Prosecution Insights
Last updated: October 02, 2026
Application No. 17/958,894

THERMAL CONDUCTIVE SILICONE COMPOSITION

Final Rejection §103
Filed
Oct 03, 2022
Priority
Oct 21, 2021 — JP 2021-172352
Examiner
CAI, JIAJIA JANIE
Art Unit
1761
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Shin-Etsu Chemical Co., Ltd.
OA Round
2 (Final)
29%
Grant Probability
At Risk
3-4
OA Rounds
0m
Est. Remaining
50%
With Interview

Examiner Intelligence

Grants only 29% of cases
29%
Career Allowance Rate
16 granted / 55 resolved
-35.9% vs TC avg
Strong +21% interview lift
Without
With
+20.7%
Interview Lift
resolved cases with interview
Typical timeline
3y 9m
Avg Prosecution
32 currently pending
Career history
101
Total Applications
across all art units

Statute-Specific Performance

§101
1.8%
-38.2% vs TC avg
§103
62.5%
+22.5% vs TC avg
§102
10.0%
-30.0% vs TC avg
§112
18.2%
-21.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 55 resolved cases

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 . This action is responsive to Applicant's amendments/remarks filed 06/03/2026. Claims 1-16 are currently pending and under examination. The rejections as stated in the Non-Final Rejection filed 03/05/2026 are all withdrawn in view of the above amendments. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. Claim Objections Claim 9 is objected to because of the following informalities: Claim 9 recites “unsaturaed”. Applicant is suggested to revise it as “unsaturated” for clarity. Appropriate correction is required. Claim Rejections - 35 USC § 103 The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. 1. Claims 1-6, 8, 9, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki (JP 2020145292 A, hereinafter Sasaki) as evidenced by “Aluminum Nitride Property” (“Aluminum Nitride Material Properties” from Accuratus, 2026, hereinafter “Aluminum Nitride Property”) and “Silicone Rubber Property” (“Silicone Rubber Property” from Breiner Innovative, 2026, hereinafter “Silicone Rubber Property”). Regarding claim 1, Sasaki teaches a thermal conductive composition comprising a thermal conductive filler (A) and a polymer matrix, wherein the polymer matrix is silicone ([0030], claims 8-9). Thus, the thermal conductive composition of Sasaki reads on the claimed thermal conductive silicone composition. Sasaki teaches that the thermal conductive filler (A) is preferably in an amount of 50% by volume or more and 90% by volume or less relative to the total volume of the thermally conductive composition ([0054]), and the thermal conductive filler (A) can be aluminum nitride particles (claim 3, [0074]). “Aluminum Nitride Property” as an evidentiary reference shows that aluminum nitride has density of 3.26 gm/cc (p. 1), equaling to 3.26 g/cm3. “Silicone Rubber Property” as an evidentiary reference shows that silicone has density of about 1.1 to 1.3 g/cm3 (p. 1). Thus, the thermal conductive filler (A) of Sasaki can be in an amount of about 73-96% by weight relative to the total amount of the thermally conductive composition. Sasaki teaches that the thermal conductive filler (A) has a sphericity of 0.6 or more ([0050]), and can have a spherical shape or a shape close to a sphere ([0051]), and the thermal conductive filler (A) can be aluminum nitride particles (claim 3, [0074]), which reads on the claimed aluminum nitride particles having round particles. Sasaki also teaches that when using aluminum nitride particles as the thermal conductive filler (A), the thermal conductive filler (A) preferably comprises large-particle aluminum nitride, first-small-particle aluminum nitride, and second-small-particle aluminum nitride ([0076]), wherein the large-particle aluminum nitride has an average particle size of 50 to 100 μm ([0075]), which falls within the claimed range of “50 µm or more and 150 µm or less”, and reads on the claimed component (D); the first-small-particle aluminum nitride has an average particle size of 0.1 μm or more and less than 3 μm ([0076]), which falls within the claimed range of “0.1 µm or more and less than 4.0 µm”, and reads on the claimed component (E); the second-small-particle aluminum nitride has an average particle size of 3 μm or more and less than 10 μm ([0076]), which overlaps with the claimed range of “4 µm or more and less than 50 µm”, and reads on the claimed component (C). Sasaki also teaches that the volume ratio (large particle size/small particle size) of large-particle aluminum nitride to small-particle aluminum nitride is preferably 0.1 to 10 ([0075]). Thus, in Sasaki, the mass ratio (large particle size/small particle size) of large-particle aluminum nitride to small-particle aluminum nitride is also 0.1 to 10. Sasaki further teaches that when using first-small-particle aluminum nitride and second-small-particle aluminum nitride as small-particle aluminum nitride, the mass ratio of the second-small-particle aluminum nitride to the first-small-particle aluminum nitride is preferably 0.1 to 10 ([0076]). As discussed above, the thermal conductive filler (A) of Sasaki can be in an amount of about 73-96% by weight relative to the total amount of the thermally conductive composition. Thus, the first-small-particle aluminum nitride of Sasaki (the claimed component (E)) can be in an amount of about 1-60% by weight based on the total amount of the composition, which overlaps with the claimed range of “20 mass% or more and less than 50 mass%”. A total amount of the large-particle aluminum nitride (the claimed component (D)) and the second-small-particle aluminum nitride (the claimed component (C)) of Sasaki can be in an amount of about 13-95% by weight based on the total amount of the composition, which overlaps with the claimed range of “20 mass% or more and less than 80 mass%”. The large-particle aluminum nitride (the claimed component (D)) of Sasaki can be in amount of about 10-92% by weight based on the total amount of the large-particle aluminum nitride (the claimed component (D)) and the second-small-particle aluminum nitride (the claimed component (C)), which overlaps with the claimed range of “5 mass% or more and less than 50 mass%”. Sasaki does not teach the claimed composition at once under the meaning of anticipation. However, 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 claim 2, Sasaki teaches that the thermal conductive filler (A) has a sphericity of 0.6 or more ([0050]), and can have a spherical shape or a shape close to a sphere ([0051]), and the thermal conductive filler (A) comprises a second-small-particle aluminum nitride, wherein the second-small-particle aluminum nitride has an average particle size of 3 μm or more and less than 10 μm ([0076]), which reads on the claimed component (C) being a round aluminum nitride particle. Regarding claims 3 and 4, the instant invention discloses (instant US Publication [0062]) that: PNG media_image1.png 200 400 media_image1.png Greyscale Therefore, the limitation in claims 3 and 4 is interpreted as the component (C) has a property of such that, when a paste with a thickness of 300 µm prepared by mixing 150 parts by mass of the component (C) and 100 parts by mass of a dimethylpolysiloxane having a kinematic viscosity at 25°C of 1,000 mm2/s is pressurized at 25°C and 0.1 MPa for 60 minutes, the thickness of the pressurized paste is 10 µm or more and 100 µm or less. Sasaki teaches that the thermal conductive filler (A) has a sphericity of 0.6 or more ([0050]), and can have a spherical shape or a shape close to a sphere ([0051]), and the thermal conductive filler (A) comprises a second-small-particle aluminum nitride, wherein the second-small-particle aluminum nitride has an average particle size of 3 μm or more and less than 10 μm ([0076]), which overlaps with the claimed range of “4 µm or more and less than 50 µm”, and reads on the claimed component (C) being a round aluminum nitride particle. 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, 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 component (C) such that, when a paste with a thickness of 300 µm prepared by mixing 150 parts by mass of the component (C) and 100 parts by mass of a dimethylpolysiloxane having a kinematic viscosity at 25°C of 1,000 mm2/s is pressurized at 25°C and 0.1 MPa for 60 minutes, the thickness of the pressurized paste is 10 µm or more and 100 µm or less, would flow naturally from the teaching of Sasaki, because the teaching of Sasaki provides substantially the same component (C) aluminum nitride particles having a round shape and having an average particle size of 4 µm or more and less than 50 µm as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. Regarding claims 5 and 6, Sasaki teaches that the thermal conductive filler (A) comprises a first-small-particle aluminum nitride ([0076]), wherein the first-small-particle aluminum nitride has an average particle size of 0.1 μm or more and less than 3 μm ([0076]), which falls within the claimed range of “0.1 µm or more and less than 4.0 µm”, and reads on the claimed component (E) being an aluminum nitride particle. Regarding claims 8 and 9, Sasaki teaches that a thermal conductive composition comprises a thermal conductive filler (A) and a polymer matrix, wherein the polymer matrix is silicone ([0030], claims 8-9), and the silicone is preferably an addition-curing type silicone resin ([0037]). Sasaki also teaches that the silicone contains an organopolysiloxane having an alkenyl group, such as vinyl-terminated polydimethylsiloxane, and having a viscosity at 25°C of preferably 5 mPa·s to 1000 mPa·s ([0038]), equaling to about 5 mm2/s to 1000 mm2/s, which overlaps with the claimed range of “10 to 100,000 mm2/s”, and reads on the claimed component (A) being an organopolysiloxane having one or more aliphatic unsaturaed hydrocarbon groups bonded to a silicon atom within one molecule. Regarding claim 15, Sasaki teaches that the polymer matrix comprises a polymer component having an alkoxysilyl group ([0045]), and the polymer component having an alkoxysilyl group can be a linear polysiloxane structure, dimethylpolysiloxane represented by the following general formula (2), in which the molecular chain ends are sealed with trialkoxysilyl groups: PNG media_image2.png 200 400 media_image2.png Greyscale , wherein R3 represents an oxygen atom or ethylene, R2 is independently an alkyl group having 1 to 6 carbon atoms, and b is an integer between 5 and 100 ([0046]), which reads on the claimed comprising (B) a hydrolysable organopolysiloxane containing an alkoxysilyl group. 2. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sasaki as evidenced by “Aluminum Nitride Property” and “Silicone Rubber Property” as applied to claims 1-6, 8, 9, and 15 above, and further in view of Ichiroku (WO 2019/235293 A1, see US 2021/0253927 A1, hereinafter Ichiroku). The disclosure of Sasaki as evidenced by “Aluminum Nitride Property” and “Silicone Rubber Property” is relied upon as set forth above. Regarding claim 7, Sasaki teaches that the thermally conductive filler (A) can have a spherical shape or a shape close to a sphere, or a crushed shape ([0051]). Sasaki also teaches that the thermal conductive filler (A) can comprise large-particle aluminum nitride, first-small-particle aluminum nitride, and second-small-particle aluminum nitride ([0076]), wherein the large-particle aluminum nitride has an average particle size of 50 to 100 μm ([0075]), the aluminum nitride can have a spherical shape or a shape close to a sphere ([0051]), which reads on the claimed component (D); the second-small-particle aluminum nitride has an average particle size of 3 μm or more and less than 10 μm ([0076]), the aluminum nitride can have a spherical shape or a shape close to a sphere ([0051]), which reads on the claimed component (C); the first-small-particle aluminum nitride has an average particle size of 0.1 μm or more and less than 3 μm ([0076]), the aluminum nitride can have a crushed shape ([0051]), which overlaps with the claimed range of “0.1 µm or more and less than 4.0 µm” of the claimed component (E). Sasaki does not teach that the first-small-particle can be zinc oxide particle. However, Ichiroku teaches (claim 1) a heat conductive silicone composition comprising: an organopolysiloxane; component (C) an inorganic filler which can be zinc oxide, or aluminum nitride (claim 3, [0044]), can have an irregular shape ([0046]), and preferably has an average particle size of 0.5 to 2.5 μm ([0047]), which falls within the range of “0.1 μm or more and less than 3 μm” of the first-small-particle in Sasaki, and also falls within the claimed range of “0.1 µm or more and less than 4.0 µm”, and reads on the claimed component (E) being an irregular-shaped zinc oxide particle; component (D) a heat conductive inorganic filler which can be aluminum nitride ([0049]), and preferably has an average particle size of 5 to 200 μm ([0050]), which overlaps with the range of “50 to 100 μm” of the large-particle aluminum nitride in Sasaki, and “3 μm or more and less than 10 μm” of the second-small-particle aluminum nitride in Sasaki. Ichiroku also teaches component (C) the inorganic filler can be zinc oxide, or aluminum nitride (claim 3, [0044]), and the inorganic filler (e.g. zinc oxide, aluminum nitride) have a point of zero charge (PZC) of at least pH6 so that an improvement in the storage modulus at 150 °C is exerted, thereby preventing sliding ([0045]). Ichiroku also teaches that component (C) the filler (e.g. zinc oxide, aluminum nitride) tailors the particle size distribution of component (D) the filler (e.g. aluminum nitride) to achieve the closest packing to increase the filler loading, thereby increasing the thermal conductivity of the silicone composition ([0043]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the first-small-particle aluminum nitride having an average particle size of 0.1 μm or more and less than 3 μm and having a crushed shape as taught by Sasaki, with the zinc oxide particle having an average particle size of 0.5 to 2.5 μm and having an irregular shape as taught by Ichiroku, in order to improve the storage modulus at 150 °C thereby preventing sliding, and also to achieve the close packing to increase thermal conductivity of the composition with a reasonable expectation of success, because both zinc oxide and aluminum nitride particle can have an average particle size of 0.5 to 2.5 μm, can have an irregular shape, can have a point of zero charge (PZC) of at least pH6 so that an improvement in the storage modulus at 150 °C is exerted thereby preventing sliding, and also tailor the particle size distribution of the aluminum nitride which have larger particle size to achieve the close packing as recognized by Ichiroku. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. 3. Claims 10-13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki as evidenced by “Aluminum Nitride Property” and “Silicone Rubber Property” as applied to claims 1-6, 8, 9, and 15 above, and further in view of Hirakawa (JP WO2018/016566 A1, hereinafter Hirakawa). The disclosure of Sasaki as evidenced by “Aluminum Nitride Property” and “Silicone Rubber Property” is relied upon as set forth above. Regarding claim 10, Sasaki teaches that a thermal conductive composition comprises a thermal conductive filler (A) and a polymer matrix, wherein the polymer matrix is silicone ([0030], claims 8-9), and the silicone is preferably an addition-curing type silicone resin ([0037]). Sasaki also teaches that the addition-curing type silicone resin contains a silicone compound which is an organopolysiloxane having an alkenyl group, and also contains a curing agent ([0038]), wherein the curing agent is an organopolysiloxane having two or more hydrosilyl groups (SiH) ([0039]), which reads on the claimed component (F) an organohydrogenpolysiloxane having two or more hydrogen atoms bonded to a silicon atom within one molecule. Sasaki also teaches that the thermal conductive composition contains a curing catalyst which is used to cure the silicone compound with the curing agent, and the curing catalyst is preferably a platinum-based catalyst ([0041]), which reads on the claimed component (G) a platinum group metal catalyst. Sasaki does not teach a reaction inhibitor. However, Hirakawa teaches that a thermally conductive composition comprises component (C) a polyorganosiloxane containing one or more aliphatic unsaturated hydrocarbon groups bonded to a silicon atom within one molecule ([0058]-[0059]), component (D) a polyorganohydrogensiloxane having two or more hydrogen atoms bonded to a silicon atom within one molecule ([0065]), component (E) a platinum catalyst ([0071]), and component (E-2) a reaction inhibitor ([0072]). Hirakawa also teaches that the activity of the catalyst can be suppressed by adding the reaction inhibitor in order to obtain a longer pot life ([0072]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the thermal conductive composition as taught by Sasaki further comprising a reaction inhibitor as taught by Hirakawa, in order to suppress the activity of the catalyst, thereby obtaining a longer pot life with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. Regarding claim 11, Sasaki teaches that the addition-curing type silicone resin contains a silicone compound which is an organopolysiloxane having an alkenyl group ([0038]), a curing agent which is an organopolysiloxane having two or more hydrosilyl groups (SiH) ([0039]), and a curing catalyst which is a platinum-based catalyst ([0041]), wherein the curing catalyst is used to cure the silicone compound with the curing agent to obtain a cured product ([0041], [0039]), which reads on the claimed hydrosilylation reaction product of the component (A) and the component (F). Regarding claims 12 and 13, Sasaki teaches that the molar ratio of hydrosilyl groups (SiH) of the curing agent to the vinyl groups of the silicone compound is preferably 0.3 to 5 ([0039]), which overlaps with the claimed range of “4.0 to 20.0”. Regarding claim 16, Sasaki teaches that the polymer matrix is silicone ([0030], claims 8-9), and the silicone can be a condensation-curing type silicone resin. Sasaki also teaches that the polymer matrix comprises an organopolysiloxane having an alkoxysilyl group ([0045]-[0046]). Sasaki does not teach a condensation catalyst. However, Hirakawa teaches that a thermally conductive composition comprises component (B) an organopolysiloxane having an alkoxysilyl group ([0040], [0047]), which reads on the organopolysiloxane having an alkoxysilyl group of Sasaki. Hirakawa also teaches that the thermally conductive composition comprises component (F) a condensation catalyst, wherein component (F) the condensation catalyst promotes the condensation and curing of component (B) the organopolysiloxane having an alkoxysilyl group ([0073]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the thermal conductive composition comprising an organopolysiloxane having an alkoxysilyl group as taught by Sasaki further comprising a condensation catalyst as taught by Hirakawa, in order to promote the condensation and curing of the organopolysiloxane having an alkoxysilyl group with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. 4. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Sasaki as evidenced by “Aluminum Nitride Property” and “Silicone Rubber Property” as applied to claims 1-6, 8, 9, and 15 above, and further in view of Yamada (JP 2017226724 A, hereinafter Yamada). The disclosure of Sasaki as evidenced by “Aluminum Nitride Property” and “Silicone Rubber Property” is relied upon as set forth above. Regarding claim 14, Sasaki teaches that the thermal conductive composition forms into a thermal conductive layer (claim 8), and the thermal conductive layer is disposed on top of a processor in order to dissipate heat generated by the processor (claims 5 and 11, abstract). Sasaki also teaches that the thermal conductive composition can be a paste ([0040]). Sasaki does not teach an organic peroxide. However, Yamada teaches ([0008]) a thermally conductive silicone putty composition comprising component (A) an organopolysiloxane which is an addition reaction product of an organopolysiloxane having at least two alkenyl groups in one molecule and an organohydrogenpolysiloxane having at least two Si-H groups in one molecule, component (B) a thermally conductive filler, and component (C) an organic peroxide. Yamada also teaches that the thermally conductive silicone putty composition is used as a heat dissipating material, and the heat dissipating material is disposed on the heat generating part; when the heat generating part operates, the heat dissipating material expands due to heat, and when the operation stops, the heat dissipating material is cooled and contracts; the expansion and contraction of the heat dissipating material due to the repetition of the heat generation and the cooling cause a deviation ([0028]). Yamada further teaches that when the putty composition contains the organic peroxide, the heat generated at the heat generating part causes the organic peroxide to decompose, resulting in a free radical reaction that slowly cures the putty composition, dramatically improving its deviation resistance ([0028]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the thermal conductive composition as taught by Sasaki further comprising an organic peroxide as taught by Yamada, in order to improve the deviation resistance of the thermally conductive composition with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. 5. Claims 1, 2, and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ichiroku (WO 2019/235293 A1, see US 2021/0253927 A1) in view of Sasaki (JP 2020145292 A). Regarding claims 1, 2, and 5-7, Ichiroku teaches (claim 1) a heat conductive silicone composition comprising: an organopolysiloxane which is a reaction product obtained by reacting component (A) an organopolysiloxane having a silicon-bonded alkenyl group with component (B) an organohydrogenpolysiloxane; component (C) an inorganic filler which can be zinc oxide (claim 3, [0044]), can have an irregular shape ([0046]), and preferably has an average particle size of 0.5 to 2.5 μm ([0047]), which falls within the claimed range of “0.1 µm or more and less than 4.0 µm”, and reads on the claimed component (E) being an irregular-shaped zinc oxide particle; component (D) a heat conductive inorganic filler which can be aluminum nitride ([0049]), and preferably has an average particle size of 5 to 200 μm ([0050]), which overlaps with the claimed ranges of “4 µm or more and less than 50 µm” of the claimed component (C) and of “50 µm or more and 150 µm or less” of the claimed component (D); wherein the total of components (C) and (D) is 200 to 6,000 parts by weight per 100 parts by weight of the total of components (A) and (B) ([0018]). Ichiroku also teaches that component (C) is in an amount of 50 to 4,000 parts by weight per 100 parts by weight of the total of components (A) and (B) ([0048]), component (D) is in an amount of 100 to 5,000 parts by weight per 100 parts by weight of the total of components (A) and (B) ([0051]). Thus, component (C) of Ichiroku (the claimed component (E)) can be in an amount of about 1-95% by weight based on the total amount of the composition, which overlaps with the claimed range of “20 mass% or more and less than 50 mass%”. Component (D) of Ichiroku can be in an amount of about 2-97% by weight based on the total amount of the composition, which overlaps with the claimed range of “20 mass% or more and less than 80 mass%” of the total amount of the claimed components (C) and (D). Ichiroku does not teach the claimed component (C), the claimed component (D), and a ratio of the claimed component (D) relative to the total amount of the claimed components (C) and (D) is 5 mass% or more and less than 50 mass%. However, Sasaki teaches a thermal conductive composition comprising a thermal conductive filler (A) and a polymer matrix, wherein the polymer matrix is silicone ([0030], claims 8-9). Sasaki teaches that the thermal conductive filler (A) has a sphericity of 0.6 or more ([0050]), and can have a spherical shape or a shape close to a sphere ([0051]), and the thermal conductive filler (A) can be aluminum nitride particles (claim 3, [0074]), which reads on the claimed aluminum nitride particles having round particles. Sasaki also teaches that the aluminum nitride particles preferably contain two or more types of aluminum nitride with different average particle sizes, because the aluminum nitride particles with the smaller average particle size can fit between the aluminum nitride particles with the larger average particle size, making it easier to properly disperse the aluminum nitride particles in the polymer matrix while increasing the packing density of the aluminum nitride particles ([0074]). Sasaki also teaches that when two or more types of aluminum nitride with different average particle sizes are used, the thermal conductive filler (A) comprises: a large-particle aluminum nitride having an average particle size of 50 to 100 μm ([0075]), which falls within the range of “5 to 200 μm” of the component (D) in Ichiroku, and falls within the claimed range of “50 µm or more and 150 µm or less”, and reads on the claimed component (D) aluminum nitride particles being round particles; and a small-particle aluminum nitride having an average particle size of 0.1 μm or more and less than 10 μm ([0075]), which overlaps with the range of “5 to 200 μm” of the component (D) in Ichiroku, and overlaps with the claimed range of “4 µm or more and less than 50 µm”, and reads on the claimed component (C) aluminum nitride particles being round particles. Sasaki further teaches that the volume ratio (large particle size/small particle size) of large-particle aluminum nitride to small-particle aluminum nitride is preferably 0.1 to 10, from the viewpoint of good dispersibility in the polymer matrix and heat dissipation ([0075]). Thus, in Sasaki, the mass ratio of large-particle aluminum nitride to small-particle aluminum nitride is also 0.1 to 10. Thus, a ratio of the large-particle aluminum nitride of Sasaki (the claimed component (D)) relative to the total amount of the large-particle aluminum nitride (the claimed component (D)) and the small-particle aluminum nitride (the claimed component (C)) can be in a range of about 9-91% by weight, which overlaps with the claimed range of “5 mass% or more and less than 50 mass%”. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a mixture of a large-particle aluminum nitride having an average particle size of 50 to 100 μm and a small-particle aluminum nitride having an average particle size of 0.1 μm or more and less than 10 μm in a volume ratio (large particle size/small particle size) of 0.1 to 10 as taught by Sasaki as the component (D) aluminum nitride filler in Ichiroku, wherein the large-particle aluminum nitride and the small-particle aluminum nitride have a sphericity of 0.6 or more, and have a spherical shape or a shape close to a sphere as taught by Sasaki, in order to better disperse the aluminum nitride particles in the polymer matrix while increasing the packing density of the aluminum nitride particles, thereby increasing thermal conductivity with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. Response to Arguments Applicant's arguments with respect to the prior rejections have been considered but are moot, because the arguments do not apply to all of the references being used in the current rejection. The current rejection utilizes new references, Sasaki (JP 2020145292 A) and Ichiroku (WO 2019/235293 A1, see US 2021/0253927 A1), in addition to the previous references, Hirakawa (JP WO2018/016566 A1) and Yamada (JP 2017226724 A), under a new ground(s) of rejection which renders obvious the instant claims. As stated above, claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Sasaki (JP 2020145292 A). Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Ichiroku (WO 2019/235293 A1, see US 2021/0253927 A1) in view of Sasaki (JP 2020145292 A). Conclusion 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 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 /MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
Read full office action

Prosecution Timeline

Oct 03, 2022
Application Filed
Mar 05, 2026
Non-Final Rejection mailed — §103
Jun 03, 2026
Response Filed
Aug 13, 2026
Final Rejection mailed — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
29%
Grant Probability
50%
With Interview (+20.7%)
3y 9m (~0m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 55 resolved cases by this examiner. Grant probability derived from career allowance rate.

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