DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/14/2026 has been entered.
3. Claims 1, 4-7, 10-15, 17-21 are pending. Claims 1, 4-7, 10-15, 17-21 are under examination on the merits. Claims 1, 4, 18-19 are amended. Claim 16 is cancelled. Claim 21 is newly added. Claims 2-3, 8-9 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 05/14/2026 have been fully considered but they are not persuasive, thus claims 1, 4-7, 10-15, 17-21 stand rejected as set forth in Office action dated 11/14/2026 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 112
6. The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
7. Claims 1, 4-7, 10-15, 17-21 are 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 pre-AIA the applicant regards as the invention. Claim 1 recites “a viscous liquid”, wherein applicant fails to articulate by sufficiently distinct functional language, applicant regards as those which will facilitate “a viscous liquid” requisite to identifying the viscosity of the thermal interface material at the room temperature or matter claimed, thus claim 1 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim from the application disclosure. Claims 4-7, 10-15, 17-21 being depended on claim 1 are rejected as well.
8. Claims 1, 4-7, 10-15, 17-21 are 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 pre-AIA the applicant regards as the invention. Claim 1 recites the term “(-SiR1n1R23n-n1), and (-Y-SiR85n2R863n-n2)”, wherein, the inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the included term is part of the claimed invention. Claims 4-7, 10-15, 17-21 being depended on claim 1 are rejected as well.
9. Claims 9-20 are 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 pre-AIA the applicant regards as the invention. Claim 19 recites the term “(-SiR1n1R23n-n1), and (-Y-SiR85n2R863n-n2)”, wherein, the inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the included term is part of the claimed invention. Claim 20 is being depended on claim 19 is rejected as well.
Claim Rejections - 35 USC § 103
10. 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.
11 Claims 1, 4-7, 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yasuda et al. (JP 2019-102654 A, machine translation, hereinafter “’654”) in view of Ishii et al. (US Pub. No. 2019/0031828 A1, hereinafter “’828”) and Koshikawa et al. (JP 2017-190389 A, machine translation, hereinafter “’389”).
Regarding claim 1: ‘654 teaches a low outgas high temperature thermal interface material as a heat dissipation sheet (Page 6/16, [0004]; Page 7/16, [0011]) comprising: a heat conductive material (Page 8/16, [0021]), dispersed within a perfluoropolyether (PFPE) fluid (Page 7/16, [0013]-[0014]), wherein the heat conductive material comprises a plurality of heat conductive particles, wherein the surface of the plurality of heat conductive particles is modified with a fluorine containing surface treatment agent (Page 8/16, [0021]), wherein the surface treatment agent is covalently bound to the surface of the heat conductive particles and wherein the surface treatment agent comprises a PFPE moiety (Page 8/16, [0021]), and wherein the thermal interface material comprises 73% heat conductive material by weight (Page 9/16, [0023]; Page 12/16, [0041], Example 3), wherein the thermal interface material is a viscous liquid (Page 9/16, [0026]; Page 12/16, [0039], Example 1). ‘654 does not expressly teach i) the fluorine containing surface treatment agent is a compound selected from the group consisting of (A1), (A2), (B1), (B2), (C1), (C2), (D1), and (D2), and ii) the thermal interface material comprises between 85% and 90% heat conductive material by weight,
Referring to i), however ‘828 teaches a surface-treating agent containing (1) at least one perfluoro (poly)ether group containing silane compound of any of the formulae (A1), (A2), (B1), (B2), (C1), (C2), (D1) and (D2) as set forth below (Page 1, [0012]) with benefit of providing the surface treating agent comprising a perfluoro(poly)ether group containing silane compound which is able to form a layer having water-repellency, oil-repellency and antifouling property, waterproof property as well as high friction durability, high surface slip property and high transparency (Page 1, [0009]).
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Referring to ii), ‘389 teaches a thermal conductive fluorine-containing adhesive composition capable comprising (D)100 to 4000 parts by mass of a thermally conductive filler (i.e. the thermal interface material comprises between 83% heat conductive material by weight, Page 58/62, [0147], Table 1, Example 4), and (E) 0.01 to 300 parts by mass of a fluorine-containing organosilicon compound having one or more monovalent perfluoroalkyl groups or monovalent perfluorooxyalkyl groups in one molecule, further having one or more alkoxy groups directly bonded to a silicon atom, and not having an epoxy group and a hydrogen atom directly bonded to a silicon atom (SiH group) in the molecule (Page 3/62, Claim 1; Page 12/62, [0014]) with benefit of providing thermally conductive fluorine-containing adhesive composition which can be highly filled with a thermally conductive filler, is excellent in oil resistance and thermal conductivity, and gives a cured product firmly adhering to various substrates such as metals and plastics, and an electric/electronic component using the same (Page 11/62, [0012]).
In an analogous art of the heat-conductive fluorinated curable composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the fluorine containing surface treatment agent by ‘654, so as to include the fluorine containing surface treatment agent is a compound selected from the group consisting of (A1), (A2), (B1), (B2), (C1), (C2), (D1), and (D2) as set forth as taught by ‘828 and would have been motivated to do so with reasonable expectation that this would result in providing the surface treating agent comprising a perfluoro(poly)ether group containing silane compound which is able to form a layer having water-repellency, oil-repellency and antifouling property, waterproof property as well as high friction durability, high surface slip property and high transparency suggested by ‘828 (Pahe 1, [0009]).
In an analogous art of the heat-conductive fluorinated curable composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the amount of heat conductive particles by ‘469, so as to include the thermal interface material comprises between 85% and 90% heat conductive material by weight, preferably the thermal interface material comprises at least 85% heat conductive particles by weight as taught by ‘389 and would have been motivated to do so with reasonable expectation that this would result in providing thermally conductive fluorine-containing adhesive composition which can be highly filled with a thermally conductive filler, is excellent in oil resistance and thermal conductivity, and gives a cured product firmly adhering to various substrates as suggested by ‘389 (Page 11/62, [0012]).
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05)
Regarding claim 4: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the thermal interface material comprises 15% PFPE fluid by weight (Page 8/16, [0017]).
Regarding claim 5: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the thermal interface material loses less than about 1% of total mass during ASTM D972 or ASTM D2595 protocol testing (Page 11/16, [0036]).
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 6: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the thermal interface material outgasses less than 0.6% of total mass after 72 hours of exposure to a temperature of at least 200°C (Page 8/16, [0019]).
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 7: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the thermal interface material is a liquid (Page 6/16, [0006]; Page 7/11, [0011]-[0012]).
Regarding claim 10: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the surface treatment agent is covalently bound to the heat conductive particle (Page 9/16, [0025]; Page 12/16, [0041], Example 3) .
Regarding claim 11: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the PFPE fluid such as Fomblin M30 (Pages 11-12/16, [0039]) has a molecular weight between 16,000 g/mol.
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Regarding claim 12: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the PFPE fluid has a viscosity of at least 50 cSt and the thermal interface material is a paste (Pages 9-10/16, [0026]).
Regarding claim 13: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the heat conductive particles are selected from the group consisting of SiC, BeO, Cu2O, AIN, BN, Si3N4, MgO, ZnO, Al2O3, SiO2, Al2TiO5, CF, MgF2, AIF3, CuF2, and ZnF2 (Page 8/16, [0021]).
Regarding claim 14: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the heat conductive particles are non-magnetic (Page 8/16, [0021]).
Regarding claim 15: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the heat conductive particles are less than 100 µm in size (Page 9/16, [0023]; Page 12/16, [0041], Example 3) .
Regarding claim 17: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the thermal interface material is applied to a solid heat conductive film to form a thermal interface film (Page 6/16, [0007]).
Regarding claim 18: The disclosure of ‘654 in view of ‘828 or ‘389 is adequately set forth in paragraph above and is incorporated herein by reference. ‘389 teaches a method of making a thermal interface material as a thermal conductive fluorine-containing adhesive composition (Page 2, Abstract) comprising the steps of: obtaining a plurality of non-magnetic heat conductive particles, wherein the heat conductive particles are less than 100 µm in size and are selected from the group consisting of Mg, MgO, Zn, and ZnO as D component (Pages 11-13/62, [0014]); obtaining a perfluoropolyether fluid, wherein the perfluoropolyether fluid has a molecular weight between about 1,500 and about 30,000 g/mol (Pages 11-13/62, [0014]); modifying the heat conductive particles by covalently bonding a surface treatment agent to the surface of the heat conductive particles wherein the surface treatment agent comprises a perfluoropolyether moiety (Page11/62, [0013]); and dispersing the modified heat conductive particles within the perfluoropolyether fluid to form a thermal interface material wherein the thermal interface material comprises at least 80% heat conductive particles by weight (Page 3/62, Claim 1; Page 12/62, [0014]) with benefit of providing thermally conductive fluorine-containing adhesive composition which can be highly filled with a thermally conductive filler, is excellent in oil resistance and thermal conductivity, and gives a cured product firmly adhering to various substrates such as metals and plastics, and an electric/ electronic component using the same (Page 11/62, [0012]).
In an analogous art of the heat-conductive fluorinated curable composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the method of making a heat transfer composition by ‘654, so as to include a method of making a thermal conductive fluorine adhesive composition as taught by ‘389, and would have been motivated to do so with reasonable expectation that this would result in providing thermally conductive fluorine-containing adhesive composition which can be highly filled with a thermally conductive filler, is excellent in oil resistance and thermal conductivity, and gives a cured product firmly adhering to various substrates as suggested by ‘389 (Page 11/62, [0013]).
Regarding claims 19-20: The disclosure of ‘654 in view of ‘828 or ‘389 is adequately set forth in paragraph above and is incorporated herein by reference. ‘389 teaches a method of making a thermal interface material as a thermal conductive fluorine-containing adhesive composition (Page 2, Abstract) comprising the steps of: obtaining a plurality of non-magnetic heat conductive particles (Pages 11-13/62, [0014]); obtaining a fluorine containing fluid (Pages 11-13/62, [0014]); obtaining a surface treatment agent comprising a fluorine containing group and a hydrolizable silane group (Page11/62, [0013]); blending the surface treatment agent with the fluorine containing fluid; adding the heat conductive particles to the blended fluorine containing fluid and surface treatment agent; modifying the heat conductive particles by covalently bonding the surface treatment agent to the surface of the heat conductive particles (Page11/62, [0013]); and dispersing the modified heat conductive particles within the fluorine containing fluid to form a thermal interface material, wherein the fluorine containing fluid is a PFPE fluid (Page 3/62, Claim 1; Page 12/62, [0014]) with benefit of providing thermally conductive fluorine-containing adhesive composition which can be highly filled with a thermally conductive filler, is excellent in oil resistance and thermal conductivity, and gives a cured product firmly adhering to various substrates such as metals and plastics, and an electric/ electronic component using the same (Page 11/62, [0012]).
In an analogous art of the heat-conductive fluorinated curable composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the method of making a heat transfer composition by ‘654, so as to include a method of making a thermal conductive fluorine adhesive composition as taught by ‘389, and would have been motivated to do so with reasonable expectation that this would result in providing thermally conductive fluorine-containing adhesive composition which can be highly filled with a thermally conductive filler, is excellent in oil resistance and thermal conductivity, and gives a cured product firmly adhering to various substrates as suggested by ‘389 (Page 11/62, [0013]).
Regarding claim 20: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the fluorine containing fluid is a PFPE fluid (Page 3/16, Claim 1; Page 7/16, [0013]-[0014]),
Regarding claim 20: ‘654 teaches the low outgas high temperature thermal interface material (Page 6/16, [0004]), wherein the heat conductive particles are less than 50 µm in size (Page 9/16, [0026]). ‘389 teaches the thermal conductive fluorine-containing adhesive composition, wherein the heat conductive particles are less than 50 µm in size (Page 36/62, [0074]).
Response to Arguments
12. Applicant's arguments filed 05/14/2026 have been fully considered but they are not persuasive,
In response to Applicant’s argument that ’654 is intended for producing the heat dissipation sheet. In contrast, claim 1 requires that the low-outgas high-temperature thermal interface material be in the form of a liquid, viscous liquid, liquid dispersion, or paste, not a sheet.
The examiner respectfully disagree. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). ‘654 teaches the thermal interface material is a viscous liquid (i.e., a coating composition, Page 9/16, [0026]; Page 12/16, [0039], Example 1).
In response to Applicant’s argument that ’654 is at most 75 wt%, and there is no disclosure of the high filler loading of 85-90 wt% required by amended claim 1. Accordingly, there is no reasonable motivation to modify '654 in view of '389 by increasing the filler loading in a manner that would impair the coatability and processability sought by '654.
The examiner respectfully disagree. It is submitted that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993). ’654 does not expressly teach the thermal interface material comprises between 85% and 90% heat conductive material by weight.
However, ‘389 teaches a thermal conductive fluorine-containing adhesive composition capable comprising (D)100 to 4000 parts by mass of a thermally conductive filler (i.e. the thermal interface material comprises between 83% heat conductive material by weight, Page 58/62, [0147], Table 1, Example 4), and (E) 0.01 to 300 parts by mass of a fluorine-containing organosilicon compound having one or more monovalent perfluoroalkyl groups or monovalent perfluorooxyalkyl groups in one molecule, further having one or more alkoxy groups directly bonded to a silicon atom, and not having an epoxy group and a hydrogen atom directly bonded to a silicon atom (SiH group) in the molecule (Page 3/62, Claim 1; Page 12/62, [0014]) with benefit of providing thermally conductive fluorine-containing adhesive composition which can be highly filled with a thermally conductive filler, is excellent in oil resistance and thermal conductivity, and gives a cured product firmly adhering to various substrates such as metals and plastics, and an electric/electronic component using the same (Page 11/62, [0012]). Thus, ‘389 cures the deficiency in ’654 relied upon in rejecting independent claim. It is submitted that obviousness does not require absolute predictability of success …. For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare their invention product (i.e., a low outgas high temperature thermal interface material) and show the product is actually different from and unexpectedly better than the teachings of the references. It is noted that the burden is on the applicant to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b). See also Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992), and such a showing also must be commensurate with the scope of the claimed invention, i.e., must bear a reasonable correlation to the scope of the claimed invention.
Examiner Information
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
05/23/2026
bijan.ahvazi@uspto.gov
Prosecution Insights