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 .
Response to Amendment
The Amendment filed March 16, 2026 has been entered. Claims 1-15 remain pending in the application. Claims 1-3, 6, 8, and 11-13 were amended and support for amendments are found in the original Claims and Specification. Applicant’s amendments to the claims have overcome objections and 112(b) rejections previously set forth in the Non-Final Office Action mailed December 16, 2025.
Claim Objections
Claim 1, Part (C) recites “a crosslinking agent in form of a hydrolysable organosilane compound” which is improper grammar. Applicant is advised to rephrase to “a crosslinking agent that is a hydrolysable organosilane compound”. 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.
Claims 1-8, and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nobuaki et al. (WO 2013/018416; cited in the IDS submitted on 11/18/2022; counterpart US 2014/0094554 used as an English translation; hereafter as “Nobuaki”) in view of Akira et al. (WO 2019/163290A1; cited in the IDS submitted on 11/18/2022; English translation incorporated herein; hereafter as “Akira”) as evidenced by Pieńkowska (NPL; Table 1, Dependence of molecular weight and viscosity PDMS on the degree of polymerization; hereafter as “Pieńkowska”).
Regarding Claim 1, Nobuaki teaches:
A heat-conductive silicone grease composition [¶ 0011], corresponding to the heat conductive silicone composition;
5 to 80 parts component (A) is an organopolysiloxane having Chemical Formula 2 (shown below) [¶ 0012, 0026], corresponding to (A) 100 parts by weight of general formula (1);
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Wherein R7 is each independently a substituted or unsubstituted, monovalent hydrocarbon group of 1 to 8 carbon atoms [¶ 0027], corresponding to wherein R is a C1-C20 independently a substituted or unsubstituted, monovalent hydrocarbon group;
Wherein the organopolysiloxane having Chemical Formula 2 has a viscosity of 5-1100 Pa·s [¶ 0009, 0026, 0085-0088], and the degree of polymerization of organopolysiloxane having a viscosity of 5-1100 Pa·s is 650 to greater than 100,000 [NPL, Pieńkowska, Table 1], corresponding to wherein n1 is an integer of at least 10;
Since the claimed organopolysiloxane (A) includes general formula (1) or general formula (2) in the alternative, general formula (2) will be interpreted to not be required;
20 to 95 parts by weight (which is equivalent to 25 to 480 parts by weight) component (B) is an organopolysiloxane having the Chemical Formula 1 (shown below) [¶ 0013, 0032], corresponding to (B) 150 to 600 parts by weight of general formula (3);
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Wherein R1 is independently a substituted or unsubstituted, monovalent hydrocarbon group [¶ 0013], corresponding to wherein R1 is independently a substituted or unsubstituted, monovalent hydrocarbon group;
Wherein R2 is independently an alkyl, alkoxyalkyl, alkenyl or acyl group [¶ 0013], corresponding to R3 is independently a C1-C4 alkyl, alkoxyalkyl, alkenyl or acyl group;
Wherein n is an integer of 2 to 100 [0013], corresponding to where a is an integer of 1 to 1000;
Wherein a is 1, corresponding to where g is 2;
wherein the oxygen group corresponds to wherein Y is oxygen;
Since the claimed b is an integer of 0 to 1000, b will be interpreted to not be required;
1 to 30 parts by weight (which is equivalent to 1.25 to 150 parts by weight) of component (C) of a silane compound containing at least three hydrolysable groups per molecule and/or a (partial) hydrolyzate or (partial) hydrolytic condensate thereof [¶ 0014], corresponding to (C) 0.1 to 100 parts by weight of a crosslinking agent in the form of a hydrolyzable organosilane compound with at least three hydrolysable groups per molecule and/or a partial hydrolytic condensate thereof;
Wherein a monovalent hydrocarbon group of 1 to 10 carbons [¶ 0042], reads on the one methyl group of (C);
100 to 2,000 parts by weight (which is equivalent to 125 to 10000 parts by weight) of a heat conductive filler, such as zinc oxide, with an average particle size in the range of 0.1 to 300 µm [Claim 1; ¶ 0050-0052], thereby overlapping with (D) 1500 to 6500 parts by weight of particulate zinc oxide having an average particle size of 0.1 to 2 µm;
The content of coarse zinc oxide particles having a particle size of at least 10 μm is up to 1 % by volume includes having 0% of at least 10 μm, so for the purposes of examination will interpreted to not require particle size of at least 10 μm. Nobuaki is silent to particle size of at least 10 μm, thereby reading on 0% volume of a particle size of at least 10 μm of Claim 1;
0.01 to 30 parts by weight (which is equivalent to 0.0125 to 150 parts by weight) of Component (I), wherein Component (I) enhances adhesion, such as I-1: 3-aminopropyltriethoxysilane [¶ 0072, 0100], corresponding to (E) 0.01 to 30 parts by weight of an adhesion promoter, and wherein component (E) is a basic silane coupling agent of Claim 10; and
2.3-4.6 W/mK thermal conductivity that was measured by hot disk method [Examples 1-3; Table 3; ¶ 0104], corresponding with thermal conductivity of at least 1.3 W/mK as measured by the hot disk method of Claim 1.
Regarding the amounts of components (B) and (D) by volume of Claim 1: assuming the organopolysiloxanes of Nobuaki consist of Chemical Formula 1 (25 to 480 parts by weight and corresponding to component (B)) and Chemical Formula 2 (100 parts by weight), which are the main components of the composition, have specific gravities about 1, and the specific gravity of the zinc oxide powder of Nobuaki is about 5.6 (125 to 10000 parts by weight and corresponding to component (D)), the volume percentage of zinc oxide would be approximately 1.3 to 80% by volume based on the overall composition (
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, which overlaps the amount of component (B) is 20 to 40% by volume based on the overall composition of Claim 1. (The specific gravities of the organopolysiloxane and zinc oxide used in the above calculations correspond to the values used by the Applicant in the calculations on Page 12 of the Remarks submitted on 03/16/2026.)
However, Nobuaki is silent to (D) 1,500 to 6,500 parts by weight of particulate zinc oxide having an average particle size of 0.1 to 2 µm of Claim 1; (F) 0.01 to 20 parts by weight of a pH indicator of Claim 1; the amount of component (B) is 20 to 40% by volume based on the overall composition of Claim 1; the amount of component (D) is 45 to 70% by volume based on the overall composition of Claim 1; and the thermal conductivity measured at 25°C by the hot disk method of Claim 1; and to the composition showing a color of Claims 2 and 11.
Regarding Nobuaki not explicitly teaching 1,500 to 6,500 parts by weight of particulate zinc oxide of Claim 1 and volume amounts of components (B) and (D) of Claim 1, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Nobuaki for the zinc oxide amount (125 to 10000 parts weight) and volume amounts (3.7-93% by volume for zinc oxide; 1.3-80% by volume for organopolysiloxane having Chemical Formula 1) overlaps the instantly claimed ranges (1,500 to 6,500 parts weight zinc oxide; 20 to 40% by volume for organopolysiloxane component (B); 45 to 70% by volume for zinc oxide component (D)) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding the pH indicator of Claim 1 and color change of Claims 2 and 11, however, Akira teaches a curable organopolysiloxane composition comprising 0.01 to 10 parts by mass of a pH indicator [Claim 1], corresponding to (F) 0.01 to 20 parts by weight of a pH indicator of Claim 1.
Akira offers the motivation that said pH indicator may change color in the basic range to confirm the degree of curing [Claims 6-7], corresponding to the composition shows a color change from the color in the unreacted state when the crosslinking reaction is completed of Claim 2, and to wherein component (F) changes its color in the basic region of Claim 11.
Nobuaki and Akira are considered to be analogous art as the claimed invention, as all are in the same field of preparing curable color-changing organopolysiloxane compositions comprising crosslinking agents, inorganic filler, and pH indicators .
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the pH indicator of Akira with the silicone composition of Nobuaki, with the motivation to confirm the degree of curing, thereby arriving at the claimed invention.
Nobuaki further teaches a viscosity of 130 Pa·s that was measured at 25°C by PC-10AA (Malcom Co., Ltd.), a spiral viscometer [Table 2; ¶ 0102], corresponding to having an absolute viscosity of 3 to 600 Pa-s as measured by a spiral viscometer at 25°C of Claim 7. Nobuaki also teaches the composition has good heat resistance [¶ 0082].
However, Nobuaki does not explicitly teach wherein the composition can be compressed to a thickness of 10 µm or less of Claim 3; having a thermal resistance of Claim 6; measuring the viscosity at a shear rate of 6 s-1 of Claim 7; and thermals resistance after a thermal cycling test of Claim 8.
However, the properties of the heat conductive silicone composition such as thickness, viscosity, thermal conductivity and volume are functions of the composition and the method by which it is made. Since Nobuaki and Akira teach the same composition formed by the same method as required by the instant claim, as set forth in the rejection above, the composition of Nobuaki, Kennedy and Akira would be expected to result in the same thickness, viscosity, thermal conductivity and volume as required by the instant claims if said composition was subject to the same testing. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients (organopolysiloxanes, crosslinking agents, zinc oxide, adhesion promoter, and pH indicator) for the same utility (making silicone compositions) and for the same purpose (to producing silicone composition that is heat conductive).
Regarding Claim 4, Nobuaki teaches 0.25 parts tetramethylguanidylpropyltrimethoxysilane [Example 4, D-1; ¶ 0009, 0048], corresponding to (G) 0.01 to 20 parts by weight of a reaction catalyst.
Regarding Claim 5, Nobuaki further teaches 100 to 2000 parts by weight of a filler, such as aluminum [¶ 0016, 0050], corresponding to (H) 1 to 1000 parts by weight of a filler other than component (D).
Regarding Claims 12-13, Nobuaki further teaches:
mixing dimethylpolysiloxane and organopolysiloxane (corresponding to (A)); organopolysiloxane (corresponding to (B)); phenyltri(isopropenoxy)silane (corresponding to (C)); zinc oxide (corresponding to (D)); tetramethylguanidylpropyltrimethoxysilane (corresponding to (E)) [Example 4; ¶ 0101], corresponding to mixing the components of Claim 12; and
heat agitation at 150˚C for 3 hours [¶ 0101], corresponding to mixing at a temperature of at least 100˚C for at least 30 minutes of Claim 13.
However, Nobuaki does not explicitly teach the order of the steps of Claim 13.
Nevertheless, Case law has held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (See MPEP 2144.04.IV.C., In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)).
Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nobuaki et al. (WO 2013/018416; cited in the IDS submitted on 11/18/2022; counterpart US 2014/0094554 used as English translation; hereafter as “Nobuaki”) in view of Akira et al. (WO 2019/163290A1; cited in the IDS submitted on 11/18/2022; English translation incorporated herein; hereafter as “Akira”) as evidenced by Pieńkowska (NPL; Table 1, Dependence of molecular weight and viscosity PDMS on the degree of polymerization; hereafter as “Pieńkowska”) and in further view of Akihiro et al. (JP 2009/234112A; cited in the IDS submitted on 11/18/2022; English translation incorporated herein; hereafter as “Akihiro”).
Nobuaki and Akira teach the silicone composition, organopolysiloxane, crosslinker, zinc oxide, adhesion promoter, pH indicator and thermal conductivity as set forth above and incorporated herein by reference.
However, Nobuaki and Akira are silent to the surface treatment of Claim 9.
Nevertheless, Akihiro teaches a thermally conductive laminate that can be interposed at the thermal interface between a heat-generating electronic component and a heat-radiating member that may be used for cooling the heat-generating electronic component [¶ 0001]. Akihiro further teaches a surface treatment agent comprising conductive filler, such as zinc oxide, that is treated with an organopolysiloxane such as dimethylpolysiloxane [¶ 0036, 0060, 0109], corresponding to wherein component (D) is surface-treated with an organopolysiloxane of Claim 9.
Nobuaki, Akira, and Akihiro are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing silicone compositions.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the silicone composition of Nobuaki and Akira to make the surface treated zinc oxide of Akihiro, thereby arriving at the claimed invention.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nobuaki et al. (WO 2013/018416; cited in the IDS submitted on 11/18/2022; counterpart US 2014/0094554 used as English translation; hereafter as “Nobuaki”) in view of Akira et al. (WO 2019/163290A1; cited in the IDS submitted on 11/18/2022; English translation incorporated herein; hereafter as “Akira”) as evidenced by Pieńkowska (NPL; Table 1, Dependence of molecular weight and viscosity PDMS on the degree of polymerization; hereafter as “Pieńkowska”) and in further view of Takuya et al. (JP 2005/350639 (A); English translation incorporated herein; hereafter as “Takuya”).
Nobuaki and Akira teach the silicone composition, organopolysiloxane, crosslinker, zinc oxide, adhesion promoter, pH indicator and thermal conductivity as set forth above and incorporated herein by reference.
However, Nobuaki and Akira are silent to the semiconductor device of Claims 14-15.
Nevertheless, Takuya teaches a thermally conductive material usable for a heat-generating electronic component, such as insulated gate bipolar transistors [Abstract; ¶ 0001, 0042], corresponding to the semiconductor device of Claim 14, and to the insulated gate bipolar transistor of Claim 15. Takuya further teaches said material may be used as a heat sink for heat-generating electronic components [¶ 0001, 0042], wherein said heat sink corresponds to a cooling member of Claim 14, and said heat-generating electronic components correspond to the heat generating member of Claim 14.Takuya further teaches that said material is heat-conductive and electrical insulating [¶ 0042].
The gap having a thickness of up to 10 μm includes having no gap between the heating and cooling member, so for the purposes of examination will interpreted to not require a gap of up to 10 μm. Takuya is silent to a gap having a thickness of up to 10 μm, thereby reading gap having a thickness of 0 μm of Claim 14
Nobuaki, Akira, and Takuya are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing thermal conducting silicone compositions for electronic parts.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the silicone composition of Nobuaki and Akira to make the semiconductor device of Takuya, thereby arriving at the claimed invention.
Response to Arguments
Applicant's arguments filed March 16, 2026 have been fully considered but they are not persuasive.
The non-patent literature document (Cite No. 31) listed in the IDS filed on March 16, 2026 has been received and considered.
Applicant argues (1) the claimed component (A) organopolysiloxane of the present invention has -OR3 groups at both ends of the molecule, but the compound (B-1) of Nobuaki has this group only at one end and does not correspond to the claimed component (A) of the present invention. Examiner acknowledges and considers applicant’s argument persuasive in this regard. However, attention is directed to the disclosure above wherein component (A) of Claim 1 is written such that general formula (1) and general formula (2) are written in the alternative. As such, general formula (2) is not required and thus, Nobuaki is not required to teach it. Instead, Nobuaki is relied upon to teach general formula (1) of the present Claim 1.
Applicant argues (2) component (B) of the present invention requires at least one group: -Y-SiR2g(OR3)3-g per molecule, and thus, compound (H-1) of Nobuaki does not correspond to the claimed component (B). Examiner acknowledges and considers applicant’s argument persuasive in this regard. However, attention is directed to the disclosure above wherein compound (H-1) of Nobuaki is no longer relied upon to teach component (B), but rather Chemical Formula 1 of Nobuaki is.
Applicant argues (3) the volume percentage of (E-3) zinc oxide powder is less than about 38% by volume which does not satisfying the requirements of claim 1 of the present invention. Examiner acknowledges and considers applicant’s argument persuasive in this regard. However, component (E-3) of Nobuaki, which comprises 400 parts by weight of zinc oxide, is no longer relied upon to teach the claimed volume percent of zinc oxide. Rather, Nobuaki discloses a more general teaching requiring 100 to 2000 parts by weight of zinc oxide, which corresponds to 3.7 to 93 % volume, overlapping the claimed range of 45 to 70% volume and rendering the claimed range obvious.
Applicant argues (4) the thermal conductivity of Example 4 of Nobuaki is 1.1 W/mK, which does not overlap the newly amended range of Claim 1. However, attention is directed to the disclosure above, wherein Nobuaki teaches a range of 1.1 to 4.6 W/mK which does overlap the newly amended thermal conductivity range. Thus, applicant’s argument is not persuasive.
Applicant argues (5) the composition of Nobuaki in view of Akira cannot be expected to have the improved properties of the present invention and (6) there is no proper rationale and/or reasonable expectation of success based on Nobuaki in view of Akira. However, attention is directed to the disclosure above wherein Nobuaki teaches the claimed organopolysiloxanes, crosslinking agents, zinc oxide, and adhesion promoter, while Akira teaches the claimed pH indicator. Akira offers the motivation that said pH indicator may change color in the basic range to confirm the degree of curing which would motivate one of ordinary skill in the art to modify the composition of Nobuaki with the pH indicator of Akira. Since Nobuaki in view of Akira teaches the components of the claimed invention, the thermal and mechanical properties cited by the applicant would be expected to naturally flow from the composition of Nobuaki in view of Akira rendering the present invention obvious. Furthermore, Thus, applicant’s arguments are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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