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 .
In the light of the properly filed Terminal Disclaimer, all Double Patenting rejections are withdrawn. While claims were previously rendered allowable, updated search provided reference of Levandoski (US 2014/0220243) which reads on at least independent claims of the instant invention. Consequently, finality of the office action is withdrawn and new rejections are stated.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 9, 10, 12, 14 and 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Levandoski (US 2014/0220243).
With respect to claims 1 and 2, Levandoski discloses two part conductive adhesive.
Part 1 comprises liquid monomer having following structure [0024]:
PNG
media_image1.png
142
434
media_image1.png
Greyscale
Wherein R3 can be hydrogen or methyl, m is an integer of at least 1 and v can be zero, and n is an integer of at least 1. As such, the formula of Levandoski meets instant formula (1) and (2) because with v being 0 and m being 1, the linking group will be ethylene oxide.
Part 2 comprises reducing amine catalyst and amine accelerators which are also liquid at room temperature. These amines include dihydroxyphenylpyridine or dimethyl p-toluidine [0045], metal solutions [0046] butyraldehyde-aniline [0045].
Thermally conductive fillers include graphite, aluminum, copper [0025] all of which have thermal conductivity that meets claimed amount of at least 10 W/mK.
With respect to claims 9 and 10, compositions of Levandoski include stabilizers which include phenolic compounds that inhibit oxidation [0039].
With respect to claims 12, composition of Levandoski discloses ratio of the first and second part as 2:1 [0049], which includes conductive filler. First part alone comprises 30-50% of methacrylate component [0022]. The second part comprises 30-70% of acrylate monomer. Using the Table in [0061] as a guide only dimethacrylate component is utilized in amount of 1.5-2% by weight of the entire composition. The only dimethacrylates of Levandoski are the diacrylates having formula II above.
With respect to claims 14 and 15, the composition utilizes mixture of acrylates which is included in both first and second part. Since teachings of Levandoski are not limited only to the examples, additional monomers in the first part include methacryloyl group containing compounds [bottom of the [0021] in amount of 5-40 wt.% [0022], see also formula 1 that encompasses acryloyl group. Second group also comprises acrylate monomer [0041]. Since no specific description of monomers for part 2 was defined, the examiner treats the list of monomers for the second group to be the same as for the first group.
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.
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.
Claim(s) XXX is/are rejected under 35 U.S.C. 103 as being unpatentable over Levandoski (US 2014/0220243).
The discussion of Levandoski from paragraph 1 of this office action is incorporated here by reference. While Levandoski anticipates several claims, following is rendered obvious:
With respect to claim 3, Levandoski does not explicitly state that the polyoxyalkylene unit can be based on propanol or its isomers.
PNG
media_image2.png
222
678
media_image2.png
Greyscale
Formula II of Levandoski include option for v to be 0, m to be 1 and R2 that can be hydrogen and alkyl group having 1-4 carbon atoms. As such R2 can be independently hydrogen and methyl. Consequently, Levandoski meets the limitation of claim 3.
With respect to claims 4 and 5, the formula II of Levandoski, while not explicitly recited, allows mixture of monomers because R2, and polyoxyalkylene compound allow flexibility in selecting linking group wherein the polymer formed from mixture of components having ethylene oxide and propylene oxide would be a random copolymer.
With respect to claims 6 and 7, while Levandoski does not explicitly define molecular weight of the diacrylate compound, the description of the figure above, allows for the length of the polyoxyalkylene to be more than 20 repeat units. As such the formula II of Levandoski encompasses rather very wide range. According to claim 7 the polyoxyalkylene has at least 100 or more repeat units. As such the open range of Levandoski encompasses the molecular weight of the instant invention.
With respect to claim 8, it is well established in the art that the viscosity of the compound is directly related to its chemical structure. Considering that the terminal acrylate groups are the same, and for simplicity of the argument, assuming that the polyoxyalkylene unit is ethylene oxide, the viscosity of the claimed compound would be the same when the integer n is 100 or more (for ethylene oxide specifically n will have to be 114.
Allowable Subject Matter
Claim 13 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Levandoski as applied to claims above teaches use of thermally conductive filler in an amount not greater than 25%, probably because the reference is directed to electrical conductivity rather than thermal conductivity. For that purpose Levandoski studied composition with varying amount of filler, specifically graphite wherein Table in [0061] discloses content of 5, 10, 15 and 20%. The amount of the filler was directly proportional to the conductivity and inversely proportional to resistance (makes sense) as such, the values of the filler in a range of 10-20 produced desired electrical conductivity and lowered the resistivity. One of ordinary skill in the art would know that if too much of electrically conductive filler is utilized its electrical conductivity passes the percolation threshold offering diminishing results with respect to conductivity and mechanical properties. Consequently utilizing high loading of the filler in Levandoski may destroy the teachings therein in obtaining composite having desired electrical conductivity. While the fillers of Levandoski are also thermally conductive the content of the filler in such the content of filler when utilized for its thermal conductivity is completely unrelated when it is utilized for its electrical conductivity.
Pertinent Art
Following references were found that meet the first and second liquid requirements of instant invention.
US 2010/0331462 to Levandoski, US 2010/0101724 to Schuft, US 6,274,688 to Nakagawa. The references were not utilized in a rejection because the rejection would be the same as that stated above. They all lack the amount of thermally conductive filler.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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 at 5712701046. 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.
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767