10DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a continuation of application No. PCT/US2021/014073, filed on Jan. 20, 2021.
Acknowledgment is made of provisional application No. 63/010,298, filed on Apr.
15, 2020.
Claims 1-3, 6, 23-28, 30-31, 33, 39-41, 47, 53-55 are pending. Claims 31, 33, 39-41, 47, 53-55 are withdrawn. Accordingly, claims 1-3, 6, 23-28, 30 are 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.
Claim 6 is 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.
Claim 6 recites the limitation "the silyl-containing polymer" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
Appropriate correction and/or clarification is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites the hydrolysable component comprises a silane containing polymer, a silyl containing polymer, an imine, or a combination thereof. However, claim 1 recites the hydrolysable component comprises a silane containing polymer and/or an imine. Therefore, claim 3 does not further limit the subject matter of claim 1 from which it depends.
Claim 27 recites the thermally conductive electrically insulative filler particles are either stable or unstable=. However claim 27 does not further limit claim 1 since no other option is possible.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-3, 6, 23-28 are rejected under 35 U.S.C. 103 as being unpatentable over Takashi et al. (WO 2013/042638) in view of Tournilhac et al. (US 2015/0125646).
Regarding claim 1: Takashi is directed to a moisture curable composition comprising:
A hydrolysable component comprising a silyl groups (equivalent to a silane containing polymer) as component (A) and
A thermally conductive fillers of aluminum nitride, boron nitride, silicon nitride are disclosed (p. 2 Takashi).
Wherein the silane containing polymer comprises a polyester, polyether, polyurethane, polyurea (p. 2 Takashi).
Takashi doesn’t mention a thermally conductive filler package of claim 1.
Tournilhac is directed to a moisture curable composition comprising a polymer component and a thermally conductive filler including aluminum nitride, boron nitride, silicon nitride ([0034] Tournihac). The thermally conductive package comprising thermally conductive electrically insulative filler particles, the thermally conductive filler particles have a thermal conductivity of at least 5 W/mK ([0027]) (equivalent to a thermally conductive filler particles of at least 5 W/mK measured according to ASTM D7984) and a volume resistivity of at least 1 Ω.m ([0403]) (equivalent to a volume resistivity of at least 1 1 Ω.m measured according to ASTM D257).
One skilled in the art would have been motivated to have selected the thermally conductive filler of Tournilhac as the thermally conductive filler in Takashi since Takashi already lists the same thermally conductive fillers of aluminum nitride, boron nitride, silicon nitride as well as to produce a composition having a thermally conductivity superior to 0.5 W/mK ([0030] Tournihac). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the thermally conductive filler of Tournilhac as the thermally conductive filler in Takashi.
Regarding claim 2: The hydrolysable component is free of a silane of the formula of claim 2.
Regarding claim 3: A silyl containing polymer of a silyl terminated polymer is disclosed. Also disclosed are silane terminated polymers, e.g. monoalkoxysilyl group terminated polyester.
Regarding claim 6: The blending amount of component (C) is 1:99 to 70:30 and component (B) is 150 to 3000 parts by mass of component (A) which at least overlaps the claimed 2-90% by volume (i) or 1.5% - 89.5% vol (ii) given the very broad claimed ranges.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 23: The filler is used in an amount of 150-3000 parts by mass with respect to 100 parts by mass component (A) (p. 2 Takashi), which at least overlaps the claimed 10-98% by volume based on total volume of the composition. Alternatively, Takashi teaches the filler particles [package] are used in an amount of 0-80 vol% of the composition ([0035] Tournilhac). One skilled in the art would have been motivated to select this amount in Takashi to produce a composition having a thermal conductivity superior to 0.5 W/mK ([0030] Tournilhac). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected an amount of filler within the scope of claim 23.
Regarding claim 24: The thermally conductive filler is used in an amount of 5-80 vol% of the polymer composition ([0035] Tournilhac).
Regarding claim 25: The thermally conductive filler particles have a thermal conductivity of at least 5 W/mK ([0027]) (equivalent to a thermally conductive filler particles of at least 5 W/mK measured according to ASTM D7984) and a volume resistivity of at least 1 Ω.m ([0403]) (equivalent to a volume resistivity of at least 1 1 Ω.m measured according to ASTM D257) in an amount of 5-80 vol% based on the weight of the composition. It follows the filler in the filler package includes an amount of no more than 10% by volume based on total volume of the filler package.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 26: The composition further comprises a curing agent ([0137] Tournilhac).
Regarding claim 27: The thermally conductive electrically insulative filler particles are either stable or unstable, since no other option is possible.
Regarding claim 28: Thermally stable particles include boron nitride. Selection of 100% filler particles of boron nitride results in a composition comprises thermally table filler particles of 100% by volume based on total volume of the thermally conductive insulative particles.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764