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 .
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 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.
Claims 1-5, 8-18 are pending. Applicant’s previous election of Group I, claims 1-5, 8 and 14-18 still applies and claims 9-13 remain withdrawn.
Response to Amendment
Applicant’s amendment of 08/26/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-5, 8 and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato (U.S. 2015/0097138) in view of Kusunoki et al. (U.S. 2015/0299550) in view of Murakami et al. (WO 2010-103852, see machine translation) in view of Kato (U.S. 2019/0345291, hereinafter Kato2).
Regarding claims 1-5, 8 and 14-18, Kato teaches a thermally conductive silicone composition comprising an A ingredient overlapping the claimed A ingredient, a F ingredient overlapping the claimed B ingredient and in an overlapping amount, a G ingredient overlapping the claimed D ingredient, a reaction inhibitor overlapping the claimed E ingredient in an overlapping amount, B and C ingredients with overlapping particle size compared to the claimed aluminum oxide and aluminum hydroxide ingredients (as in claims 2, 3, 5, and 16-18) as well as suggesting that magnesium oxide may be included generally, and also desiring low overall viscosity of the composition, and also suggesting an optional additive for highly filling the thermally conductive fillers (see abstract, [0007]-[0028]).
Viscosity of the overall composition is not explicitly disclosed, but there is a motivation provided for controlling the overall viscosity of the composition based on physical characteristics/handling ([0011]) such that it would have been obvious to have adjusted the viscosity of the overall composition to values within the range of claim 8 as an art-recognized result effective variable.
Kato does not disclose the claimed ratio of the three types of conductive filler or the claimed surface area/diameter of the magnesium oxide. However, Murakami is also directed to mixtures of thermally conductive filler for a silicone based binder and teaches that the ratio of aluminum oxide to magnesium oxide (with a diameter overlapping the ranges of claims 4 and 14-15) should be adjusted based on the desired overall thermally conductivity vs cost, with increasing amounts of aluminum oxide causing increasing thermal conductivity while magnesium oxide has a lower cost ([0009], [0056]-[0057]). Thus, it would have been obvious to have adjusted the amount of aluminum oxide relative to magnesium oxide (both already taught by Kato) as taught by Murakami because Murakami teaches that such a ratio is an art-recognized result effective variable for optimizing overall thermal conductivity and cost of the filler and to have used the size of Murakami for the magnesium oxide of Kato because it is disclosed as being suitable for thermally conductive filler in a silicone binder as in Kato.
Additionally, Kusunoki is also directed to thermally conductive filler mixtures and teaches that the ratio of hard (i.e., aluminum oxide and magnesium oxide) fillers to soft (i.e., aluminum hydroxide) fillers should be adjusted to optimize contact area between filler particles, deformation of soft filler, and overall thermal conductivity (see abstract, [0040]-[0047], [0051]-[0055]). Kusunoki also teaches that the surface area of the particles should overlap the range of claim 1 ([0047]) based on the desired irregularity and contact points between filler particles. Thus, it would have been obvious to have adjusted the amount of aluminum oxide and magnesium oxide relative to the amount of aluminum hydroxide in Kato as taught by Kusunoki because Kusunoki teaches that such a ratio is an art-recognized result effective variable for optimizing contact area between filler particles, deformation of soft filler, and overall thermal conductivity and it would have further been obvious to have used the surface area of the particles from Kusunoki in Kato based on the desired irregularity and contact points between filler particles.
Based on the above, the claimed amount of each filler relative to the total thermally conductive filler is considered prima facie obvious to adjust as art-recognized result effective variables, including to values within the claimed ranges for aluminum oxide, magnesium oxide, and magnesium hydroxide. Similarly, the overall amount of thermally conductive filler would have been obvious to adjust to within the claimed range as part of optimizing the overall thermal conductivity provided by the composition (this is further obvious in view of Kato2 below).
Regarding the F and G ingredients, modified Kato discloses all of the above subject matter but does not disclose the claimed F and G ingredients. However, Kato2 is also directed to thermally conductive silicone compositions and teaches that the overall amount of thermally conductive filler (which may be a mix of aluminum oxide, magnesium oxide, and aluminum hydroxide, as in Kato) may overlap the claimed range to produce sufficient thermal conductivity while providing good handling ([0056]-[0059]) and also discloses an overlapping amount of F ingredient (after converting the disclosed amount based on thermal conductive filler to an amount based on the A ingredient) as in claim 1 to improve filling performance of the thermally conductive filler (as sought by Kato, see above) and also teaches an trimethylsiloxy terminated polydimethylsiloxane corresponding to ingredient G in claim 1, with the amount of that ingredient being adjusted based on the desired effect on the overall viscosity of the composition ([0084]), such that the amount of the ingredient is an art-recognized result effective variable that is obvious to adjust as part of optimizing the overall viscosity of the composition. The viscosity of the ingredient itself and the MW (i.e., “d” value) of the ingredient is not explicitly disclosed, however, one of ordinary skill in the art would recognize that the length of the PDMS chain (i.e., the MW and the d value) would be obvious to adjust based on the desired viscosity of the ingredient itself (with higher MW yielding higher viscosity) and would also realize that the viscosity of the ingredient itself would be obvious to adjust (along with the amount of the ingredient) as part of optimizing the effect that ingredient has on the overall viscosity of the composition, such that the viscosity and MW of the G ingredient in claim 1 is obvious.
Thus, it would have been obvious to have used an overall amount of thermally conductive filler from Kato2 in Kato to produce sufficient thermal conductivity while providing good handling and to have included the F and G ingredients of Kato2 in Kato at the amounts discussed above in order to allow for improved filling of the thermally conductive filler (sought by Kato) for the F ingredient and in order to lower the viscosity of the overall composition for the G ingredient (with low viscosity also being sought by Kato).
There are no additional ingredients required in the above composition of modified Kato, as with the claimed consisting of language.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that Kato discloses magnesium oxide as optional which does not make it non-obvious.
Applicant argues that the secondary references do not disclose the same ranges as claimed but these limitations are obvious based on overlapping ranges and/or result effective variable optimization as explained above.
Applicant argues that the prior art discloses too many possible compositions and does not render obvious the claimed subject matter with sufficient specificity. This is not persuasive and the prior art is more than sufficiently specific/limited in its teachings to render obvious the claimed subject matter.
Applicant then argues unexpected results however the claims are not commensurate in scope with the cited date in terms of the type and amount of ingredients as claimed being much broader than the type and amount of ingredients used in the examples. For example, the claimed critical aspect cited by Applicant as resulting in the unexpected improvement (i.e., surface area) is much broader as claimed (especially with no lower endpoint) than the values used in the examples (only 0.05 and 0.2 surface areas seem to be used in the examples). The other aspects of the composition (i.e., the other ingredients) are also relevant to unexpected results and are also not commensurate as explained above.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787