DETAILED ACTION
Applicant’s reply, filed 3 September 2025 in response to the non-final Office action mailed 1 July 2025, has been fully considered. As per Applicant’s filed claim amendments claims 17-18, and 21-32 are pending under examination, wherein: claims 17-18 and 25-26 have been amended, claims 21-24 and 27-32 are as previously presented, and claims 1-16 and 19-20 have been cancelled by this and/or previous amendment(s).
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 27 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 25, from which claim 27 depends, recites a thermal conductivity of 2.0 W/m·K or more and 8.0 or less W/m·K. As such the recitation of claim 27 which recites an identical range fails to further limit. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 28 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 25, from which claim 28 depends, recites a specific gravity of 1.0 or more and 2.0 or less. As such the recitation of claim 28 which recites an identical range fails to further limit. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 17-18 and 21-32 are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (US PGPub 2017/0081578) in view of Sakamoto et al. (US PGPub 2020/0157350).
Regarding claims 17-18, 21 and 25-29, Kato teaches thermally conductive silicone compositions, including greases, comprising (A) 100 parts by mass of an organopolysiloxane and (B) 400 to 3,500 parts by mass of a thermally conductive filler (abstract). Kato teaches the (A) component has a viscosity of at least 20 mPa·s at 25°C ([0028]; [0038])(instant claims 17, 21, 25 and 29, absent evidence to the contrary) and further teaches the silicone is preferably a non-curable silicone ([0039]). Kato further teaches forming the composition by methods of mixing the component (A) with the component (B) and any further components ([0061]).
Kato teaches the (B) may include a mixture of filler materials and teaches the filler materials are selected from metal oxides including alumina and metal nitrides including boron nitride ([0046]-[0047]). Kato further teaches filler shapes including irregular, spherical, etc. ([0048]), where the average particle diameter is from 0.01 to 100 µm and where a combination of large and small particle sizes of different fillers is preferably used in order to improve thixotrophy and achieve high filling ([0048]).
Kato further teaches the filler may be surface treated with silane coupling agents, silicone surface treatment agents, etc. ([0045]). Kato teaches the silane coupling agents (E), present from 0.1 to 5 parts per 100 parts (A), are selected from compounds including octyl trimethoxy silane, etc. ([0058]-[0059]) (instant alkoxysilane surface treatment agent; instant claims 17-18).
Kato teaches two or more of (B1) a plate-shaped boron nitride of 0.1 to 30 µm, (B2) a granular (instant agglomerated) boron nitride powder of 0.1 to 50 µm, (B3) a spherical and/or pulverized (instant irregular) aluminum oxide of 0.01 to 50 µm, or (B4) a spherical and/or pulverized graphite ([0049]). Kato teaches two or more of (B1)-(B4), where (B1)-(B3) are exemplified (see Table 1). It would have been obvious to one of ordinary skill in the art to select a combination of fillers (B1), (B2) and (B3) and arrive at the instant invention with a reasonable expectation of success, motivation stemming from the express teaching by Kato that combinations of two or more of 4 noted fillers is suitable and readily envisaged.
Kato does not specifically teach the respective amounts of a combination of (B1), (B2) and (B3). However, Sakamoto teaches thermal grease compositions comprising a combination of a 100 parts siloxane and 100 to 3,000 parts of thermally conductive filler (abstract; [0029]). Sakamoto teaches thermally conductive fillers, including alumina and boron nitride ([0025]), is a combination of different fillers having three different particle size ranges for the purpose of obtaining high filling ([0027]). Sakamoto teaches the combination comprises 30 to 70 mass% of the total filler of a filler having a relatively large particle size of diameters of 20 µm or more, and the remainder a 1:40 to 40:1 ratio of a filler having an intermediate particle size of between 20 µm and 1 µm and a filler having a smaller particle size of less than 1 µm ([0027]) (Sakamoto ‘relatively large’/’intermediate’/’smaller’ = Kato B2/B1/B3, renders obvious the ranges of instant B3/B2/B1). Sakamoto and Kato are analogous art and are combinable because they are concerned with the same field of endeavor, namely silicone grease compositions having high filler content and a combination of particle sizes. At the time of filing a person having ordinary skill in the art would have found it obvious to select the relative amounts of three fillers as taught by Sakamoto as the amounts of the filler combination of Kato and would have been motivated to do so as Sakamoto teaches such will result in high filling and desirable working properties ([0026]-[0027]).
Regarding the thermal conductivity recitation (claims 17, 25 and 27): Kato further teaches the resultant grease composition is thermally conductive ([00417]) and exemplifies thermal conductivities of 3.3, 3.1, 4.1 and 4.2 W/m·K (Table 1). Additionally, Kato teaches and/or renders obvious the claimed composition comprising the claimed silicone component and the combination of claimed fillers present in the claimed relative filler amount. The instant specification demonstrates that such will result in the claimed thermal conductivity (original specification, [0015], Table 1). 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)).
Regarding the specific gravity recitation (claims 17, 25 and 28) Kato is silent as to the specific gravity of the composition as claimed. However, Kato teaches and/or renders obvious the claimed composition comprising the claimed silicone component and the combination of claimed fillers present in the claimed relative filler amount rendered obvious in view of Sakamoto. The instant specification demonstrates that such will result in the claimed specific gravity (original specification, [0016], Table 1). 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)).
Regarding claims 22-23 and 30-31, Kato in view of Sakamoto renders obvious the thermal grease as set forth above. Kato further teaches the silane coupling agent (E) is present from 0.1 to 5 parts per 100 parts (A) ([0059]). Kato additionally teaches that when filler (B) is surface treated such can be done separately ([0062])(instant pretreated).
Regarding claims 24 and 32, Kato in view of Sakamoto renders obvious the thermal grease as set forth above. Kato further teaches the composition can be utilized in a variety of end-uses where the composition is applied ([0063]-[0064]; [0074]). It would have been obvious to one of ordinary skill in the art to place the composition into an appropriate ‘container’ for application to the selected substrate. Further, the recitation that the basic formulation containing said thermal grease is to be put into a dispenser, bottle, can or tube does not confer patentability to the claims since the recitation of an intended use does not impart patentability to otherwise old compounds or compositions (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)).
Response to Arguments/Amendments
The 35 U.S.C 112(b) rejections of claims 17-23 are withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 103 rejection of claims 17-32 as unpatentable over Kato (US PGPub 2017/0081578) in view of Sakamoto (US PGPub 2020/0157350) is maintained. Applicant’s arguments (Remarks, pages 6-7) have been fully considered but were not found persuasive.
Applicant argues that the instant invention has both low specific gravity and relatively high thermal conductivity and argues that neither Kato nor Sakamoto teach and/or render obvious such properties. This is not found persuasive.
Applicant argues that the ‘available information’ of the references does not provide a reasonable basis to assume that the claimed property of a specific gravity, as claimed, would be rendered obvious. Applicant argues that since neither reference teaches specific gravity, that there is no reasonable basis to assume such would be met by either Kato or Sakamoto. As Applicant has noted, the specific gravity is a property resultant of the composition. Kato in view of Sakamoto renders obvious the claimed composition by teaching the claimed components, in the claimed amounts, and therefore the claimed specific gravity will necessarily follow therefrom. The instant specification demonstrates that a composition as claimed will result in the claimed specific gravity (original specification, [0016], Table 1). 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)). Other than asserting it would not, Applicant has provided no demonstration or objective evidence that the resultant specific gravity property would not arise from a composition comprising the same components, present in substantially similar amounts.
Applicant argues that the ‘available information’ of the references does not provide a reasonable basis to assume that the claimed property of a thermal conductivity, as claimed, would be rendered obvious. It is noted that Kato teach that the composition is not only simply thermally conductive but in fact excels in thermal conductivity ([0001]; [0012]; [0019]) where the thermally conductive filler is selected to impart the desired thermal conductivity ([0045]) including combinations of boron nitride and alumina ([0047]-[0049]) present in a total amount of 400 to 3,500 parts by mass ([0050]) an amount which overlaps with the total claimed amount of filler (105-500 parts by mass). The instant specification demonstrates that the claimed composition will result in the claimed thermal conductivity (original specification, [0015], Table 1). 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)).
Applicant argues that the Examples of Kato guide one to selecting large amounts of filler beyond those claimed. It is noted that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments (see MPEP 2123; see Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); see Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)). Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)). Applicant also argues that the examples of the secondary reference of Sakamoto guide one towards large, broad ranges. The Examiner notes that reference to the examples of the secondary reference of Sakamoto is no more persuasive than reference to the examples of the primary reference. The broader disclosure of Sakamoto teaches relative amounts of the respective fillers (see above rejection) and the examples of Sakamoto do not serve to negate said broader disclosures.
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.
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 571-272-1197. 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.
/JANE L STANLEY/ Primary Examiner, Art Unit 1767