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 .
Claim Objections
Claims 1 and 9 are objected to because of the following informalities:
Claim 1, line 13, “comprising” should read “having”.
Claim 9, line 3, “comprising” should read “comprises”.
Appropriate correction is required.
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.
Claims 1-5, 7, 9, and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Takagi et al. (US 2020/0062911) in view of Mizuki et al. (US 2011/0184091 A1), Taguchi et al. (US 2019/0004422 A1) and Kashino et al. (US 2022/0372208 A1).
Regarding Claims 1, 3, 5, 7, 9, and 17-18, Takagi discloses a heat-dissipation composition (para 0023) comprising organic polymer that includes thermoplastic resin such as phenol phenoxy resin (paras 0079, 0080), thermosetting resins including epoxy resin and benzoxazine resin (paras 0079, 0084), and high thermal conductive filler including scale-like boron nitride (para 0100). Takagi further discloses there is 30-95 parts high thermal conductive filler relative to 100 total parts by weight of the composition (i.e. 30-95%) (para 0109).
Takagi further discloses the epoxy resin includes Epiclon830 (para 0197) but does not disclose epoxy resin having a mesogenic skeleton selected from the structures as claimed.
Mizuki discloses an epoxy resin composition that comprises liquid bisphenol type epoxy resin (Ab2) such as Epiclon 830 (paras 0035-0036) used in combination with an epoxy resin (Aa) having a polycyclic structure such as a naphthalene structure or anthracene structure (paras 0021, 0023-0024). The epoxy resin (Aa) allows the cured resin to be lowered in crosslinking density and enhanced in toughness while maintaining heat resistance (para 0023).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Takagi to incorporate the teachings of Mizuki and use a combination of Epiclon 830 and an epoxy resin having a polycyclic structure such as a naphthalene structure or anthracene structure. Doing so would allow the cured resin to be lowered in crosslinking density and enhanced in toughness while maintaining heat resistance.
Takagi in view of Mizuki does not disclose the organosiloxane compound as claimed.
Taguchi discloses a resin composition for an optical sensor using a semiconductor (para 0004) comprising particles and epoxy resin (paras 0165, 0169). Taguchi further discloses an adhesive such as silane coupling agent, including compounds as claimed (i.e. glycidocypropyltriethyoxysilane), to improve adhesiveness to the composition (paras 0405-0409). The amount of adhesive is preferably 0.01-10% by mass with respect to total solid content of the composition (para 0413).
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Takagi in view of Mizuki to incorporate the teachings of Taguchi and produce the composition of Takagi in view of Mizuki further comprising 0.01-10 mass% of the silane coupling agent of Taguchi. Doing so would improve adhesiveness.
Since Takagi discloses 30-95% high thermal conductive filler, and Taguchi discloses 0.01-10% silane coupling agent, the ratio of silane coupling agent to high thermal conductive filler would be 0.01/95 to 10/30, i.e. 0.01-33.3 parts silane coupling agent with respect to 100 parts high thermal conductive filler.
Takagi in view of Mizuki and Taguchi disclose use of a thermosetting resin (paras 0066 and 0079 of Takagi) but do not disclose a phenoxy resin having structure as claimed.
Kashino discloses a resin composition for forming a heat-dissipating member (para 0014), comprising an epoxy resin and thermally conductive particles (para 0024) and a mesogenic structure-containing resin (para 0104). The mesogenic structure-containing resin may be a phenoxy resin which is a reaction compound of a polyfunctional phenol compound and a polyfunctional epoxy compound, wherein both of these polyfunctional phenol compounds and polyfunctional epoxy compounds have a mesogenic structure (para 0112). The phenoxy resin may be soluble in a suitable solvent (para 0115). The mesogenic structure-containing resin further improves the thermal conductivity (heat dissipation) (para 0104).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Takagi in view of Mizuki and Taguchi to incorporate the teachings of Kashino and produce the composition of Takagi in view of Mizuki and Taguchi using the mesogenic structure-containing phenoxy resin of Kashino. Doing so would improve the thermal conductivity (heat dissipation).
Takagi discloses that there is present 25-250 parts reactive dispersing medium by weight with respect to 100 parts powder composition (para 0125). The powder composition comprises 5-70 parts phenoxy resin and 30-95 parts high thermal conductive filler (para 0109). The reactive dispersing medium comprises 0-60 parts benzoxazine, 5-50 parts epoxy and 5-60 parts phenol-based epoxy per 100 parts reactive dispersing medium (para 0139).
Therefore, based on just resin, where there is present 25 parts reactive dispersing medium, the resin composition comprises 0-15 parts benzoxazine, 1.25-12.5 parts epoxy, and 1.25-15 parts phenol-based epoxy as well as 5-70 parts phenoxy from which it is calculated there is present 0-70 wt% (15/21.5) benzoxazine, 1.7-85 wt% (1.5/86.5 – 27.5/32.5) epoxy, and 5.5-93 wt% (5/90 – 70/75) phenoxy resin. Further, when there is present 25 parts reactive dispersing medium and 5 parts phenoxy resin and 95 parts high thermal conductive filler, the content of the high thermal conductive filler based on resin is 317% (95/30).
Regarding Claim 2, Takagi in view of Mizuki, Taguchi, and Kashino discloses all the limitations of the claimed invention according to Claim 1 above. Takagi further discloses the thermal conductivity of the composition is 1-35 W/mK (para 0119).
Regarding Claim 4, Takagi in view of Mizuki, Taguchi, and Kashino discloses all the limitations of the claimed invention according to Claim 1 above. Takagi further discloses the high thermal conductive particles can contain entirely boron nitride, i.e. 100% of the particles.
Regarding Claim 12, Takagi in view of Mizuki, Taguchi, and Kashino discloses all the limitations of the claimed invention according to Claim 1 above. Takagi further discloses the composition further comprises curing accelerator (para 0130).
Regarding Claim 13, Takagi in view of Mizuki, Taguchi, and Kashino discloses all the limitations of the claimed invention according to Claim 1 above. While Takagi in view of Mizuki, Taguchi, and Kashino does not disclose a ratio T50/Tmax as claimed, given that Takagi in view of Mizuki, Taguchi, and Kashino discloses composition as claimed, the composition would inherently exhibit ratio as claimed.
Regarding Claim 14, Takagi in view of Mizuki, Taguchi, and Kashino discloses all the limitations of the claimed invention according to Claim 1 above. Takagi further discloses the resin composition can be used in the form of a sheet (para 0172).
Regarding Claim 15, Takagi in view of Mizuki, Taguchi, and Kashino discloses all the limitations of the claimed invention according to Claim 14 above. Takagi further discloses the composition has a degree of cure of 80%, i.e. B stage, or more (para 0154).
Regarding Claim 16, Takagi in view of Mizuki, Taguchi, and Kashino discloses all the limitations of the claimed invention according to Claim 14 above. Takagi further discloses the composition is used between a coil, i.e. heat generator, which would necessarily be metal and another metal (para 0097).
Response to Arguments
Applicant's arguments filed 02/17/2026 have been fully considered but they are not persuasive.
Applicant argues that Takagi teaches away from solvent-soluble phenoxy resin, arguing that Takagi teaches phenol phenoxy resin powder in a dispersion, not in a solution.
However, while the phenoxy resin of Kashino may be soluble in the “suitable solvents”, it is not necessarily soluble in the dispersion liquid of Takagi. The dispersing medium of Takagi is not limited (para 0123), and therefore may be a liquid that is not a suitable solvent for the phenoxy resin.
Further, there is nothing in the present claims that requires the presence of a solvent or that the claimed phenoxy resin is dissolved.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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, Callie Shosho can be reached at 571-272-1123. 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.
/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
Prosecution Insights