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 Objections
Claim 15 is objected to because of the following informalities: in line 3, “the polyisocyanate” should instead be either of –the isocyanate composition-- or –the isocyanate composition comprising the polyisocyanate-- . Appropriate correction is required.
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.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Raday (US PGPub 2011/0059319) in view of Sakamoto et al. (WO 2018/221662; using US PGPub 2020/0157350 for English language citations).
Regarding claim 1, Raday teaches polyurethane compositions comprising isocyanates, polyols and fillers (abstract)(instant composition comprising an isocyanate composition and a filler composition). Raday teaches the polyurethane compositions are highly filled two-part compositions wherein both the isocyanate A-side and the polyol B-side contain particulate fillers, and have stable viscosity with respect to spraying and RTM applications (abstract; [0026]).
Raday teaches the isocyanate used in the composition are commercially available di- and poly-isocyanates ([0037]-[0039]).
Raday teaches fillers can be selected from virtually any suitable filler, including for example alumina, silica, aluminosilicates, titanium oxide, etc. ([0041]; [0045]l; examples), ranging in size from 1 to 200 µm, preferably 1 to 20 µm, where size selection is dependent on surface area for smaller particles and dependent on sprayability, injectability and viscosity for larger particles ([0042]-[0043]; [0048]). Raday further teaches it is known to treat fillers with water scavengers, such as isocyanatomethyltrimethoxysilane (instant alkoxysilane) or other scavengers known to be used in moisture-curable silicon compositions, in order to render the fillers substantially anhydrous and to keep the water content of the composition below 1000 ppm and thus reduce premature reaction of the isocyanate component and maintain stability and sprayability of the composition ([0047]-[0048]).
Raday teaches the inclusion of various fillers into the composition, where fillers may be present in both the isocyanate A-side and the polyol B-side and teaches fillers may be treated and further may include alumina or silica of 1 to 20 µm particle size (see above; instant (c2)). Raday teaches combinations of fillers and teaches fillers readable on instant (c2) but does not specifically teach a combination of (c1), (c2) and (c3) as claimed.
Sakamoto teaches curable polysiloxane polymer compositions which are highly filled with thermally conductive fillers of 300 µm size or less, including alumina, silica, zinc oxide, magnesium oxide, etc., are of spherical or rounded shape, and which may be treated with siloxane surface treatment agents (abstract; [0004]; [0026]; [0028]; [0058]). Sakamoto teaches in order to achieve high filling while maintaining a desired viscosity, it is advantageous to use a combination of fillers of three different particle sizes of large, intermediate and small ([0026]-[0027]). Sakamoto teaches larger particle diameters of 20 µm or more (instant (c1)), intermediate particle diameters of greater than 1 to less than 20 µm (instant (c2)), and smaller particle diameters of less than 1 µm (instant (c3)) ([0027]). Sakamoto therefore teaches it is known to use a combination of spherical metal oxide-type particles of three different sizes, which may be surface treated, in order to achieve high filler loading while maintaining a desired viscosity. Sakamoto and Raday are analogous art and are combinable because they are concerned with the same technical feature, namely highly filled resin compositions comprising similar filler materials of similar sizes, selected for the purpose of achieving desired filling and viscosity. At the time of filing, a person having ordinary skill in the art would have found it obvious to use a combination of three fillers as taught by Sakamoto in the filler combination of Raday and would have been motivated to do so as Raday teaches selecting filler sizes to achieve a desired viscosity and filler loading and further as Sakamoto teaches it is known to combine three different particle sizes of spherical conductive fillers for the explicit purpose of achieving high filler loading while maintaining a desired compositional viscosity.
Regarding claim 2, Raday in view of Sakamoto renders obvious the composition as set forth in claim 1 above. Raday further teaches the amount of filler present in the isocyanate A-side composition is at least 50 wt% and may be in excess of 50 wt% ([0048]) (readable over instant greater than 87wt%) and the amount of filler present in the polyol B-side composition is at least 50 wt% and may be in excess of 60 wt% or higher ([0044]), for a total filler amount of at least 70 wt% ([0054]).
It is further noted that the amount of filler with respect to both the A-side and B-side compositions is dependent on viscosity and/or the physical and chemical characteristics of the filler ([0044]; [0048]). It is further/alternatively noted that the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of filler in the A/B-side compositions and would have been motivated to do so in order to obtain desired viscosity and/or physical/chemical filler characteristics. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Regarding claims 3-4, Raday in view of Sakamoto render obvious the composition as set forth in claim 1 above. As noted above, Raday teaches fillers include alumina, aluminosilicates, etc. and teaches treating fillers with isocyanatomethyltrimethoxysilane (instant alkyl trialkoxysilane) ([0041]; [0045]; [0048]).
Regarding claim 5, Raday in view of Sakamoto render obvious the composition as set forth in claim 1 above. Sakamoto further teaches the proportion of each particle size can be arbitrarily selected, and further teaches larger particle sizes are preferably present from 30-70%, with the remainder (i.e. 70-30%) being the intermediate particle sizes and smaller particle sizes in a ratio of 1:7 to 7:1 (intermediate:smaller) ([0027]). Sakamoto teaches selection of such ranges is guided by the working properties of the composition and resultant thermal conductivity properties ([0027]).
Regarding claim 6, Raday in view of Sakamoto render obvious the composition as set forth in claim 1 above. Raday invites virtually any filler ([0041]) and Sakamoto further teaches zinc oxide and boron nitride are known and suitable filler materials ([0025]).
Regarding claims 7 and 13, Raday in view of Sakamoto render obvious the composition as set forth in claim 1 above. As set forth above Raday teaches the composition comprising both an isocyanate A-side composition and a polyol B-side composition (see above). Raday teaches the polyol has an average functionality of from 2 to 4 and includes polyether polyols ([0029]). Raday further teaches the amount of filler present in the isocyanate A-side composition is at least 50 wt% and may be in excess of 50 wt% ([0048]) and the amount of filler present in the polyol B-side composition is at least 50 wt% and may be in excess of 60 wt% or higher ([0044]) (readable over instant greater than 87wt%), for a total filler amount of at least 70 wt% ([0054]).
It is further noted that the amount of filler with respect to both the A-side and B-side compositions is dependent on viscosity and/or the physical and chemical characteristics of the filler ([0044]; [0048]). It is further/alternatively noted that the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of filler in the A/B-side compositions and would have been motivated to do so in order to obtain desired viscosity and/or physical/chemical filler characteristics. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Regarding claim 8, Raday in view of Sakamoto render obvious the composition as set forth in claim 7 above. As noted above Raday teaches, at least, fillers of instant (c2) as present in the side-B polyol (see above; [0041]).
Regarding claims 9-10, Raday in view of Sakamoto render obvious the composition as set forth in claim 7 above. Raday invites virtually any filler ([0041]) and Sakamoto further teaches zinc oxide and boron nitride as a known and suitable filler materials ([0025]). Sakamoto further teaches the proportion of each particle size can be arbitrarily selected, and further teaches larger particle sizes are preferably present from 30-70%, with the remainder (i.e. 70-30%) being the intermediate particle sizes and smaller particle sizes in a ratio of 1:7 to 7:1 (intermediate:smaller) ([0027]). Sakamoto teaches selection of such ranges is guided by the working properties of the composition and resultant thermal conductivity properties ([0027]).
Regarding claim 11, Raday in view of Sakamoto render obvious the composition as set forth in claim 7 above. Raday is silent to the further inclusion of 6.5-20% or an alkyl trialkoxysilane and/or an epoxy functional alkoxysilane. However, Sakamoto teaches incorporation of 0.01 to 20 parts of an alkoxysilane compound into the curable composition for in-situ surface treating of filler materials aiding in thermal conductivity and filling properties ([0049]-[0058]). At the time of filing, a person having ordinary skill in the art would have found it obvious to include the surface treating agent of Sakamoto into the composition of Raday and would have been motivated to do so as Raday invites the inclusion of water scavenging alkoxysilanes, such as are known in the area of curable silicon compositions, for the purpose of reducing water and maintaining stability ([0047]-[0048]) and further as Sakamoto teaches inclusion of such compounds in the composition itself aids in surface treating filler materials present and increasing thermal conductivity and filling properties.
Regarding claim 12, Raday in view of Sakamoto render obvious the composition as set forth in claim 7 above. Raday further teaches the isocyanate A-side and polyol B-side are preferably formulated so as to be mixable at a 1:1 volume ratio ([0040]).
Regarding claim 14, Raday in view of Sakamoto render obvious the composition as set forth in claim 1 above. Raday teaches the isocyanate is any suitable conventional isocyanate including methylenediphenylene diisocyanates ([0037]).
Regarding claim 15, Raday in view of Sakamoto render obvious the composition as set forth in claim 1 above. Raday further teaches mixing the components (examples).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/Primary Examiner, Art Unit 1767