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 .
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.
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.
Claims 1-17, 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kunio (JP2007224265, herein Kunio, a machine translation is being used for citation purpose), in the view of Aoki (JP2005064281, herein Aoki, a machine translation is being used for citation purpose).
Regarding Claims 1, 2, 6-9, 15-17, 19-21, Kunio teaches “The thermally conductive resin composition of the present invention contains a thermoplastic resin” [0008], wherein, “component (A), polyester based resins such as polyethylene terephthalate (PET)” [0012], wherein the softening point is 70° C and lies in the claimed range, and “Component [D]; mineral oils” [0067], which is base oil.
Kunio teaches “sepiolite” [0080], matches the thixotropy adjusting agent, in the range of “1 to 30 parts by mass per 100 parts by mass of the above-mentioned component [A].” [0080] wherein the composition (A) is thermoplastic resin.
Kunio further teaches “mineral oil component [D] is 0.1 to 10 parts by mass when the total of the thermoplastic resin [A] and all graphite particles is 100 parts by mass.” [0078] wherein “when the amount of the thermoplastic resin [A] is 100 parts by mass, the amount of the graphite particles [B] is 10 to 1,000 parts by mass” [0011], hence accordingly, the mineral oil to the thermoplastic resin ratio is 0.1/(100-10) to 10/(100-10)=0.11% to 11.11%. Therefore, the sepiolite/mineral oil ratio is 30%/11.11%=9.0% to 30%/11.11%=270%, hence, overlaps the claimed range of the ratio between the thixotropy adjusting agent in a content of 1 part by mass or more and 10 parts by mass or less, with respect to 100 parts by mass of the base oil.
Kunio teaches “[B] graphite particles” [0007] as inorganic powder, but not explicitly teach the specific inorganic powder fillers and size ranges, however, Aoki teaches “filler is a combination of aluminum powder and zinc oxide powder” [0025] fall in the three different size ranges system:
“The average particle size of the aluminum powder of component (B) is in the range of 1 to 50 µm” [0025], which overlaps the first, second and third inorganic powder fillers, wherein, first inorganic powder filler having an average particle diameter in a range of 10 µm or more and 100 µm; the second inorganic powder filler has an average particle diameter in a range of 1 µm or more and 50 µm or less;
“The zinc oxide powder of component (C) has an average particle size in the range of 0.1 to 5 μm” [0025], which lies in the third inorganic powder filler has an average particle diameter in a range of 0.1 µm or more and 5 µm or less.
Kunio and Aoki are considered analogous art because they are in the same field of endeavor, that of thermal conductive resin composite development. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to select the specific D1, D2, D3 sizes, which from the “The average particle size of the aluminum powder of component (B) is in the range of 1 to 50 µm” [0025] of Aoki, and further develop into the specific size ratios including: D2/D1<0.70 (e. g. D2=25 µm, D1=50 µm); D3/D2<0.60 (e. g. D3=2.5 µm, D2=25 µm); D3/D2<0.10 (e. g. D3=2 µm, D2=25 µm), and apply the above size ratio equations as filler selection criteria into the composition development from Kunio. Doing so would further achieve a desirable property of “the packing efficiency is improved” [0025] as taught by Aoki.
In the case where the claimed ranges "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).
Regarding Claims 3, 10, Kunio and Aoki teaches the thermally conductive composition as set forth above in claims 1-2. Kunio is silent on the three fillers and their fractions, however, Aoki teaches:
“B-2: Aluminum powder having an average particle size of 22 μm” [0043] lies in the first inorganic powder filler, D1.
“B-3: Aluminum powder having an average particle size of 1.5 μm” [0043] lies in the second inorganic powder filler, D2.
“Zinc oxide powder C-1: Zinc oxide powder having an average particle size of 0.5 μm” [0043] lies in the third inorganic powder filler, D3.
Aoki teaches the range of the three sized particles in Example 3 “B2 440 parts, B3 200 parts, C-1 160 parts.” [Ori. For. P11, Table 1] hence, the B2 concentration is 55% (D1); B3 concentration is 25% (D2); C-1 concentration is 20% (D3), all lie in the claimed ranges.
Kunio and Aoki are considered analogous art because they are in the same field of endeavor, that of thermal conductive resin composite development. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have added the three sized particle system of Aoki, into the composition of Kunio. Doing so would further achieve a desirable property of “heat-softening thermally conductive material that is solid at room temperature and can be formed into a desired shape such as a sheet, can be easily attached to and detached from electronic components and heat sinks, and softens due to heat generated during operation of electronic components to reduce contact thermal resistance, thereby providing excellent heat transfer performance, as well as excellent flame retardancy,
heat resistance, and weather resistance, and is also easy to handle.” [0005] as taught by Aoki.
Regarding Claims 4, 11, 12, Kunio teaches “thermoplastic resin [A] is 100 parts by mass, the amount of the graphite particles [B] is 10 to 1,000 parts by mass, and when the total amount of the thermoplastic resin [A] and the total amount of the graphite particles is 100 parts by mass, the amount of the release agent [D] is 0.1 to 10 parts by mass.” [0011], wherein, the graphite particle reads on inorganic powder filler, hence, given thermoplastic resin [A] is 100 parts by mass; graphite particles [B] is 1000 parts by mass, the total A+B=1100 parts by mass, the release agent [D] is 1100x0.1/100=1.1 parts by mass, hence, the total of the base oil and the thermoplastic resin=100+1.1=101.1 parts by mass; while graphite particles [B] is 1000 parts by mass, hence, the ratio between total of the base oil and the thermoplastic resin to the inorganic powder filler is 101.1/1000=10.11% lies in the claimed range.
Regarding Claims 5, 13, 14, Kunio and Aoki teaches the thermally conductive composition as set forth above. The formation of the thermally conductive sheet is the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) [See MPEP 2144.07]
Response to Arguments
Applicant’s arguments, filed 5/7/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kunio (JP2007224265, herein Kunio, a machine translation is being used for citation purpose), and Aoki (JP2005064281, herein Aoki, a machine translation is being used for citation purpose).
In this case, newly added reference_Kunio teaches “The thermally conductive resin composition of the present invention contains a thermoplastic resin” [0008], wherein, “component (A), polyester based resins such as polyethylene terephthalate (PET)” [0012], “Component [D]; mineral oils” [0067], “sepiolite” [0080];
Aoki further teaches the specific inorganic powder fillers and size ranges as claimed.
Overall, Kunio and Aoki teaches the thermally conductive composition with all claimed ingredients and amounts, hence, can lead to the “excellent in moldability and releasability and further gives a molded article which is excellent in thermal conductivity and electromagnetic shielding properties, and a molded article made using the same.” [0005] as taught by Kunio, matches the “the thermally conductive composition can be rich in flexibility and have good handling property. Thus, for example, a thermally conductive sheet can be easily molded out from the thermally conductive composition, and the heat generating component and the heat dissipating component can be allowed to adhere to each other via the thus molded thermally conductive sheet.” [Instant App. P2, 0025], which also line up with “heat-softening thermally conductive material that is solid at room temperature and can be formed into a desired shape such as a sheet, can be easily attached to and detached from electronic components and heat sinks, and softens due to heat generated during operation of electronic components to reduce contact thermal resistance, thereby providing excellent heat transfer performance, as well as excellent flame retardancy, heat resistance, and weather resistance, and is also easy to handle.” [0005] as taught by Aoki.
In response to the applicant’s argument that “unique effects”, the argument is not persuasive.
In fact, when Examples 1-32 and Comparative Examples 1-8 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 3 is open to 40 parts by mass or more and 80 parts by mass or less of the first inorganic powder filler, 10 parts by mass or more and 50 parts by mass or less of the second inorganic powder filler, and 10 parts by mass or more and 40 parts by mass or less of the third inorganic powder filler with respect to 100 parts by mass of the inorganic powder filler. However, Examples 1; 7-32 and Comparative Examples 1-8 only include the amount of each of the three fillers as single vales. Examples 1; 7-32 and Comparative Examples 1-8 are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z. L./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767