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 .
Claims 1-16 are currently pending and under examination.
Claim Rejections - 35 USC § 112
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.
Claims 3 and 4 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 3 and 4 depend from claim 1 and recite “when a paste… is pressurized at 25°C and 0.1 MPa for 60 minutes, the thickness of the pressurized silicone composition”. Claim 1 recites “A thermal conductive silicone composition”. Therefore, it is unclear whether the silicone composition recited in claims 3 and 4 means the silicone composition in claim 1 or the paste in claims 3 and 4. However, the instant invention discloses (instant US Publication [0112]) that:
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Therefore, for the purpose of the compact prosecution, the limitation “the pressurized silicone composition” in claims 3 and 4 is interpreted as “the pressurized paste”.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
1. Claims 1-7 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Hirakawa (JP WO2018/016566 A1, hereinafter Hirakawa).
Regarding claim 1, 2 and 5-7, Hirakawa teaches a thermally conductive composition comprising component (A) a thermally conductive filler ([0019], claim 1), wherein component (A) comprises:
component (A-1) amorphous aluminum nitride particles with an average particle size of 30 μm to 150 μm ([0021]), which overlaps with the claimed range of “50 µm or more and 150 µm or less” and reads on the claimed component (D); component (A-1) can be irregular aluminum nitride particles ([0086]);
component (A-2) inorganic particles with an average particle size of 1 μm or more and less than 30 μm ([0030]), wherein component (A-2) inorganic particles are preferably aluminum nitride particles ([0035]), and can have a rounded shape ([0037]), which overlaps with the claimed range of “4 µm or more and less than 50 µm” and reads on the claimed component (C);
component (A-3) inorganic particles with an average particle size of 0.1 μm or more and less than 1 μm ([0030]), wherein component (A-3) inorganic particles are preferably zinc oxide particles ([0036]), and can have an irregular shape ([0037]), 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).
Hirakawa also teaches that based on the total amount of component (A), component (A-1) has an amount of 20 to 70 mass%, component (A-2) has an amount of 1 to 50 mass%, and component (A-3) has an amount of 1 to 50 mass% ([0033], [[0024]]. Thus, a ratio of component (A-1) of Hirakawa (the claimed component (D)) relative to the total amount of component (A-1) (the claimed component (D)) and component (A-2) (the claimed component (C)) can be in a range of 28.6 mass% or more and less than 70 mass%, which overlaps with the claimed range of “5 mass% or more and less than 50 mass%”.
Hirakawa also teaches that in order to adjust the thermal conductivity and enhance the heat-dissipating effect, the content of component (A) in the composition is preferably 80 mass% or more ([0084]).
Thus, a total amount of component (A-2) (the claimed component (C)) and component (A-1) (the claimed component (D)) can be in a range of 40 mass% or more and less than 90 mass% in the composition as taught by Hirakawa, which overlaps with the claimed range of “20 mass% or more and less than 80 mass%”.
An amount of component (A-3) (the claimed component (E)) can be in a range of 1 mass% or more and less than 45 mass% in the composition as taught by Hirakawa, which overlaps with the claimed range of “20 mass% or more and less than 50 mass%”.
Hirakawa 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 claimed 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 claims 3 and 4, the instant invention discloses (instant US Publication [0062]) that:
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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.
Hirakawa teaches that component (A-2) inorganic particles have an average particle size of 1 μm or more and less than 30 μm ([0030]), component (A-2) inorganic particles are preferably aluminum nitride particles ([0035]) and can have a rounded shape ([0037]), which overlaps with the claimed range of “4 µm or more and less than 50 µm” and reads on the claimed component (C).
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 Hirakawa, because Hirakawa’s teaching 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 claim 15, Hirakawa teaches that the thermally conductive composition comprises component (B) an alkoxysilyl group-containing compound ([0040]), wherein component (B) can be a dimethylpolysiloxane represented by the following general formula (4) in which one molecular chain end is blocked with an alkoxysilyl group:
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wherein R31 can be -O-, R33 is independently an alkyl group having 1 to 6 carbon atoms, p can be 3, g is an integer of 5 to 100 ([0047]), which reads on the claimed component (B) a hydrolysable organopolysiloxane containing an alkoxysilyl group.
Regarding claim 16, Hirakawa teaches that the thermally conductive composition comprises component (F) a condensation catalyst ([0073]), which reads on the claimed component (J).
Hirakawa also teaches that component (F) a condensation catalyst promotes the condensation and curing of component (B) (the claimed component (B)) when component (B) is an alkoxysilyl group-containing compound ([0073]).
2. Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hirakawa (JP WO2018/016566 A1, hereinafter Hirakawa) as applied to claims 1-7 and 15-16 above, and further as evidenced by “Poly(dimethylsiloxane), Vinyl terminated” (“Poly(dimethylsiloxane), Vinyl terminated information from Sigma”, 2026, hereinafter “Poly(dimethylsiloxane), Vinyl terminated”).
The disclosure of Hirakawa is relied upon as set forth above.
Regarding claims 8 and 9, Hirakawa teaches that the 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]), which reads on the claimed component (A).
Hirakawa also teaches that component (C) has a viscosity at 23°C of 10 to 10,000 mPa·s ([0062]), and component (C) can be a dimethylpolysiloxane terminated with vinyl groups ([0094]).
“Poly(dimethylsiloxane), Vinyl terminated” as an evidentiary reference shows that a dimethylpolysiloxane terminated with vinyl groups has a density of 0.965 g/mL at 25 °C (p. 3, § Properties).
Thus, component (C) a polyorganosiloxane (e.g. a dimethylpolysiloxane terminated with vinyl groups) in Hirakawa can have a viscosity at 23°C of 10 to 10,000 mm2/s, which falls within the claimed range of “ 10 to 100,000 mm2/s”.
Regarding claims 10 and 11, Hirakawa teaches that the thermally conductive composition comprises:
component (D) a polyorganohydrogensiloxane having two or more hydrogen atoms bonded to a silicon atom within one molecule ([0065]), which reads on the claimed component (F);
component (E) a platinum catalyst ([0071]), which reads on the claimed component (G); and
component (E-2) a reaction inhibitor ([0072]), which reads on the claimed component (H).
Hirakawa also teaches that component (C) (the claimed component (A)) reacts with component (D) (the claimed component (F)) in the presence of component (E) a platinum catalyst (the claimed component (G)) under a hydrosilylation reaction to form a cured product ([0079], [0071]).
3. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Hirakawa (JP WO2018/016566 A1, hereinafter Hirakawa) as evidenced by “Poly(dimethylsiloxane), Vinyl terminated” (“Poly(dimethylsiloxane), Vinyl terminated information from Sigma”, 2026, hereinafter “Poly(dimethylsiloxane), Vinyl terminated”) as applied to claims 8-11 above, and further in view of Yamada (JP 2017226724 A, hereinafter Yamada).
The disclosure of Hirakawa as evidenced by “Poly(dimethylsiloxane), Vinyl terminated” is relied upon as set forth above.
Regarding claim 14, Hirakawa teaches that the thermally conductive composition has low viscosity and therefore excellent workability, and high thermal conductivity, and can be used as a heat dissipation material ([0018]).
Hirakawa also teaches that the heat dissipation material comprising the thermally conductive composition can be in the form of grease, paste, or gel ([0085]).
Hirakawa 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 between the heat generating part and the heat dissipating member; 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 material 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 material, 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 thermally conductive composition as taught by Hirakawa 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.
4. Claims 1, 2, and 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Asaine (US 2006/0154087 A1, hereinafter Asaine) in view of Hirakawa (JP WO2018/016566 A1, hereinafter Hirakawa).
Regarding claims 1, 2, and 5-13, Asaine teaches ([0011]-[0013]; claim 1) a heat conductive silicone composition comprising:
component (a) an organopolysiloxane having at least two silicon-bonded alkenyl groups within one molecule ([0017]), which reads on the claimed component (A);
component (b) a heat conductive filler;
component (c) an organohydrogenpolysiloxane having at least two silicon-bonded hydrogen atoms (i.e., Si-H groups) within one molecule, in such an amount that a molar ratio of Si-H groups in component (c) to alkenyl groups in component (a) falls in a range of 0.5 to 10.0 ([0012]), which overlaps with the claimed range of “4.0 to 20.0”, and component (c) reads on the claimed component (F);
component (d) a platinum catalyst ([0012]), which reads on the claimed component (G).
Asaine also teaches that the heat conductive silicone composition can comprise a reaction inhibitor ([0039]), which reads on the claimed component (H).
Asaine teaches that component (a) such as a dimethylpolysiloxane containing vinyl groups only at both ends has a viscosity of 10,000 mm2/s ([0050]), which falls within the claimed range of “10 to 100,000 mm2/s”.
Asaine teaches that component (a) (the claimed component (A)) reacts with component (c) (the claimed component (F)) in the presence of component (d) a platinum catalyst (the claimed component (G)) under a hydrosilylation reaction to form a cured product ([0029]).
Asaine further teaches that component (b) a heat conductive filler include materials commonly used as the heat conductive filler, for example, metal oxides, and metal nitrides such as aluminum nitride ([0022]).
Asaine also teaches that component (b) the heat conductive filler is in particle form and has an average particle size of 0.1 to 100 μm ([0022]); and component (b) the heat conductive filler can comprise two or more groups of particles having a different average particle size ([0023]).
Asaine does not teach the claimed components (C), (D), and (E).
However, Hirakawa teaches a thermally conductive composition comprising component (A) a thermally conductive filler ([0009]), component (C) a polyorganosiloxane containing one or more aliphatic unsaturated hydrocarbon groups bonded to a silicon atom within one molecule ([0014], [0058]-[0059]), component (D) a polyorganohydrogensiloxane having two or more hydrogen atoms bonded to a silicon atom within one molecule ([0015]), and component (E) a platinum based catalyst ([0015]).
Hirakawa also teaches that component (A) comprises:
component (A-1) amorphous aluminum nitride particles with an average particle size of 30 μm to 150 μm ([0021]), which overlaps with the claimed range of “50 µm or more and 150 µm or less” and reads on the claimed component (D), and also overlaps with the range of “0.1 to 100 μm” of the heat conductive filler in Asaine; component (A-1) can be irregular aluminum nitride particles ([0086]);
component (A-2) inorganic particles with an average particle size of 1 μm or more and less than 30 μm ([0030]), wherein component (A-2) inorganic particles are preferably aluminum nitride particles ([0035]), and can have a rounded shape ([0037]), which overlaps with the claimed range of “4 µm or more and less than 50 µm” and reads on the claimed component (C), and also falls within the range of “0.1 to 100 μm” of the heat conductive filler in Asaine;
component (A-3) inorganic particles with an average particle size of 0.1 μm or more and less than 1 μm ([0030]), wherein component (A-3) inorganic particles are preferably zinc oxide particles ([0036]), and can have an irregular shape ([0037]), 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), and also falls within the range of “0.1 to 100 μm” of the heat conductive filler in Asaine.
Hirakawa also teaches that based on the total amount of component (A), component (A-1) has an amount of 20 to 70 mass%, component (A-2) has an amount of 1 to 50 mass%, and component (A-3) has an amount of 1 to 50 mass% ([0033], [[0024]]. Thus, a ratio of component (A-1) of Hirakawa (the claimed component (D)) relative to the total amount of component (A-1) (the claimed component (D)) and component (A-2) (the claimed component (C)) can be in a range of 28.6 mass% or more and less than 70 mass%, which overlaps with the claimed range of “5 mass% or more and less than 50 mass%”.
Hirakawa further teaches that when components (A-1), (A-2) and (A-3) with different particle sizes are mixed to form component (A), it prevents the difference in particle size between the filler particles from becoming too large, improves the efficiency of mixing component (A) the filler into the silicone composition, makes it easier to obtain a uniform composition, and also tends to lower the viscosity of the composition ([0030]).
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 component (A) a thermally conductive filler comprising 20 to 70 mass% of component (A-1) irregular shaped aluminum nitride particles with an average particle size of 30 μm to 150 μm, 1 to 50 mass% of component (A-2) round shaped aluminum nitride particles with an average particle size of 1 μm or more and less than 30 μm, and 1 to 50 mass% of component (A-3) irregular shaped zinc oxide particles with an average particle size of 0.1 μm or more and less than 1 μm as taught by Hirakawa as component (b) the heat conductive filler in Asaine, in order to prevent the difference in particle sizes between the filler particles from becoming too large, thereby obtaining a uniform composition and lowering the viscosity of the composition with a reasonable expectation of success.
Furthermore, Asaine teaches that component (b) the heat conductive filler is in an amount of 300 to 5,000 parts by weight per 100 parts by weight of component (a) ([0024]). Thus, component (b) the heat conductive filler can be in a range of 75 mass% or more and less than 98 mass% in the composition of Asaine.
Thus, a total amount of component (A-2) (the claimed component (C)) and component (A-1) (the claimed component (D)) can be in a range of 40 mass% or more and less than 90 mass% in the composition as taught by the combination of Asaine and Hirakawa, which overlaps with the claimed range of “20 mass% or more and less than 80 mass%”.
An amount of component (A-3) (the claimed component (E)) can be in a range of 1 mass% or more and less than 45 mass% in the composition as taught by the combination of Asaine and Hirakawa, which overlaps with the claimed range of “20 mass% or more and less than 50 mass%”. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Conclusion
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761