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 .
The amendment filed 10/31/2025 has been entered. Claim 3 has been canceled. Claims 1-2 and 4-18 are pending in the application. Claims 8-13 and 15-18 have been withdrawn from consideration as being directed to nonelected inventions. Applicant timely traversed the restriction requirement in the reply filed on 7/14/2025. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 4 has been amended to recite, “The mixture of claim 1, wherein the mixture comprise less than or equal to 25% UV transparent platelets by weight,” however, given the absence of “the” or “said” before “UV transparent platelets” on line 2, it is unclear as to whether the “less than or equal to 25%” refers to “the” (or “said”) “UV transparent platelets” as recited in claim 1 that are “made of a platelet material, the platelet material comprising synthetic fluorine mica platelets, each platelet having an aspect ratio between 9 and 48” or to any or all UV transparent platelets present in the mixture given that the mixture, drafted in open transitional language (i.e., comprising) may further include UV transparent platelets that are not formed from “the platelet material comprising synthetic fluorine mica platelets” and/or do not have an aspect ratio between 9 and 48. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
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 14 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 14 recites, “The mixture of claim 2, wherein the platelet material of the UV transparent platelets comprises synthetic fluorine mica platelets,” however, given that claim 1 upon which claim 14 ultimately depends, has been amended to recite “the platelet material comprising synthetic fluorine mica platelets, claim 14 does not further limit claim 2. 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 § 102
Claims 1, 2, 4, 5, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tono (JPH1077308A, please refer to the attached machine translation for the below cited sections). Tono discloses a flame-retardant photopolymerizable composition comprising 100 parts by weight of a monomer mixture of (a) one or more (meth)acrylic ester monomers having an alkyl group of 1 to 12 carbon atoms and (b) one or more monomers having a polar group and copolymerizable with (a); 3 to 20 parts by weight of a compound (c) copolymerizable with monomers (a) and (b) and containing a phosphorus element; 0.01 to 5 parts by weight of a photopolymerization initiator (d); and at least one filler selected from (e1) to (e9), with (e5) being flat fine particles having an aspect ratio of 20 to 40 (falling within the claimed range of “between 9 and 48”), preferably present in a content of 1 to 20 parts by weight per 100 parts by weight of the mixture of monomers (a) and (b); wherein the photopolymerizable composition may be cured to produce a crosslinked flame-retardant adhesive tape suitable for use in joining operations (Entire document, particularly Paragraphs 0001-0002, 0007, 0018, 0028, 0049, and 0052). Tono discloses that the flat fine particles (e5) are preferably synthetic mica such as potassium fluorine mica and sodium fluorine mica, noting that (natural) mica such as muscovite and phlogopite is highly colored and inhibits light transmission and thus is not preferable when polymerization is carried out by light irradiation, while synthetic mica has high light transmittance and thus is preferably for use in the invention (Paragraph 0027), with a working example (Example 12) specifically utilizing 50 g of synthetic mica having an aspect ratio of 30 available under the product/trade name “Synthetic Mica MK-100” manufactured by Co-op Chemical Co., Ltd. (reading upon the claimed “UV transparent platelets made of a platelet material…comprising synthetic fluorine mica platelets, each platelet having an aspect ratio between 9 and 48” as in instant claim 1), to 1000 g of monomers (a) and (b) (reading upon the claimed “mixture comprises less than or equal to 25% UV transparent platelets by weight” as in instant claim 4), with only electrically insulative components incorporated therein (Paragraphs 0056-0058 and 0069); and given that Tono discloses that photopolymerization may be conducted by irradiation of light at a wavelength of usually 365 nm to 420 nm (Paragraphs 0045-0046), and that the composition may further comprise a crosslinking agent and/or curing agent as evidenced by the examples (Entire document, particularly as noted above and Examples), the Examiner takes the position that the photopolymerizable composition disclosed by Tono anticipates the claimed “electrical insulation mixture” as recited in instant claims 1 and 4, as well as instant claims 2, 5, and 14 given that said properties as recited in instant claims 2 and 5 would be inherent to the synthetic fluorine mica disclosed by Tono (see also the attached Katakura & Co-op Agri Corporation “Inorganic Material Business” webpage, hereinafter referred to as “Katakura”, particularly refer to the figure on page 2 showing the crystalline molecular structure of the synthetic mica, and the table bridging pages 2-3 showing a specific gravity for MK-100 of 2.7 in the fourth row under the “MK-100” header and an aspect ratio of “30~50” in the eighth row under the header).
Claims 1, 2, 4, 5, 7, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harima (JP2019174787A, please refer to the attached machine translation for the below cited sections). Harima discloses a photosensitive resin composition curable by active energy ray irradiation, particularly ultraviolet rays in the range of 350 to 450 nm (Paragraph 0090), comprising a carboxyl group-containing resin, at least one of talc and mica, a di- or higher functional (meth)acrylate having an isocyanuric ring, an epoxy resin, and a photopolymerization initiator (hence “an ultraviolet (UV) curable thermoset resin and a filler” as in instant claim 1); wherein the photosensitive composition can provide a cured coating having good heat resistance, alkali resistance, and electrical insulation, and is particularly suitable for use in forming a cured film on a printed circuit board and can be used as an interlayer insulating material (Paragraphs 0049 and 0080). Harima discloses that the mica may be either swellable or non-swellable, and either synthetic or non-synthetic (Paragraph 0041), wherein the photosensitive resin composition preferably contains (synthetic) fluorine-containing mica as the mica (Paragraphs 0012 and 0041, inherently UV transparent) from the standpoint of heat resistance and thermal cycle resistance (Paragraph 0041). Harima discloses that the average particle size (D50) of the mica is preferably 0.1 µm to 500 µm, and more preferably 1 µm to 300 µm, from the standpoint of improved dispersibility of the mica in the photosensitive resin composition (Paragraph 0042), and although Harima does not specifically limit the aspect ratio of the mica, given that Harima specifically discloses working examples utilizing a synthetic fluorine mica commercially available under the trade name “MK-100” manufactured by Katakura Co-op Agri Co., Ltd., which inherently has an aspect ratio within the claimed range and is inherently UV transparent (as evidenced by Tono, which is discussed in detail above, see particularly Paragraphs 0027 and 0069, and/or Katakura), the Examiner takes the position that Harima anticipates instant claim 1 as well as instant claims 2, 5, and 14 given that said properties as recited in instant claims 2 and 5 would be inherent to the synthetic fluorine mica disclosed by Harima (Entire document, particularly Examples, particularly 3-1 to 3-4, 3-6, 3-7, 4-1 to 4-4, 4-6 to 4-8, Table 3, Paragraphs 0106 and 0109-0110).
With respect to instant claims 4 and 7, Harima discloses that the amount of mica blended in the photosensitive resin composition is preferably 1 to 200 parts by mass, more preferably 10 to 150 parts by mass, based on 100 parts by mass of the carboxyl group-containing resin, calculated as solid content (Paragraph 0043), and given that Harima discloses working examples wherein the MK-100 mica is present in the total resin composition, as the claimed “mixture”, in a content of less than 25% by weight as in instant claim 4, as well as working examples wherein based upon densities of the mica and resin(s), the synthetic fluorine mica is present in an amount such that a volume fraction thereof with respect to the carboxyl group-containing resin and/or the epoxy resin as the claimed “thermoset resin” falls within the claimed “between 20% to 80% by volume as in instant claim 7 (Examples, Tables 3 and 4). Hence, Harima anticipates instant claims 4 and 7.
Claims 1, 2, 4, 5, and 14 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Suzuki (WO2017135158A1, also printed as US2020/0165453A1, please refer to the US document as an English translation of the WIPO document for the below cited sections). Suzuki discloses a thermally conductive member having excellent thermal resistance and insulating properties produced from a photocuring/thermosetting silicone resin mixture comprising a thermally conductive filler having a larger particle diameter, a thermally conductive filler having a smaller particle diameter, and mica having a flat shape with a particle diameter of not greater than 10 µm and an aspect ratio of not greater than 50, present in a ratio of from 0.9 to 11 parts by mass relative to 100 parts by mass of the silicone resin (reading upon the claimed less than or equal to 25% by weight as in instant claim 4), wherein when “the silicone resin is a photocuring silicone resin, the mixture is irradiated with an active energy ray such as ultraviolet light in the curing step” (Abstract, Paragraphs 0015-0016, 0027-0029, and 0035). Suzuki discloses that examples of the mica include commercially available mica sold under the trade names “SJ-005” (a natural mica of muscovite) from Yamaguchi Mica Co., Ltd., which has a particle diameter of 5 µm and an aspect ratio of 20, as utilized in the working examples; “SJ-010” and “A-11” also available from Yamaguchi Mica Co., Ltd.; and “MK-100” having a particle size of 4.5 µm and an aspect ratio of 40 available from Katakura & Co-op Agri Corporation (a synthetic fluorine mica as evidenced by Tono and/or Harima and/or Katakura as discussed above), with the MK-100 mica reading upon the claimed “UV transparent platelets made of a platelet material, the platelet material comprising synthetic fluorine mica platelets, each platelet having an aspect ratio between 9 and 48” as in instant claim 1 (Paragraph 0031, wherein it is evident that the recitation to “silicon carbide” at the beginning of Paragraph 0031 should have read “mica” given that all of the commercially available materials listed in Paragraph 0031 are micas, that the discussion in the paragraphs previous to Paragraph 0031 are directed to the mica particles, and that examples of commercially available silicone carbide are already recited in Paragraph 0023). Hence, the Examiner takes the position that Suzuki discloses the claimed invention with sufficient specificity to anticipate instant claims 1 and 4 as well as instant claims 2, 5, and 14 given that said properties as recited in instant claims 2 and 5 would be inherent to the MK-100 synthetic fluorine mica disclosed by Suzuki.
Claim Rejections - 35 USC § 103
Alternatively, claims 1, 2, 4, 5, and 14 as well as claim 6 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki as applied above to claims 1, 2, 4, 5, and 14, and further discussed below.
The teachings of Suzuki are discussed in detail above and although the Examiner is of the position that the reference is anticipatory with respect to instant claims 1, 2, 4, 5, and 14 for the reasons discussed above wherein Suzuki clearly teaches “MK-100” having an aspect ratio of 40 available from Katakura & Co-op Agri Corporation, i.e., synthetic fluorine mica platelet platelets that are UV transparent and have properties as claimed, as the flat-shaped mica to be utilized in the photocurable silicone resin composition in a ratio of from 0.9 to 11 parts by mass relative to 100 parts by mass of the silicone resin, the Examiner alternatively takes the position that the claimed invention as recited in instant claims 1, 2, 4, 5, and 14 would have been obvious over the teachings of Suzuki, given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Further, with respect to instant claim 6, Suzuki discloses that the thermally conductive member has excellent dielectric breakdown strength even under a high-temperature condition, wherein “[s]pecifically, the dielectric breakdown strength obtained after a high-temperature acceleration test in which the thermally conductive member is left under a temperature condition of 275° C. for 100 hours is not less than 5 kV/mm” (Paragraph 0037), thus teaching an open-ended range encompassing and thereby rendering obvious the claimed more than 17 kV/mm as recited in instant claim 6; and given that as evident from the working examples, the filler type and content can be selected to provide the desired thermal and/or electrical properties for a particular end use, including dielectric breakdown strength (Examples), the Examiner takes the position that the claimed invention as recited in instant claim 6 would have obvious over the teachings of Suzuki.
Claims 1, 2, 4-7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over McAloon (USPN 6,001,298). As discussed in the prior office action, McAloon teaches a photocurable composition comprising an ultraviolet (UV) transparent filler (Abstract) dispersed in a photocurable thermoset resin, preferably curable by UV light, especially comprising multifunctional (meth)acrylates (Col. 3, line 5-Col. 4, line 37; Examples), wherein the photocurable composition preferably contains from 1% to 70% (encompassing the majority of the weight percentage range as recited in instant claim 4 and volume percent range as in instant claim 7 particularly in light of the resin content and preferred photocurable composition), more preferably 9% to 60%, especially 10% to 40% by weight of the UV transparent filler (overlapping the claimed range of instant claim 4) which is transparent at a light of wavelength 325 nm (as in instant claim 1; Entire document, particularly as above and Col. 1, line 65-Col. 2, line 12; Col. 4, lines 23-37). McAloon specifically recites that the “preferred U.V. transparent inorganic fillers are in the form of platelets” (emphasis added), wherein the “platelets preferably have a length at their longest point of 0.1 µm to 100 µm, more preferably 0.5 to 80 µm, especially 1 to 50 µm” and “[p]referably the width of the platelets is about the same as the length” (Col. 2, lines 18-23). McAloon teaches that a “preferred aspect ratio for the platelets is 1 to 4, more preferably 1 to 10, especially 1 to 5” (emphasis added), wherein the Examiner takes the position that one skilled in the art would clearly recognize that the recited “preferred”, “more preferably” and “especially” are each separate preferred ranges for the aspect ratio of the platelets, particularly in light of the similar terminology utilized with respect to preferred ranges for the length, such that the “more preferably” aspect ratio range of 1 to 10 overlaps the claimed “between 9 and 48” as recited in amended claim 1 thereby rendering the claimed “between 9 and 48” range obvious over the teachings of McAloon given that per MPEP § 2144.05, a prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art.
McAloon teaches preferred examples of the UV transparent filler in Col. 2, lines 30-48, “especially mica” with examples thereof including fluorophlogopite (i.e., synthetic fluorine mica platelets as in instant claims 1 and 14, also reading upon the claimed “solid platelets having a predominantly crystalline molecular structure with a density above 2 g/cm^3” as recited in instant claim 2 given that such synthetic mica would exhibit a structure and density as claimed; Col. 2, lines 1-47; Col. 5, lines 5-6); and given the preferred photocurable composition as recited in Col. 4, lines 23-37 (reading upon the claimed “mixture” with the UV transparent filler content reading upon the claimed % by weight and volume contents as in instant claims 4 and 7, respectively) and specific working examples taught by McAloon comprising UV curable compositions comprising UV transparent filler platelets as in instant claim 4, the Examiner takes the position that the claimed invention as recited in amended claims 1, 2, 4, 7 and 14 would have been obvious over the teachings of McAloon.
With respect to instant claims 5-6, the Examiner takes the position that the mica platelet material, particularly fluorophlogopite, and photocurable composition as taught by McAloon would exhibit dielectric strengths within the claimed open-end ranges, particularly when measured under some arbitrary conditions utilizing some arbitrary method, and hence the Examiner takes the position that the claimed invention as recited in instant claims 5-6 would have been obvious over McAloon.
Response to Arguments
Applicant's arguments filed 10/31/2025 have been fully considered but they are not persuasive and/or moot in view of the new grounds of rejection above and the additional remarks above with respect to the teachings of McAloon as applied to the amended claims. Specifically, the Applicant argues that with respect to the claimed aspect ratio and the teachings of McAloon:
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However, the Examiner respectfully disagrees with Applicant’s interpretation of the teachings of McAloon given that one skilled in the art would clearly understand the three sets of preferred aspect ratios for the “platelets” as taught by McAloon to be ranges and not individual ratios of length (or width):height (or depth) as argued by the Applicant, i.e., a range of 1-4 and not a ratio of 1:4, given that based upon Applicant’s interpretation the filler particles would be in a rod-like or needle-like shape, not in the form of platelets as specifically taught by McAloon. For example, if the “more preferably 1 to 10” ratio taught by McAloon is a “1:10” ratio of the length/width of the filler to the height/depth of the filler as alleged by the Applicant such that the height/depth is allegedly 10 times greater than the length/width, with the length and width being “about the same” as specifically taught by McAloon (Col. 2, lines 18-24), the inorganic fillers would look like the image on the left below, while the Examiner’s interpretation (which would be consistent with the interpretation by one skilled in the art in light of the “in the form of platelets” recitation of McAloon) is represented by the image on the right below.
[AltContent: ]1:1:10 – L:W:H
[AltContent: ]10:10:1 – L:W:H
Hence, Applicant’s arguments over McAloon with respect to the instantly claimed aspect ratio as added to amended claim 1 are not persuasive, and the Examiner takes the position that the claimed invention as recited in amended claims 1, 2, 4-7 and 14 would have been obvious over the teachings of McAloon as discussed in detail above, particularly given that a prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (see MPEP § 2144.05).
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 10/31/2025.
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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787