. The Examiner contends that Applicant misunderstands Savin, who at the citation teaches that common extender pigment crystalline silica particles (i.e. solid, crystals of silica) are less effective at protecting conductivity than hollow spheres. This is not a comparison of hollow silica to hollow glass by Savin but a comparison of crystalline solids to hollow spheres.
Applicant argues that Savin does not meet the claimed 1 to 30 parts by weight hollow first filler per 100 parts base resin. Applicant cites the narrow ranges of about 40-60% film forming polymer, about 10-30% conductive phase, and about 20-30% hollow glass microspheres and asserts that such “converts” to a teaching of 33.3 to 75 parts by weight hollow microspheres per 100 parts resin. Applicant’s math is not persuasive and it is noted that the values of Savin are vol% not mass%. It Appears that Applicant (barring a more thorough demonstration of the calculations relied upon; no density values provided in support of the calculations) has arrived at the range by (20 vol% microsphere ÷ 60 vol% film forming polymer)x100 = 33.3 parts, and (30 vol% microsphere ÷ 40 vol% film forming polymer)x100 = 75 parts, per 100 parts resin. Generally speaking, dividing vol% by vol% does not equate to parts by weight per 100. However, utilizing similar logic the broader ranges (see Savin at col 9 ln58-60, col 10 ln 15-17, col 12 ln 7-9, and col 14 claim 1) of Savin of 20-60 vol% film forming polymer and 2-40 vol% microsphere (by similar calculation) converts to a range of 3.33 to 200 parts per 100 parts resin and therefore meets and satisfies the claimed range.
Applicant argues examples of the specification in an attempt to establish ‘unsatisfactory’ properties and the criticality of the claimed range (note that Examples 6 and 9 are not identified as comparative examples). While the resultant properties may not be “as good” as examples whose first filler amount falls within the range of 1-30 parts, the values are not demonstrative of unexpectedness as they are substantially similar or close to more satisfactory examples. Regardless, Applicant has not demonstrated the vol% ranges of Savin do not fall outside the instantly claimed range(s).
The alternative 35 U.S.C. 103 rejection of claim 5 as unpatentable over Savin in view of Choi and further in view of Sasaki (US PGPub 2009/0030134) is maintained. Applicant’s arguments (Remarks, pages 8-9) have been fully considered but were not found persuasive. Applicant’s arguments are substantially directed to the above rejection of Savin in view of Choi, substantially responded to by the Examiner above.
Conclusion
THIS ACTION IS MADE FINAL. 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 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