DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-15 are pending in the current application.
Claim Objections
Claim 7 is objected to because of the following informalities:
Claim 7 recites “an organic acid metal salt peroxide decomposition promoter, an organometallic chelate peroxide decomposition promoter, a thiourea peroxide decomposition promotes.” This limitation is missing a conjunction at the end of the recited list, and should be amended to instead recite “an organic acid metal salt peroxide decomposition promoter, an organometallic chelate peroxide decomposition promoter, and a thiourea peroxide decomposition promoter.”
Appropriate correction 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6, 9, 10, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Earle et al. (WO 2005/087850 A1).
Regarding Claim 1, Earle teaches a two-part thermally conductive adhesive composition comprising a first part (Part A) and a second part (Part B), where the composition comprises (meth)acrylate-based components, a peroxide-based curing agent component (i.e., a peroxide oxidant), a catalytic component for catalyzing the cure reaction (such as metal salts; i.e., a peroxide decomposition promoter), and thermally conductive filler components (such as alumina and boron nitride) (Earle, Abstract, Pgs 7-11, 13). Earle teaches the first part (Part A) comprises the peroxide-based curing agent, the second part (Part B) comprises the catalytic component for catalyzing the cure reaction, and the (meth)acrylate-based components and the thermally conductive filler components are within both the first and second parts (Parts A and B) (Earle, Pgs 7-8). Earle teaches the (meth)acrylate-based components are acrylate monomers such as lauryl methacrylate; where the (meth)acrylate-based components are included in an amount of 20-50 wt% in the first part (Part A) and 10-90 wt% in the second part (Part B) (Earle, Pgs 9-12). The specification as originally filed recites that lauryl methacrylate is a preferred monomer satisfying the claimed Tg of -80oC to -10oC (Spec as originally filed, Pg 4). "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. Therefore, lauryl methacrylate satisfies the claimed acrylate monomer having a Tg of -80oC to -10oC. Earle teaches the peroxide-based curing agent component is included in an amount of 0.1-5 wt% (Earle, Pg 9). Earle teaches the catalytic component for catalyzing the cure reaction is included in an amount of 0.01-5 wt% (Earle, Pgs 12-13). Earle teaches the thermally conductive filler components are included in an amount of 20-90 wt% in the first part (Part A) and 20-90 wt% in the second part (Part B) (Earle, Pgs 10-11, 13-14). Earle teaches a ratio of the first part (Part A) to the second part (Part B) is from 0.5:1 to 6:1, preferably about 1:1 (Earle, Pg 14). Taking a basis of the first part (Part A) to the second part (Part B) being 1:1 with 100 total parts by weight of the entire composition yields the following wt% of each component:
15-70 wt% of the (meth)acrylate-based components (Part A: 0.2*50=10 to 0.5*50=25; Part B: 0.1*50=5 to 0.9*50=45; Total: 10+5=15 to 25+45=70, 15-70 wt%), where this overlaps the claimed range of 8-38 wt%, and therefore, renders obvious the claimed range;
0.1-5 wt% of the peroxide-based curing agent component, where this encompasses the claimed range of 0.2-4 wt%, and therefore, renders obvious the claimed range;
0.01-5 wt% of the catalytic component for catalyzing the cure reaction, where this encompasses the claimed range of 0.05-1 wt%, and therefore, renders obvious the claimed range; and
20-90 wt% the thermally conductive filler components (Part A: 0.2*50=10 to 0.9*50=45; Part B: 0.2*50=10 to 0.9*50=45; Total: 10+10=20 to 45+45=90, 20-90 wt%), where this overlaps the claimed range of 60-90 wt%, and therefore, renders obvious the claimed range.
Regarding Claims 2 and 3, Earle teaches the acrylate monomer can be lauryl methacrylate; where lauryl methacrylate has 12 carbon atoms (Earle, Pgs 9, 12).
Regarding Claim 6, Earle teaches the peroxide-based curing agent component (peroxide oxidant) includes peroxides, hydroperoxides, and ketone peroxides (Earle, Pgs 9-10).
Regarding Claims 9 and 10, Earle teaches the thermally conductive filler components include inorganic materials such as alumina (aluminum oxide) and boron nitride (Earle, Pgs 10-11, 13-14).
Regarding Claim 12, Earle teaches the (meth)acrylate-based components (such as the lauryl methacrylate monomer) and the thermally conductive filler components are within both the first and second parts (Parts A and B) (Earle, Pgs 7-8).
Regarding Claim 13, Earle teaches the ratio of the first part (Part A) to the second part (Part B) is from 0.5:1 to 6:1 (1:2 to 6:1), preferably about 1:1 (Earle, Pg 14). Earle’s ratio range falls within the claimed range of 1:10 to 10:1, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 14, Earle teaches the ratio of the first part (Part A) to the second part (Part B) is from 0.5:1 to 6:1 (1:2 to 6:1), preferably about 1:1 (Earle, Pg 14). Earle’s ratio range encompasses the claimed ratio of 1:1, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 15, Earle teaches the adhesive composition eliminates the need for mechanical fasteners and clips and is used for bonding between transformers, transistors, and other heat generating electronic components, while providing an efficient method of thermal transfer between heat generating electronic devices and their heat sinks (fills gaps between and bonds together heat generating electronic components to provide thermal conduction continuity; i.e., a thermally conductive gap-filling adhesive/glue) (Earle, Pgs 1-6, 9).
Claims 4, 5, 7, 8, 11, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Earle et al. (WO 2005/087850 A1) as applied to claims 1, 6, and 9 above, and further in view of Kurimura et al. (US 2015/0044490 A1).
Regarding Claim 4, Earle teaches the two-part thermally conductive adhesive composition discussed above for claim 1. Earle teaches the (meth)acrylate-based components comprise acrylate monomers such as lauryl methacrylate, and can be combined with other copolymerizable esters of acrylic or methacrylic acids and (meth)acrylic diluents such as urethane methacrylate (Earle, Pgs 9-12, 14).
Earle remains silent regarding an aliphatic urethane oligomer.
Kurimura, however, teaches a two-part adhesive composition comprising a mono-functional (meth)acrylate (an acrylate monomer), a polyfunctional (meth)acrylate such as an oligomer (an acrylate oligomer), an organic peroxide, a decomposition accelerator, and a particulate filler (Kurimura, Abstract, [0020]-[0038]). Kurimura teaches the polyfunctional (meth)acrylate oligomer includes urethane (meth)acrylates formed from aliphatic polyols (such as ethylene glycol) and aliphatic polyisocyanates to yield aliphatic urethane (meth)acrylate oligomers (Kurimura, [0029]-[0030], [0056]-[0063]).
Since Earle and Kurimura both disclose substantially similar two-part adhesive compositions comprising (meth)acrylate components, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have add Kurimura’s aliphatic urethane (meth)acrylate oligomer to Earle’s (meth)acrylate-based components to yield an adhesive that achieves improved curing effect, high size precision, excellent adhesive property, and excellent peeling property as taught by Kurimura (Kurimura, [0019], [0049], [0077]-[0079]).
Regarding Claim 5, modified Earle teaches the aliphatic urethane oligomer has a weight average molecular weight of from 5,000 to 60,000 (Kurimura, [0063]). Although modified Earle does not measure and provide a number average molecular weight, modified Earle’s aliphatic urethane oligomer would necessarily and reasonably yield some overlap with the claimed number average molecular weight range of 5,000 to 8,000, because modified Earle’s weight average molecular weight range fully encompasses the claimed range (MPEP 2144.05).
Regarding Claims 7 and 8, Earle teaches the two-part thermally conductive adhesive composition discussed above for claims 1 and 6.
Earle remains silent regarding when a hydroperoxide or ketone peroxide oxidant is employed, then an organic acid metal salt, an organometallic chelate, or a thiourea is used as a peroxide decomposition promoter (required by claim 7); and remains silent regarding when a diacyl peroxide oxidant is employed, then an amine is used as a peroxide decomposition promoter (required by claim 8).
Kurimura, however, teaches a two-part adhesive composition comprising a mono-functional (meth)acrylate (an acrylate monomer), a polyfunctional (meth)acrylate such as an oligomer (an acrylate oligomer), an organic peroxide, a decomposition accelerator, and a particulate filler (Kurimura, Abstract, [0020]-[0038]). Kurimura teaches when hydroperoxides or ketone peroxides are used, then an organic acid metal salt or an organic metal chelate is used as a peroxide decomposition promoter; and when diacyl peroxides are used, then an amine is used as a peroxide decomposition promoter (Kurimura, [0085]-[0092]).
Since Earle and Kurimura both disclose substantially similar two-part adhesive compositions comprising peroxides and peroxide decomposition promoters, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used peroxide decomposition promoters according to Kurimura’s guidance to Earle’s composition to yield an adhesive exhibiting reliable curing properties and sufficient storage stability as taught by Kurimura (Kurimura, [0085]-[0092]).
Regarding Claim 11, Earle teaches the two-part thermally conductive adhesive composition discussed above for claims 1 and 9.
Earle remains silent regarding an average particles diameter of inorganic conductive filler ranging from 1 to 130 μm.
Kurimura, however, teaches a two-part adhesive composition comprising a mono-functional (meth)acrylate (an acrylate monomer), a polyfunctional (meth)acrylate such as an oligomer (an acrylate oligomer), an organic peroxide, a decomposition accelerator, and a particulate filler (Kurimura, Abstract, [0020]-[0038]). Kurimura teaches the particulate filler includes inorganic particles such as alumina (aluminum oxide), where the inorganic particles having an average particle size (diameter) ranging from 20 to 200 μm (Kurimura, [0096]-[0098]). Kurimura’s average particle size range overlaps with the claimed range of 1 to 130 μm, and therefore, renders obvious the claimed range (MPEP 2144.05).
Since Earle and Kurimura both disclose substantially similar two-part adhesive compositions comprising inorganic particulate fillers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used inorganic conductive fillers having average particle diameter within the claimed range within Earle’s composition to yield an adhesive exhibiting excellent peeling property and excellent dimensional precision as taught by Kurimura (Kurimura, [0098]).
Regarding Claim 15, modified Earle teaches the two-part thermally conductive adhesive composition discussed above. Modified Earle teaches the adhesive composition is applied in a manner where the adhesive permeates in clearance gaps and then is cured (i.e., a thermally conductive gap-filling adhesive/glue) (Earle, Pgs 1-6, 9; Kurimura, [0115]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782