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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/02/2026 has been entered.
Status of Claims
Claims 1-10 are currently pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “about” in claims 1-4 & 6-8 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of examination, the term “about” is interpreted as covering ±10% of the corresponding numerical value under the broadest reasonable interpretation of the claims.
Claim Rejections - 35 USC § 103
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.
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 1-5 & 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (US 2023/0017467 A1).
Regarding claims 1-5, Yang teaches a thermal interface material composition comprising based on a 100 wt% of a total weight of thermal interface material: a) about 1-25 wt% of a non-reactive polyurethane prepolymer which is a reaction product of at least one polyisocyanate and at least one hydroxy group containing compound, and is substantially free of residual isocyanate groups ([0010]-[0037]); b) up to 70 wt% of a filler such as aluminum trihydroxide ([0046] & [0048]); c) about 0.05 to 0.5 wt% of at least one adhesion promoter such as a silane terminated urethane which is a reaction product of a nucleophile functionalized silane such as an aminosilane with one or more isocyanate terminated prepolymers ([0038]-[0040]); d) about 10 to 30 wt% of at least one plasticizer ([0050]).
Regarding claim 9, Yang teaches an article comprising the thermal interface material composition of claim 1 ([0064]-[0073]).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (US 2023/0017467 A1) in view of Chiao (US 5,623,044 A).
Regarding claims 6-8, Yang teaches the thermal interface material composition of claim 5 but is silent as to the silane terminated urethane prepolymer having a molecular weight ranging from about 200-5000 (claim 6), 300-3000 (claim 7) and 500-2000 (claim 8). Chiao teaches a polyurethane composition comprising a silane terminated urethane prepolymer, as an adhesion promoter, preferably having a molecular weight of less than about 2000 (Col.1, L.55-67). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to employ a silane terminated urethane prepolymer having a molecular weight of less than about 2000 as a suitable molecular weight for silane terminated urethane prepolymer for polyurethane compositions used for sealing applications as taught by Chiao.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Yang (US 2023/0017467 A1) in view of White (US 2022/0396658 A1) and Dawley (US 2020/0243926 A1).
Regarding claim 10, Yang teaches the article of claim 9 but is silent as to a battery module that is formed of one or more battery cells and a cooling unit, wherein the battery module is connected to the cooling unit via the thermal interface material composition. White teaches an article such as an electric vehicle comprising a battery module including a thermal interface material composition comprising a non-reactive polyurethane prepolymer which is a reaction product of least one polyisocyanate and at least one hydroxy group containing compound; and a filler such as aluminum hydrate as well as a plasticizer and an adhesion promoter ([0040]-[0050], [0101]-[0102], [0188]-[0189]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to use Yang’s composition as a thermal interface material for battery in order to dissipate heat away from a battery while providing good adhesion to different substrates as taught by White. Furthermore, it would have been obvious to provide a cooling unit such that the thermal interface material of modified Yang is positioned between the one or more battery cells and the cooling unit in order to transfer heat away from the battery cells to the cooling unit as taught by Dawley ([0032]-[0034]).
Response to Arguments
Applicant's arguments in the appeal brief filed 12/12/2025 have been fully considered and addressed in the examiner’s answer on 05/07/2026. For applicant’s convenience, the examiner’s answer to the appeal brief is reproduced below. Applicant's arguments in the appeal brief filed 12/12/2025 can be summarized as follows: 1) the term "about" recited in claims 1-4 & 6-8 would not render the claims indefinite since one skilled in the art can clearly understand the scope of the values in the claims when reading the specification such that; 2) the Yang reference does not fairly teach or suggest a non-reactive polyurethane prepolymer that is substantially free of residual isocyanate groups; and 3) the Yang reference does not fairly teach or suggest at least one silane terminated urethane prepolymer. As to 1), Applicant specifically argues that the instant specification describes at least one
value (0.1 wt%) outside of the claimed numerical range in claim 1 for the content of the at least
one silane terminated urethane prepolymer. However, the instant specification does not provide
any values outside of the claimed numerical ranges for contents of the non-reactive polyurethane
prepolymer (component a of claim 1), the aluminum trihydroxide (component b of claim 1), and
the at least one plasticizer (component d of claim 1). Furthermore, the instant specification does
not provide any guidance as to the maximum possible value for the content of the at least one
silane terminated urethane (component c of claim 1) that is encompassed by the claimed range of
"about 0.15-1.5 wt%". While the instant specification may provide support for at least a
minimum value of 0.1 wt% that would read on about 0.15 wt% for the minimum content of the at
least one silane terminated urethane prepolymer, the instant specification does not provide any
guidance or scope to the maximum and minimum values intended to be encompassed by the term
about for the contents of components a, b and d and the maximum value intended to be
encompassed by the term about for the content of component C.
With regards to 2), Yang teaches a composition comprising polyurethane prepolymer
which is obtained by reacting at least one aromatic polyisocyanate and at least one polyol which
reads on the claimed hydroxy group containing compound. It is also noted that the polyol used in
Yang includes the same polyols described in the instant specification for the claimed hydroxy
group containing compound of claim 1. Although not expressly stated in Yang, one of ordinary
skill in the art readily understands that the polyol acts as a blocking agent, which after reaction
with the isocyanate groups of the polyisocyanate, forms a non-reactive polyurethane prepolymer.
Yang further discloses that the amount of free isocyanate groups in the obtained polyurethane
prepolymers after all hydroxyl groups of polyols are reacted on the basis of overall polymers is
0.1 wt% to 5 wt% or preferably 0.3 wt% to 2.5 wt% ([0028]). However, the instant specification
discloses that the polyurethane prepolymers of the present invention are considered non-reactive
when there are less than about 0.8 wt% or less than about 0.4 wt% of residual isocyanate groups
in the prepolymer. Accordingly, since Yang teaches a broader range (0.1 wt% to 5 wt%) and
preferred range (0.3 wt% to 2.5 wt%) for the content of residual isocyanate groups which each
overlap with a range of less than about 0.8 wt% or less than about 0.4 wt%, the polyurethane
prepolymer of Yang is found to read on non-reactive polyurethane prepolymer at least when the
content of residual isocyanate groups is from 0.1 wt% to 0.8 wt% (i.e within Yang's disclosed
ranges).
Regarding 3), Applicant argues that Yang does not disclose or suggest a silane terminated
urethane prepolymer but merely describes the mechanism of how its organoalkoxysilanes may
have worked with its adhesive composition and further argues that paragraph [0038] evidences
the fact that Yang's polyurethane polymer is reactive. However, contrary to Applicant's
assertions, the description in [0038] of Yang specifically explains that the organic radicals in the
organoalkoxysilanes can react via any hydroxyl or amine groups in present in the
organoalkoxysilanes with an isocyanate group of a polyurethane polymer with the silane
component being adhered to a substrate via a hydrolysis/condensation reaction. As noted above,
the polyurethane prepolymer is considered non-reactive to the extent there are substantially no
residual isocyanate groups present in the prepolymer. Yang further discloses suitable silane
adhesion promoters including adducts of amino-or mercapto silanes with polyisocyanates
([0039]). It is noted that the formation of Yang's silane adhesion promoter involves the same
reaction recited in claim 5 in which at least one nucleophile functionalized silane (i.e
aminosilane or mercaptosilane) reacts with one or more isocyanate terminated prepolymer. One
of ordinary skill in the art readily understands that the aminosilane (or mercaptosilane) can react
with some of the polyurethane prepolymers having free isocyanate groups (in view of most
isocyanate groups being blocked through reaction with the polyols as described above) to yield
the claimed silane terminated urethane prepolymer. Notwithstanding, silane adhesion promoters
obtained by reaction of a silane coupling agent and polyurethane prepolymer are well-known
within the art ([0003]). Since the silane component on one end of the silane adhesion promoter of
Yang is to be bonded to the substrate (with the amine component on another end reacting with
the isocyanate groups in the polyurethane polymer), Yang silane adhesion prompted reads on the
claimed silane terminated urethane prepolymer.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANAEL T ZEMUI whose telephone number is (571)272-4894. The examiner can normally be reached M-F 8am-5pm (EST).
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, BARBARA GILLIAM can be reached on (571)272-1330. 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.
/NATHANAEL T ZEMUI/Examiner, Art Unit 1727
Prosecution Insights