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 amendment/remarks filed 10/16/2025.
Claims 1, 3, 5, 7, 9, 11, and 12 are currently pending and under examination.
The rejection of claims 1, 3, 5, 7, 9 and 11 under 35 U.S.C. 103 as being unpatentable over Kitazawa (WO 2020/084899 A1, hereinafter Kitazawa) in view of Hashimoto (EP 2351709 B1, hereinafter Hashimoto) is maintained in view of the above amendments.
The rejection of claim 12 under 35 U.S.C. 103 as being unpatentable over Tsuji (US 2015/0357261 A1, hereinafter Tsuji) in view of Kitazawa (WO 2020/084899 A1, hereinafter Kitazawa) and Hashimoto (EP 2351709 B1, hereinafter Hashimoto), as evidenced by “Malcom PC-1TL Spiral Viscometer” (Malcom PC-1TL Spiral Viscometer Information from Moses B. Glick, 2025, hereinafter “Malcom PC-1TL Spiral Viscometer”) is withdrawn in view of the above amendments.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 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, 3, 5, 7, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa (WO 2020/084899 A1, hereinafter Kitazawa) in view of Hashimoto (EP 2351709 B1, hereinafter Hashimoto).
Regarding claims 1 and 11, Kitazawa teaches (para [0013], [0032], [0063]) an addition-curable silicone composition comprising:
component (A) an organopolysiloxane (the claimed component (A)) having at least two aliphatic unsaturated hydrocarbon groups in one molecule (para [0013]), and the aliphatic unsaturated hydrocarbon group bonded to a silicon atom (para [0016]), and having a kinematic viscosity at 25°C of 60 to 100,000 mm2/s (para [0013]), which falls within the claimed range of “10 to 100,000 mm2/s”;
component (A) the organopolysiloxane can be a linear structure (para [0019]), the aliphatic unsaturated hydrocarbon group in component (A) can be a vinyl group (para [0016]), the organic group other than the aliphatic unsaturated hydrocarbon group in component (A) is a non-substituted or substituted monovalent hydrocarbon group having 1 to 18 carbon atoms (para [0017]); Kitazawa specifically teaches that component (A) is a dimethylpolysiloxane having both ends sealed with dimethylvinylsilyl groups and having a kinematic viscosity at 25°C of 600 mm2/s (para [0078]), which reads on the claimed linear organopolysiloxane represented by the following formula (2), wherein R2 independently represents a methyl group, and at least one R2 is a vinyl group, and m is a number with which the linear organopolysiloxane has a kinematic viscosity at 25°C of 10 to 100,000 mm2/s;
component (C) a thermally conductive filler which can be a metal oxide (para [0013]);
component (D) an organohydrogenpolysiloxane (the claimed component (E)) having two or more hydrogen atoms bonded to a silicon atom in one molecule (para [0032]);
component (F) platinum metal catalyst (the claimed component (F)) (para [0013]);
component (G) a reaction control agent (the claimed component (G)) (para [0013]);
component (J) a hydrolyzable organopolysiloxane (the claimed component (B)) represented by formula (3):
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wherein R1 represents a monovalent hydrocarbon group having 1 to 10 carbon atoms which may have a substituent, and each R1 may be the same or different, b is an integer of 5 to 100 (para [0013]), which reads on the claimed hydrolysable organopolysiloxane represented by the general formula (3):
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when X1 is R3, X2 is R3, X3 is -(R4)n-SiR5d(OR6)3-d, n is 1, R4 is oxygen atom, d is 0, R6 is independently an alkyl group, R3 is independently an unsubstituted or substituted monovalent hydrocarbon group, 1≤b≤1000, and 0≤c≤1000;
component (K) a hydrolysable organopolysiloxane (the claimed component (B)) represented by general formula (4):
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wherein R1 represents a monovalent hydrocarbon group having 1 to 10 carbon atoms which may have a substituent, and each R1 may be the same or different, R5 is an alkenyl group having 2 to 6 carbon atoms, p and q satisfy 1 ≤ p ≤ 50, 1 ≤ q ≤ 99, and 5 ≤ p + q ≤ 100 (para [0013]), which reads on the claimed hydrolysable organopolysiloxane represented by the general formula (3):
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when X1 is -(R4)n-SiR5d(OR6)3-d, n is 1, R4 is oxygen atom, d is 0, R6 is independently an alkyl group;
when X3 is -(R4)n-SiR5d(OR6)3-d, n is 1, R4 is oxygen atom, d is 0, R6 is independently an alkyl group;
when X2 is R3 which is an alkenyl group;
when R3 is independently a monovalent hydrocarbon group, 1≤b≤1000, and 0<c≤1000.
The instant invention discloses that in the general formula (3), R3 is independently unsubstituted or substituted monovalent hydrocarbon group having preferably 1 to 10, wherein the monovalent hydrocarbon group can be an alkenyl group (instant US Publication [0046]).
The instant invention also discloses that component (B) can contain two or more kinds hydrolysable organopolysiloxane (instant US Publication [0051]). Thus, the combination of components (J) and (K) of Kitazawa reads on the claimed component (B).
Kitazawa teaches that component (J) is 1-200 parts by mass per 100 parts by mass of the total of component (A) and component (B) (para [0013], [0065]), component (K) is 1-50 parts by mass per 100 parts by mass of the total of component (A) and component (B) (para [0013]). Thus, in Kitazawa, the combination of components (J) and (K) (the claimed component (B)) is 2-250 parts by mass per 100 parts by mass of the total of component (A) and component (B).
Kitazawa teaches that component (B) silicone resin with at least one aliphatic unsaturated hydrocarbon group in one molecule has 0-100 parts by mass per 100 parts by mass of component (A) (para [0013]). Thus, in Kitazawa, the amount of component (A) (the claimed component (A)) relative to the amount of the combination of components (J) and (K) (the claimed component (B)) by mass can be 0.2 to 50, which overlaps with the claimed range of “component (A):component (B) = 5:95 or more but less than 20:80”.
Kitazawa also teaches that the SiH groups in component (D) the organohydrogenpolysiloxane react with the aliphatic unsaturated hydrocarbon groups in component (A) the organopolysiloxane to form a crosslinked product (para [0032]), which reads on the claimed cross-linked product.
Kitazawa further teaches that the number of SiH groups in component (D) an organohydrogenpolysiloxane relative to the total number of aliphatic unsaturated hydrocarbon groups in components (A) and (B) is 0.5 to 5 (para [0013], [0037]). Kitazawa teaches that component (B) silicone resin with at least one aliphatic unsaturated hydrocarbon group in one molecule has 0-100 parts by mass per 100 parts by mass of component (A) (para [0013]), and component (B) does not need to be contained in the addition-curable silicone composition (para [0021]). Thus, in Kitazawa, the number of SiH groups in component (D) relative to the number of aliphatic unsaturated hydrocarbon groups in component (A) can be 0.5 to 5, which overlaps with the claimed ranges of “0.1 to 5.0” and “0.1 to 1.5”.
Kitazawa also teaches that an example of component (A) has SiVi group with an amount of 0.00014 mol/g (para [0078]), and an example of component (B) has SiVi group with an amount of 0.0004 mol/g (para [0079]). Thus, in Kitazawa, the number of SiH groups in component (D) relative to the number of aliphatic unsaturated hydrocarbon groups in component (A) can be 0.5 to 5, which overlaps with the claimed ranges of “0.1 to 5.0” and “0.1 to 1.5”.
Kitazawa teaches (para [0029]) that component (C) a thermally conductive filler can be zinc oxide, and component (C) comprises a large particle filler and a small particle filler. Kitazawa teaches that the large particle filler (the claimed component (C)) has an average particle size of 10 to 45 μm (para [0030]), which overlaps with the claimed range of “4 µm or more and 30 µm or less”, and the small particle filler (the claimed component (D)) has an average particle size of 0.1 to 4 μm (para [0030]), which overlaps with the claimed range of “0.01 µm or more and 2 µm or less”. Kitazawa also teaches that the average particle size is measured by a laser light diffraction method (para [0030]).
Kitazawa teaches that the large particle filler and the small particle filler can have an indefinite shape (para [0030]), which reads on the claimed irregular shape of the claimed components (C) and (D).
Kitazawa teaches that component (C) comprises a large particle filler and a small particle filler ([0029]), the proportion of the large particle filler and the small particle filler can be in a range of 9: 1 to 1: 9 (mass ratio) (para [0030]), and component (C) filler has 10-95 mass % based on the total composition (para [0031]). Thus, in Kitazawa, the large particle filler (the claimed component (C)) can have 1-85.5 mass % based on the total composition, which overlaps with the claimed range of “40 to 90 mass%”, the small particle filler (the claimed component (D)) can have 1-85.5 mass % based on the total composition, which overlaps with the claimed range of “1 to 50 mass%”.
Kitazawa teaches that the large particle filler (the claimed component (C)) has an average particle size of 10 to 45 μm (para [0030]); when the particle size is too large, the silicone composition obtained will be uneven (para [0030]). Kitazawa also teaches that the silicone composition comprising the large particle filler is used as a heat dissipation grease for a semiconductor device (para [0075]).
Kitazawa does not teach "a coarse particle with a particle size of 45 μm or more determined by a laser diffraction particle size distribution method in an amount of 0.5 mass% or less in the entire component (C)".
However, Hashimoto teaches that the zinc oxide particle has a median size of 1 to 30μm (para [0024]), which overlaps with the average particle size of 10 to 45 μm of the large particle filler as taught by Kitazawa. Hashimoto teaches that in the zinc oxide particle, the proportion of the coarse particles having particle diameter of 50 μm or more is not more than 0.05 % by weight (para [0028]), which falls within the claimed ranges of “a coarse particle with a particle size of 45 μm or more in an amount of 0.5 mass% or less in the entire component (C)”.
Hashimoto teaches that the particle size distribution is measured by using laser diffraction particle size distribution analyzer (para [0025]). Hashimoto also teaches that a grease comprising zinc oxide particles is used as a thin film layer for electronic components, and the thin film layer cannot be obtained when coarse particles are contained in zinc oxide particles (para [0004], [0005]).
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 modify the large particle filler having an average particle size of 10 to 45 μm as taught by Kitazawa with coarse particles having particle diameter of 50 μm or more not more than 0.05 % by weight as taught by Hashimoto. For doing so, the silicone composition comprising the large particle filler would be uniform, and would form a heat dissipation grease for a semiconductor device with a reasonable expectation of success.
Furthermore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to optimize the large particle filler having an average particle size of 10 to 45 μm as taught by Kitazawa with very small amount of coarse particles in presence, such as coarse particles with a particle size of 45 μm or more in an amount of less than 0.5 mass%. For doing so, a person of ordinary skill in the art would make the silicone composition comprising the large particle filler being uniform with reasonable expectation of success, because when the particle size is too large, the silicone composition obtained is uneven as recognized by Kitazawa.
Furthermore, Kitazawa teaches that the addition-curable silicone composition has a thermal conductivity of 0.5-10 W/m·K (para [0074]), which overlaps with the claimed range of “2.0 W/m·K or more and less than 7.0 W/m·K”, and the thermal conductivity is a value measured by a hot disk method (para [0074]).
Kitazawa also teaches that the addition-curable silicone composition has a viscosity measured at 25°C of 1 to 1,000 Pa·s (para [0074]), which overlaps with the claimed range of “5 to 800 Pa·s”, and the viscosity is a value measured at 25°C by a rotational viscometer at 10 rpm (para [0074], [0092]).
Kitazawa does not teach the thermal conductivity of the cured silicone composition, and the viscosity of the cured silicone composition.
However, 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 thermal conductivity and the claimed viscosity would flow naturally from the teachings of the combination of Kitazawa and Hashimoto, because the teachings of the combination of Kitazawa and Hashimoto provide substantially the same thermal conductive silicone composition comprising the same crosslinked product of the same linear organopolysiloxane, the same organohydrogenpolysiloxane, the same hydrolysable organopolysiloxane, the same heat conductive filler, the same zinc oxide particle, the same platinum metal catalyst, and the same reaction inhibitor as claimed, and also because the addition-curable silicone composition of Kitazawa has a thermal conductivity of 0.5-10 W/m·K as measured by a hot disk method, and has a viscosity of 1 to 1,000 Pa·s as measured at 25°C by a rotational viscometer at 10 rpm as recognized by Kitazawa. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 3, 5, 7, and 9, Kitazawa does not teach a tracking resistance, a complex elastic modulus G*, a ratio of a loss elastic modulus G"/storage elastic modulus G', and a thickness of the pressurized silicone composition.
However, 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 tracking resistance, the claimed complex elastic modulus G*, the claimed ratio of a loss elastic modulus G"/storage elastic modulus G', and the claimed thickness of the pressurized silicone composition would flow naturally from the teachings of the combination of Kitazawa and Hashimoto, because the teachings of the combination of Kitazawa and Hashimoto provide substantially the same thermal conductive silicone composition comprising the same crosslinked product of the same linear organopolysiloxane, the same organohydrogenpolysiloxane, the same hydrolysable organopolysiloxane, the same heat conductive filler, the same zinc oxide particle, the same platinum metal catalyst, and the same reaction inhibitor as claimed. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
2. Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Yamada (WO 2018/207696 A1, hereinafter Yamada) in view of Kitazawa (WO 2020/084899 A1, hereinafter Kitazawa) and Hashimoto (EP 2351709 B1, hereinafter Hashimoto).
Regarding claim 12, Yamada teaches a thermally conductive silicone composition can consist of component (A) a crosslinked product of component (D) and component (E), component (B), component (C), and component (F) (Table 1, Examples 2-6; [0065]).
Yamada also teaches that a reaction control agent can be contained in the thermally conductive silicone composition for obtaining component (A) the crosslinked product ([0032]). The reaction control agent as taught by Yamada reads on the claimed component (G) a reaction inhibitor.
Yamada teaches that component (D) is an organopolysiloxane having at least one silicon-bonded alkenyl group in a molecule ([0014]), and component (D) has a kinematic viscosity of 50 to 100,000 mm2/s at 25 ᵒC ([0018]), which falls within the claimed range of “10 to 100,000 mm2/s”. The component (D) as taught by Yamada reads on the claimed component (A).
Yamada teaches that component (E) an organohydrogenpolysiloxane has at least four silicon-bonded hydrogen atoms in a molecule ([0021]), which reads on the claimed component (E).
Yamada teaches that the amount of component (E) to be blended is such that there are 0.3 to 2.0 silicon-bonded hydrogen atoms in component (E) per silicon-bonded alkenyl group in component (D) ([0029]), which falls within the claimed range of “0.1 to 5.0”.
Yamada teaches that component (F) is a platinum-based catalyst ([0030]), which reads on the claimed component (F).
Yamada teaches that component (B) is a hydrolyzable organopolysiloxane represented by the following general formula (1):
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wherein R1 is each independently an alkyl group having 1 to 6 carbon atoms, R2 is each independently one or more groups selected from the group consisting of unsubstituted or substituted monovalent hydrocarbon groups having 1 to 18 carbon atoms and no aliphatic unsaturated bonds, and “a” is an integer from 5 to120 ([0035]), which reads on the claimed hydrolysable organopolysiloxane represented by the general formula (3):
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when X1 is R3, X2 is R3, X3 is -(R4)n-SiR5d(OR6)3-d, n is 1, R4 is oxygen atom, d is 0, R6 is independently an alkyl group, R3 is independently an unsubstituted or substituted monovalent hydrocarbon group, 1≤b≤1000, and 0≤c≤1000.
Yamada also teaches that component (B) is in an amount of 201 to 500 parts by mass per 100 parts by mass of component (A) ([0039]). Yamada teaches that component (A) is a crosslinked product of component (D) and component (E) by an addition reaction ([0013]), and the mass ratio of component (D) to component (E) can be 98:2 (Table 1, Examples 2-6; [0065]). Thus, in Yamada, the mass ratio of component (D) (the claimed component (A)) to component (B) (the claimed component (B)) can be in a range of 0.2 to 0.5, which overlaps with the claimed range of “component (A):component (B) = 5:95 or more but less than 20:80”.
Yamada also teaches that component (C) a thermally conductive filler can be zinc oxide, can have an irregular shape, and has an average particle size of 0.1 to 150 µm ([0046]). Yamada teaches that component (C) can comprise a large particle filler and a small particle filler (Table 1, Examples 2-6; [0065]).
Yamada teaches that when the average particle size of the filler is too small, the resulting composition will have too high viscosity, making it difficult to handle; when the average particle size of the filler is too large, the resulting composition will tend to be non-uniform ([0046]). Yamada teaches that the average particle size is determined by a laser diffraction method ([0047]).
Yamada also teaches that component (C) a thermally conductive filler is in an amount of 2,001 to 10,000 parts by mass per 100 parts by mass of component (A) ([0048]). Yamada teaches that component (B) is in an amount of 201 to 500 parts by mass per 100 parts by mass of component (A) ([0039]). Yamada teaches that component (F) can be in an amount of 0.4 parts by mass per 100 parts by mass of component (A) (Table 1, Examples 2-6; [0065]). Thus, component (C) a thermally conductive filler of Yamada can be in an amount of 77 mass% to 97 mass% in the composition.
Yamada teaches that the silicone composition is used as a heat dissipation paste for an electronic component ([0004]).
Yamada does not teach that component (C) a heat conductive filler (i.e. an irregular-shaped zinc oxide particle) has an average particle size of 4 µm or more and 30 µm or less and contains a coarse particle with a particle size of 45µm or more determined by a laser diffraction particle size distribution method in an amount of 0.5 mass% or less in the entire component (C), and component (D) an irregular-shaped zinc oxide particle has an average particle size of 0.01 µm or more and 2 µm or less.
However, Kitazawa teaches (para [0013]) that an addition-curable silicone composition comprises component (A) an organopolysiloxane having at least two aliphatic unsaturated hydrocarbon groups in one molecule (para [0015]), component (C) a thermally conductive filler, component (D) an organohydrogenpolysiloxane having two or more hydrogen atoms bonded to a silicon atom in one molecule (para [0032]), component (F) a platinum metal catalyst (para [0013]), component (G) a reaction control agent (para [0013]), component (J) a hydrolyzable organopolysiloxane, and component (K) a hydrolysable organopolysiloxane (para [0013]).
Kitazawa also teaches (para [0029]) that component (C) a thermally conductive filler can be zinc oxide, and component (C) comprises a large particle filler and a small particle filler. Kitazawa teaches that the large particle filler and the small particle filler in component (C) can have an indefinite shape (para [0030]), which reads on the claimed irregular shape of the claimed components (C) and (D), and also reads on the irregular shape of component (C) a thermally conductive filler in Yamada.
Kitazawa teaches that the large particle filler has an average particle size of 10 to 45 μm (para [0030]), which overlaps with the claimed range of “4 µm or more and 30 µm or less” of the claimed component (C), and falls within the range of “0.1 to 150 μm” of component (C) the thermally conductive filler in Yamada.
Kitazawa also teaches that the small particle filler has an average particle size of 0.1 to 4 μm (para [0030]), which overlaps with the claimed range of “0.01 µm or more and 2 µm or less” of the claimed component (D), and falls within the range of “0.1 to 150 μm” of component (C) the thermally conductive filler in Yamada. Kitazawa teaches that the average particle size is measured by a laser light diffraction method (para [0030]).
Kitazawa further teaches when the particle size of the thermally conductive filler is too large, the silicone composition obtained will be uneven (para [0030]); when the particle size of the thermally conductive filler is too small, the silicone composition obtained will have high viscosity and poor extensibility (para [0030]). Kitazawa teaches that the silicone composition comprising the thermally conductive filler is used as a heat dissipation grease for a semiconductor device (para [0075]).
Kitazawa teaches that the proportion of the large particle filler and the small particle filler can be in a range of 9: 1 to 1: 9 (mass ratio) (para [0030]), and component (C) filler has 10-95 mass % based on the total composition (para [0031]), which overlaps with the range of “77 mass % to 97 mass %” of component (C) the thermally conductive filler in the composition of Yamada.
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 provide the combination of the large particle filler having an average particle size of 10 to 45 μm and the small particle filler having an average particle size of 0.1 to 4 μm as taught by Kitazawa as the thermally conductive filler in Yamada, wherein the large particle filler and the small particle filler are zinc oxide with an indefinite shape, and the mass ratio of the large particle filler and the small particle filler is 9:1 to 1:9. For doing so, the silicone composition would be uniform and have a suitable viscosity to be handleable, and would dissipate heat for an electronic component with a reasonable expectation of success, because the composition comprising a large particle filler having an average particle size of 10 to 45 μm and a small particle filler having an average particle size of 0.1 to 4 μm with a mass ratio of 9:1 to 1:9, is uniform and has a suitable viscosity for heat dissipation as recognized by Kitazawa.
Thus, in the silicone composition as taught by the combination of Yamada and Kitazawa, the large particle filler (the claimed component (C)) can have 7.7-87.3 mass% based on the total composition, which overlaps with the claimed range of “40 to 90 mass%”, the small particle filler (the claimed component (D)) can have 7.7-87.3 mass% based on the total composition, which overlaps with the claimed range of “1 to 50 mass%”.
Kitazawa does not teach "a coarse particle with a particle size of 45 μm or more determined by a laser diffraction particle size distribution method in an amount of 0.5 mass% or less in the entire component (C)".
However, Hashimoto teaches that the zinc oxide particle has a median size of 1 to 30 μm (para [0024]), which overlaps with the average particle size of 10 to 45 μm of the large particle filler in Kitazawa.
Hashimoto teaches that in the zinc oxide particle, the proportion of the coarse particles having particle diameter of 50 μm or more is not more than 0.05 % by weight (para [0028]), which falls within the claimed ranges of “a coarse particle with a particle size of 45 μm or more in an amount of 0.5 mass% or less in the entire component (C)”.
Hashimoto teaches that the particle size distribution is measured by using laser diffraction particle size distribution analyzer (para [0025]). Hashimoto also teaches that a grease comprising zinc oxide particles is used as a thin film layer for electronic components, and the thin film layer cannot be obtained when coarse particles are contained in zinc oxide particles (para [0004], [0005]).
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 modify the large particle filler having an average particle size of 10 to 45 μm as taught by Kitazawa with coarse particles having particle diameter of 50 μm or more not more than 0.05 % by weight as taught by Hashimoto. For doing so, the silicone composition comprising the large particle filler would be uniform, and would form a heat dissipation grease/paste for a semiconductor device with a reasonable expectation of success.
Furthermore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to optimize the large particle filler having an average particle size of 10 to 45 μm as taught by Kitazawa with very small amount of coarse particles in presence, such as coarse particles with a particle size of 45 μm or more in an amount of less than 0.5 mass%. For doing so, a person of ordinary skill in the art would make the silicone composition comprising the large particle filler being uniform with reasonable expectation of success, because when the particle size is too large the silicone composition obtained will be uneven as recognized by Kitazawa.
Furthermore, Yamada teaches that the thermal conductivity of the thermally conductive silicone composition is 1.5 W/m·K or higher ([0049]), which overlaps with the claimed range of “2.0 W/m·K or more and less than 7.0 W/m·K”.
Yamada also teaches that the viscosity of the thermally conductive silicone composition at 25°C is 100 to 1,500 Pa·s ([0049]), which overlaps with the claimed range of “5 to 800 Pa·s”, and the viscosity is measured by a Malcom viscometer at 25°C ([0057]).
Yamada does not teach that the thermal conductivity is measured by a hot disc method in accordance with ISO 22007-2, and the viscosity is measured at a rotation number of 10 rpm.
However, 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 thermal conductivity and the claimed viscosity would flow naturally from the teachings of the combination of Yamada, Kitazawa and Hashimoto, because the teachings of the combination of Yamada, Kitazawa and Hashimoto provide substantially the same thermal conductive silicone composition consisting of the same organopolysiloxane, the same hydrolysable organopolysiloxane, the same heat conductive filler, the same zinc oxide particle, the same organohydrogenpolysiloxane, the same platinum metal catalyst, and the same reaction inhibitor as claimed, and also because the thermally conductive silicone composition of Yamada has a thermal conductivity of 1.5 W/m·K or higher, and has a viscosity of 100 to 1,500 Pa·s at 25°C as recognized by Yamada. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Response to Arguments
1. Applicant argues that component (K) of Kitazawa does not satisfy the claimed hydrolysable organopolysiloxane represented by the formula (3) (the claimed component (B)) (p. 8, last 2nd para); thus, in Kitazawa, the amount of component (A) (the claimed component (A)) relative to the amount of component (J) (the claimed component (B)) is 0.25 to 100, which is out of the claimed range of “component (A):component (B) = 5:95 or more but less than 20:80” (p. 9, 1st para).
In response, Applicant’s argument is not persuasive.
Kitazawa teaches component (K) a hydrolysable organopolysiloxane represented by general formula (4):
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wherein R1 represents a monovalent hydrocarbon group having 1 to 10 carbon atoms which may have a substituent, and each R1 may be the same or different, R5 is an alkenyl group having 2 to 6 carbon atoms, p and q satisfy 1 ≤ p ≤ 50, 1 ≤ q ≤ 99, and 5 ≤ p + q ≤ 100 (para [0013]), which reads on the claimed hydrolysable organopolysiloxane represented by the general formula (3):
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when X1 is -(R4)n-SiR5d(OR6)3-d, n is 1, R4 is oxygen atom, d is 0, R6 is independently an alkyl group;
when X3 is -(R4)n-SiR5d(OR6)3-d, n is 1, R4 is oxygen atom, d is 0, R6 is independently an alkyl group;
when X2 is R3 which is an alkenyl group;
when R3 is independently a monovalent hydrocarbon group, 1≤b≤1000, and 0<c≤1000.
The instant invention discloses that in the general formula (3), R3 is independently unsubstituted or substituted monovalent hydrocarbon group having preferably 1 to 10, wherein the monovalent hydrocarbon group can be an alkenyl group (instant US Publication [0046]).
The instant invention also discloses that component (B) can contain two or more kinds hydrolysable organopolysiloxane (instant US Publication [0051]). Thus, the combination of components (J) and (K) of Kitazawa reads on the claimed component (B).
Kitazawa teaches that component (J) is 1-200 parts by mass per 100 parts by mass of the total of component (A) and component (B) (para [0013], [0065]), component (K) is 1-50 parts by mass per 100 parts by mass of the total of component (A) and component (B) (para [0013]). Thus, in Kitazawa, the combination of components (J) and (K) (the claimed component (B)) is 2-250 parts by mass per 100 parts by mass of the total of component (A) and component (B).
Kitazawa also teaches that component (B) silicone resin with at least one aliphatic unsaturated hydrocarbon group in one molecule has 0-100 parts by mass per 100 parts by mass of component (A) (para [0013]). Thus, in Kitazawa, the amount of component (A) (the claimed component (A)) relative to the amount of the combination of components (J) and (K) (the claimed component (B)) by mass can be 0.2 to 50, which overlaps with the claimed range of “component (A):component (B) = 5:95 or more but less than 20:80”.
2. Regarding Applicant’s argument that one would not have found the amended claim 12 obvious over Tsuji in view of Kitazawa and Hashimoto, Applicant’s argument has been considered but are moot, because the argument does not apply to all of the references being used in the current rejection of claim 12. The current rejection of claim 12 utilizes a new reference, Yamada (WO 2018/207696 A1), in addition to the previous references Kitazawa (WO 2020/084899 A1) and Hashimoto (EP 2351709 B1) under a new ground(s) of rejection which renders obvious the instant claim 12.
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.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761