Office Action Predictor
Application No. 17/910,607

THERMALLY CONDUCTIVE PASTE

Non-Final OA §103
Filed
Sep 09, 2022
Examiner
CAI, JIAJIA JANIE
Art Unit
1761
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Sumitomo Metal Mining Co., LTD.
OA Round
1 (Non-Final)
24%
Grant Probability
At Risk
1-2
OA Rounds
3y 4m
To Grant
41%
With Interview

Examiner Intelligence

24%
Career Allow Rate
9 granted / 37 resolved
Without
With
+16.8%
Interview Lift
avg trend
3y 4m
Avg Prosecution
49 pending
86
Total Applications
career history

Statute-Specific Performance

§101
2.0%
-38.0% vs TC avg
§103
54.0%
+14.0% vs TC avg
§102
10.3%
-29.7% vs TC avg
§112
20.5%
-19.5% vs TC avg
Black line = Tech Center average estimate • Based on career data

Office Action

§103
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 . Response to Election/Restrictions Applicant's election of Group I (claims 1-12 and 15-20) without traverse in the reply filed on 09/05/2025 is acknowledged. Claims 13 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims. Claims 1-12 and 15-20 are currently under examination. 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. 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. 1. Claims 1-8 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Aoki (JP 2005064281 A, hereinafter Aoki) in view of Yamada (US 2018/0291249 A1, hereinafter Yamada). Regarding claim 1, the instant invention discloses that the volatile solvent has a solubility parameter obtained by Fedors estimation method of 9.0 to 12.0 cal(½)/cm(3/2) (instant [0045]), examples of the volatile solvent satisfying the above-mentioned solubility parameter include methyl ethyl ketone, acetone, and butanol (instant [0047]). Aoki teaches ([0013]) a thermally conductive composition comprising: component (A) a thermoplastic silicone resin; component (B) aluminum powder having an average particle size of 1 to 50 μm; component (C) zinc oxide powder having an average particle size of 0.1 to 5 μm. The aluminum powder and zinc oxide powder in Aoki read on the claimed inorganic powder filler. Aoki teaches that the thermoplastic silicone resin can have a softening point in a range of 40 to 100°C, such as the thermoplastic silicone resin having a softening point of 40 to 50°C, and the thermoplastic silicone resin having a softening point of 90 to 100°C (para [0043]), which overlap with the claimed range of “50°C or more and 150°C or less”. Thus, the thermoplastic silicone resin of Aoki reads on the claimed thermoplastic resin. Aoki also teaches that a portion of the thermoplastic silicone resin is replaced with component (D) a silicone oil (para [0015]). Thus, the thermally conductive composition of Aoki comprises component (A) a thermoplastic silicone resin, and component (D) a silicone oil. The silicone oil of Aoki reads on the claimed base oil. Aoki teaches that the thermally conductive composition is a heat softening material ([0013]), and the thermally conductive composition is used as a thermal interface between a heat generating electronic component and a heat-dissipating component, such as a heat sink, for cooling the electronic component (para [0001]). Aoki does not teach that the thermally conductive composition comprises a volatile solvent, and the thermally conductive composition is a paste. However, Yamada teaches a thermosoftening and heat-conductive silicone grease composition which is used as a heat transfer material that is set at a thermal interface between a heat-generating electronic component and a heat-dissipating component such as a heat sink for cooling the electronic component ([0017]), and the thermosoftening and heat-conductive silicone grease composition is a paste ([0017]). Yamada teaches that the thermosoftening and heat-conductive silicone grease composition comprises: component (A) a silicone wax having a melting point of from 30 to 80° C ([0021]), which overlaps with the range of “40 to 100°C” of the softening point of the thermoplastic silicone resin in Aoki; component (C) a heat-conductive filler which can be aluminum powder, and/or zinc oxide powder ([0053]); and component (D) a volatile solvent ([0056]). Yamada teaches that component (D) a volatile solvent can be methyl ethyl ketone, acetone, and/or butanol ([0056]), which reads on the claimed volatile solvent having a solubility parameter obtained by Fedors estimation method of 9.0 to 12.0 cal(1/2)/cm(3/2). The court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. See MPEP 2112.01 II. "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." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I. Therefore, the property of having a solubility parameter obtained by Fedors estimation method of 9.0 to 12.0 cal(1/2)/cm(3/2) would be present in the identical compounds (methyl ethyl ketone, acetone, and butanol) as taught by Yamada. Yamada also teaches that component (D) the volatile solvent dissolves or disperses component (A) the silicone wax, and lowers the viscosity of the thermosoftening and heat-conductive silicone grease composition, and makes the screen printability better, therefore the composition is in the form of a paste at the time of application and can be easily and rapidly screen-printed, thereby improving the working efficiency ([0018], [0058]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make a heat-softening and thermally conductive composition comprising a thermoplastic silicone resin having a softening point in a range of 40 to 100°C, aluminum powder, zinc oxide powder, and a silicone oil as taught by Aoki, further comprising a volatile solvent such as methyl ethyl ketone as taught by Yamada, in order to reduce the viscosity of the composition, thereby improving the screen printability of the composition and improving the working efficiency with a reasonable expectation of success. Furthermore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect that the claimed property of the composition being a paste would flow naturally from the teaching of the combination of Aoki and Yamada, because the teaching of the combination of Aoki and Yamada provides substantially the same composition comprising the same inorganic powder filler, the same base oil, the same thermoplastic resin having a softening point of 50°C or more and 150°C or less, and the same volatile solvent having a solubility parameter obtained by Fedors estimation method of 9.0 to 12.0 cal(1/2)/cm(3/2) as claimed, and also because the volatile solvent reduce the viscosity of the composition, and makes the composition being in the form of a paste which can be easily and rapidly screen-printed as recognized by Yamada. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. Regarding claim 2, Aoki teaches that the heat-softening and thermally conductive composition comprises component (A) 100 parts by mass of a thermoplastic silicone resin (para [0013]), wherein the thermoplastic silicone resin can have a softening point in a range of 40 to 100°C, such as the thermoplastic silicone resin having a softening point of 40 to 50°C, and the thermoplastic silicone resin having a softening point of 90 to 100°C (para [0043]). Aoki also teaches that a portion of the thermoplastic silicone resin is replaced with 0 to 45 parts by mass of component (D) silicone oil (para [0015]). Thus, the thermally conductive composition of Aoki comprises component (A) 55-100 parts by mass of a thermoplastic silicone resin, and component (D) 45-0 parts by mass of silicone oil, wherein the total amount of the thermoplastic silicone resin and the silicone oil is 100 parts by mass. Furthermore, Yamada teaches that the thermosoftening and heat-conductive silicone grease composition comprises component (A) a silicone wax having a melting point of from 30 to 80° C ([0021]), and component (D) a volatile solvent ([0056]). Yamada also teaches that component (D) the volatile solvent is in an amount of 10 to 300 parts by weight per 100 parts by weight of component (A) the silicone wax ([0058]). Yamada further teaches that when the amount of the volatile solvent is less than 10 parts by weight per 100 parts by weight of component (A) the silicone wax, the viscosity at room temperature of the thermosoftening and heat-conductive silicone grease composition cannot be sufficiently lowered, as a result of which the printability will worsen; when the amount of the volatile solvent is more than 300 parts by weight, precipitation of the filler speeds up and the shelf life of the thermosoftening and heat-conductive silicone grease composition will worsen ([0058]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make a heat-softening and thermally conductive composition comprising a thermoplastic silicone resin having a softening point in a range of 40 to 100°C, aluminum powder, zinc oxide powder, and a silicone oil as taught by Aoki, further comprising a volatile solvent such as methyl ethyl ketone as taught by Yamada, wherein the volatile solvent is in an amount of 10 to 300 parts by weight per 100 parts by weight of the thermoplastic silicone resin. For doing so, it will reduce the viscosity of the composition and improve the screen printability of the composition, thereby improving the working efficiency, and also improve shelf life of the composition with a reasonable expectation of success. Therefore, in the composition as taught by Aoki and Yamada, the thermoplastic silicone resin is in an amount of 55-100 parts by mass, the silicone oil is in an amount of 45-0 parts by mass, the volatile solvent is in an amount of 10 to 300 parts by weight per 100 parts by weight of the thermoplastic silicone resin, wherein the total amount of the thermoplastic silicone resin and the silicone oil is 100 parts by mass. Thus, in the composition as taught by Aoki and Yamada, the volatile solvent can be in an amount of 12 to 366 parts by weight per 100 parts by weight of the silicone oil, which overlaps with the claimed range of “10 parts by mass or more and 200 parts by mass or less of the volatile solvent with respect to 100 parts by mass of the base oil”. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. Regarding claims 3, 4, and 15, Aoki teaches that a thermally conductive composition comprises component (B) aluminum powder having an average particle size of 1 to 50 μm, and component (C) zinc oxide powder having an average particle size of 0.1 to 5 μm (para [0013]). Aoki also teaches that component (B) aluminum powder can comprise component (B-2) aluminum powder having an average particle size of 22 μm, and component (B-3) aluminum powder having an average particle size of 1.5 μm (para [0043], [0047]; Table 1, Examples 5 and 6). Thus, component (B-2) aluminum powder having an average particle size of 22 μm in Aoki reads on the claimed first inorganic powder filler having an average particle diameter in a range of 10 µm or more and 100 µm or less. Component (B-3) aluminum powder having an average particle size of 1.5 μm in Aoki reads on the claimed second inorganic powder filler having an average particle diameter in a range of 1 µm or more and 50 µm or less. Component (C) zinc oxide powder having an average particle size of 0.1 to 5 μm in Aoki reads on the claimed third inorganic powder filler having an average particle diameter in a range of 0.1 µm or more and 5 µm or less. Aoki also teaches that component (C) zinc oxide powder can be zinc oxide powder having an average particle size of 0.5 μm (para [0043], [0047]; Table 1, Examples 5 and 6). Thus, in Aoki, the ratio of the average particle size of component (B-3) (the claimed second inorganic powder filler) to component (B-2) (the claimed first inorganic powder filler) is 0.07 (1.5/22), which falls within the claimed range of “D2/D1<0.70”. In Aoki, the ratio of the average particle size of component (C) (the claimed third inorganic powder filler) to component (B-3) (the claimed second inorganic powder filler) is 0.33 (0.5/1.5), which falls within the claimed range of “D3/D2<0.60”. Regarding claims 5 and 16, Aoki teaches that the thermally conductive composition of Example 6 comprises component (B-2) aluminum powder having an average particle size of 22 μm in an amount of 400 parts by mass, component (B-3) aluminum powder having an average particle size of 1.5 μm in an amount of 180 parts by mass, and component (C) zinc oxide powder having an average particle size of 0.5 μm in an amount of 140 parts by mass (para [0043], [0047]; Table 1, Example 6). Component (B-2) aluminum powder having an average particle size of 22 μm in Aoki reads on the claimed first inorganic powder filler having an average particle diameter in a range of 10 µm or more and 100 µm or less. Component (B-3) aluminum powder having an average particle size of 1.5 μm in Aoki reads on the claimed second inorganic powder filler having an average particle diameter in a range of 1 µm or more and 50 µm or less. Component (C) zinc oxide powder having an average particle size of 0.5 μm in Aoki reads on the claimed third inorganic powder filler having an average particle diameter in a range of 0.1 µm or more and 5 µm or less. Thus, in Example 6 of Aoki, with respect to 100 parts by mass of the total filler (the combination of aluminum powder and zinc oxide powder), component (B-2) aluminum powder having an average particle size of 22 μm (the claimed first inorganic powder filler) is in an amount of 56 parts by mass, which falls within the claimed range of “40 parts by mass or more and 80 parts by mass or less”; component (B-3) aluminum powder having an average particle size of 1.5 μm (the claimed second inorganic powder filler) is in an amount of 25 parts by mass, which falls within the claimed range of “10 parts by mass or more and 50 parts by mass or less”; component (C) zinc oxide powder having an average particle size of 0.5 μm (the claimed third inorganic powder filler) is in an amount of 19 parts by mass, which falls within the claimed range of “10 parts by mass or more and 40 parts by mass or less”. Regarding claims 6 and 17, Aoki teaches ([0013]) a thermally conductive composition comprising component (B) aluminum powder, and component (C) zinc oxide powder. Regarding claims 7 and 18, Aoki teaches a thermally conductive composition comprising: component (A) 100 parts by mass of a thermoplastic silicone resin; component (B) aluminum powder having an average particle size of 1 to 50 μm; component (C) zinc oxide powder having an average particle size of 0.1 to 5 μm; wherein a total amount of components (B) and (C) is 400 to 1,200 parts by mass (para [0013]). Aoki also teaches that a portion of the thermoplastic silicone resin is replaced with 0 to 45 parts by mass of component (D) silicone oil (para [0015]). Thus, the thermally conductive composition of Aoki comprises component (A) 55-100 parts by mass of a thermoplastic silicone resin, and component (D) 45-0 parts by mass of silicone oil, wherein the total amount of the thermoplastic silicone resin and the silicone oil is 100 parts by mass. Thus, in the thermally conductive composition of Aoki, the total amount of the silicone oil and the thermoplastic silicone resin is in an amount of 8.3 parts by mass or more and 25 parts by mass or less with respect to 100 parts by mass of the total amount of the aluminum powder and zinc oxide powder, which falls within the claimed range of “5.3 parts by mass or more and 33.3 parts by mass or less”. Regarding claims 8 and 19, as discussed in claim 7 above, the thermally conductive composition of Aoki comprises component (A) 55-100 parts by mass of a thermoplastic silicone resin, and component (D) 45-0 parts by mass of silicone oil, wherein the total amount of the thermoplastic silicone resin and the silicone oil is 100 parts by mass. Thus, in the thermally conductive composition of Aoki, with respect to 100 parts by mass of the silicone oil, the thermoplastic silicone resin is in an amount of 122 parts by mass or more, which overlap with the claimed range of “50 parts by mass or more and 200 parts by mass or less”. Furthermore, in Example 6 of Aoki, with respect to 100 parts by mass of the silicone oil, the thermoplastic silicone resin is in an amount of 186 parts by mass, which falls within the claimed range of “50 parts by mass or more and 200 parts by mass or less”. 2. Claims 9 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Aoki (JP 2005064281 A, hereinafter Aoki) in view of Yamada (US 2018/0291249 A1, hereinafter Yamada) as applied to claims 1-8 and 15-19 above, and further in view of Hiratsuka (US 2010/0065774 A1, hereinafter Hiratsuka). The disclosure of Aoki in view of Yamada is relied upon as set forth above. Regarding claims 9 and 20, Aoki teaches that a thermally conductive composition comprises inorganic powder filler including aluminum powder and zinc oxide powder, and silicone oil (para [0013], [0015]). Aoki also teaches that the thermally conductive composition is heat resistant (para [0011]), and the thermally conductive composition is used as a thermal interface between a heat generating electronic component and a heat-dissipating component, such as a heat sink, for cooling the electronic component (para [0001]). Aoki does not teach a mineral oil, a synthetic hydrocarbon oil, a diester, a polyol ester, or a phenyl ether. However, Hiratsuka teaches a highly thermal conductive compound comprising an inorganic powder filler, and a base oil (para [0009]), wherein the inorganic powder filler includes zinc oxide and/or aluminum (para [0014]). Hiratsuka teaches that the highly thermal conductive compound is used as a thermal interface material for power semiconductors, and improves heat-radiating ability of electronic devices which generate intense heat (para [0012]). Hiratsuka also teaches that the highly thermal conductive compound is applied to a heat generating part and hence is exposed to a high temperature for a long time; therefore, the base oil is desirably excellent in thermal oxidation stability (para [0031]). Hiratsuka further teaches that a synthetic hydrocarbon oil with excellence in thermal oxidation stability is preferably used as the base oil (para [0031]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the silicone oil as taught by Aoki with the synthetic hydrocarbon oil as taught by Hiratsuka, in order to improve the thermal oxidation stability of the thermally conductive composition with a reasonable expectation of success, because the synthetic hydrocarbon oil of Hiratsuka is excellent in thermal oxidation stability and is preferably used as a base oil in the thermal conductive composition, and the thermal conductive composition is used as a thermal interface material for a heat generating electronic component as recognized by Hiratsuka, and the silicone oil of Aoki is also used as a base oil for a thermal interface material as recognized by Aoki. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. 3. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Aoki (JP 2005064281 A, hereinafter Aoki) in view of Yamada (US 2018/0291249 A1, hereinafter Yamada) as applied to claims 1-8 and 15-19 above, and further in view of Sato (JP 2002020625 A, hereinafter Sato). The disclosure of Aoki in view of Yamada is relied upon as set forth above. Regarding claim 10, there isn’t an express intent in the specification to provide a definition of the term of “an ester resin”. Therefore, the term of “an ester resin” in claim 10 is interpreted as a thermoplastic resin containing an ester group as a broadest reasonable interpretation. Aoki teaches that a thermally conductive composition comprises a thermoplastic silicone resin, and inorganic powder filler including aluminum powder and zinc oxide powder (para [0013]). Aoki teaches that the thermally conductive composition is used as a thermal interface between a heat generating electronic component and a heat-dissipating component, such as a heat sink, for cooling the electronic component (para [0001]). Aoki also teaches that the thermoplastic silicone resin can have a softening point in a range of 40 to 100°C, such as the thermoplastic silicone resin having a softening point of 40 to 50°C, and the thermoplastic silicone resin having a softening point of 90 to 100°C (para [0043]), thus, the thermally conductive composition softens at a temperature of 40 to 100°C due to heat generated when the electronic component operates, thereby substantially filling the boundary between the electronic component and the heat-dissipating component (para [0012]). Aoki further teaches that the thermoplastic silicone resin that serves as the matrix of the thermally conductive composition can be any resin, so long as the thermally conductive member (composition) is substantially solid (non-fluid) at room temperature, and is heat-softened, reduces its viscosity, or melts and becomes fluid at temperatures above 40°C but below the maximum temperature reached by heat generation in heat-generating electronic components, specifically in the temperature range of about 40 to 100°C (para [0019]). Aoki does not teach the thermoplastic resin including at least one or more resins selected from an ester resin, an acrylic resin, a rosin resin, and a cellulose resin. However, Sato teaches a highly thermally conductive composition comprising a powder filler, and a thermoplastic resin that softens at 40 to 100°C ([0012]), wherein the powder filler can be zinc oxide ([0023]), and the thermoplastic resin softening at 40 to 100°C includes an ethylene-vinyl acetate copolymer ([0017]), which reads on the claimed ester resin. Sato also teaches that the highly thermally conductive composition is molded into a heat dissipation member, and the heat dissipation member is interposed between the heat generating electronic component and the heat radiating fin ([0012]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to replace the thermoplastic silicone resin having a softening point of 40 to 100°C as taught by Aoki with the ethylene-vinyl acetate copolymer as taught by Sato, in order to make the thermally conductive composition being softened at a temperature of 40 to 100°C due to heat generated by the electronic component, thereby substantially filling the boundary between the electronic component and the heat dissipating component with a reasonable expectation of success, because the ethylene-vinyl acetate copolymer is a thermoplastic resin softening at 40 to 100°C, and is used in a thermally conductive composition which is interposed between the heat generating electronic component and the heat radiating fin as recognized by Sato. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. 4. Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Aoki (JP 2005064281 A, hereinafter Aoki) in view of Yamada (US 2018/0291249 A1, hereinafter Yamada) as applied to claims 1-8 and 15-19 above, and further in view of Falkner (US 2014/0020886 A1, hereinafter Falkner), as evidenced by “Silicone oil property” (“Silicone oil property from Chemical Book”, 2018, hereinafter “Silicone oil property”), “Aluminum oxide property” (“Aluminum oxide property from Accuratus”, 2018, hereinafter “Aluminum oxide property”), and “Bentonite property” (“Bentonite property from Chemical Book”, 2018, hereinafter “Bentonite property”). The disclosure of Aoki in view of Yamada is relied upon as set forth above. Regarding claims 11 and 12, Aoki teaches that a thermally conductive composition comprises a thermoplastic silicone resin, fillers including aluminum powder and zinc oxide powder, and silicone oil (para [0013], [0015]). Aoki also teaches that the thermally conductive composition comprises a thixotropy improver (para [0038]). Aoki does not teach that the thixotropy adjusting agent contains at least one or more types selected from bentonite, mica, kaolin, sepiolite, saponite, and hectorite; and the thixotropy adjusting agent is in an amount 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. However, Falkner teaches a lubricant fluid composition comprising a base oil fluid medium, a thermally conductive filler, and a thixotropic shear thinning viscosifier (abstract, claim 1), wherein the base oil fluid medium can be silicone oil (para [0018]), the thermally conductive filler can be aluminum oxide (para [0022]), and the thixotropic shear thinning viscosifier (i.e. thixotropic agent) can be bentonite (para [0023]), which reads on the claimed thixotropy adjusting agent. Falkner also teaches that the thixotropic shear thinning viscosifier (i.e. thixotropic agent) is in an amount of about 0.1% to about 10% by volume relative to the lubricant fluid composition (para [0023]), and the thermally conductive filler is in an amount of about 1% to about 20% by volume relative to the lubricant fluid composition (para [0022]). “Silicone oil property” as an evidentiary reference shows that the silicone oil has a density of 0.963 g/ml (p. 1, § Silicone oil Properties), equaling to 0.963 g/cm3. “Aluminum oxide property” as an evidentiary reference shows that the aluminum oxide has a density of 3.89 gm/cc (p. 2, § 99.5% Aluminum Oxide), equaling to 3.89 g/cm3. “Bentonite property” as an evidentiary reference shows that the bentonite has a density of 2-3 g/cm3 (p. 1, § Bentonite Properties). Thus, in the lubricant fluid composition of Falkner, the thixotropic shear thinning viscosifier such as bentonite can be in an amount of 0.3 parts by mass to 37 parts by mass with respect to 100 parts by mass of the base oil such as silicone oil, which overlaps with the claimed range of “1 part by mass or more and 10 parts by mass or less”. Furthermore, Falkner teaches that the thixotropic shear thinning viscosifier causes the lubricant fluid composition to gel when at rest, thereby substantially prevents settling and sedimentation of the filler particles when the fluid composition is at rest (para [0010]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the thixotropic shear thinning viscosifier such as bentonite as taught by Falkner as the thixotropy improver in Aoki, wherein the thixotropic shear thinning viscosifier such as bentonite is in an amount of 0.3 parts by mass to 37 parts by mass with respect to 100 parts by mass of the base oil such as silicone oil. For doing so, the thixotropic shear thinning viscosifier such as bentonite will prevent settling and sedimentation of the filler particles when the composition is at rest with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIAJIA JANIE CAI whose telephone number is 571-270-0951. The examiner can normally be reached Monday-Friday 8:30 am - 5:00 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, Angela Brown-Pettigrew can be reached on 571-272-2817. 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. /JIAJIA JANIE CAI/Examiner, Art Unit 1761 /ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
Read full office action

Prosecution Timeline

Sep 09, 2022
Application Filed
Sep 26, 2025
Non-Final Rejection — §103
Apr 07, 2026
Response after Non-Final Action

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Prosecution Projections

1-2
Expected OA Rounds
24%
Grant Probability
41%
With Interview (+16.8%)
3y 4m
Median Time to Grant
Low
PTA Risk
Based on 37 resolved cases by this examiner