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 .
Claim Status
Claim 1 is amended to incorporate subject matter of claims 6 and 8. Claim 7 is amended; no new matter has been added. Claims 6 and 8 are canceled. Claims 1-5, 7, and 9-15 are pending.
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
(p. 11) Applicants argue that Ota does not disclose or in any way teach or suggest the ratio H1/H2 of the mole number (H1) of silicon-bonded hydrogens in the first polyorganosiloxane to the mole number (H2) of silicon- bonded hydrogens in the second polyorganosiloxane component as claimed.
Ota teaches, from the standpoint of the technical effects of the invention, (B’2) is a preferred combination of organohydrogenpolysiloxane crosslinking agents, wherein (B’2) is an organohydrogenpolysiloxane mixture comprising component (B1) and one or more types of organohydrogenpolysiloxanes (non-B1) [p. 0064]
Ota (B1) corresponds to applicants formula 3. Ota teaches examples of (B1) include methyl hydrogen siloxane/dimethyl siloxane copolymers capped on both ends of the molecular chain with trimethylsiloxy groups [p. 0059]. Ota teaches component (B1) contains an average of 2 to 4 silicon-bonded hydrogen atoms in the molecule, which, in the broadest interpretation, corresponds to p ≥ 1 and q ≥ 2 of [formula 3] [p. 0056]. Embodiments wherein (B1) contains 3 or 4 silicon-bonded hydrogen atoms fall in the claimed range of 3 to 20 for repeat unit q of formula 3.
Ota (non-B1) corresponds to applicants formula 2. Ota teaches suitable examples of (non-B1) include dimethyl polysiloxane capped at both ends of the molecular chain with a dimethyl hydrogen siloxy group which, in the broadest interpretation, corresponds to m ≥ 1 of [formula 2] [p. 0066]. It would be obvious to one having ordinary skill in the art that this embodiment of (non-B1) has 2 silicon-bonded hydrogen atoms in the molecule.
In amended claim 1, applicants claim a ratio (H1/H2) of the mole number (H1) of silicon-bonded hydrogens in the first polyorganosiloxane component (presumably formula 2), to the mole number (H2) of silicon-bonded hydrogens in the second polyorganosiloxane component (presumably formula 3).
In the general teachings of Ota, (non-B1) corresponds to [formula 2] and has 2 silicon-bonded hydrogen atoms in the molecule, while (B1) corresponds to [formula 3] and has 3 to 4 silicon-bonded hydrogen atoms in the molecule. Therefore, the teachings of Ota have a (H1/H2) of 2/4 to 2/3, or 0.5 to 0.67. This ratio falls in the claimed range for (H1/H2) of 0.5 to 10.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
In response to applicant's argument that excellent storage stability can be secured by including the first polyorganosiloxane component of Formula 2 and the second polyorganosiloxane component of Formula 3 in the claimed ratio in the curing agent composition (p. 11), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ota et al (WO 2019/021826 A1 or US 2020/0270499 A1*) and further in view of Iwata et al (US 2016/0086713 A1).
* all citations are directed at the US equivelant document.
Regarding claims 1-3, 5, 6, 8, and 15: Ota et al teaches a thermally conductive silicone gel composition comprising: (A) an alkenyl group-containing organopolysiloxane; (B) an organohydrogenpolysiloxane; (C) a catalyst for hydrosilylation reaction; (D) a thermally conductive filler; (E) a silane-coupling agent or a hydrolysis condensation product thereof; and (F) a specific organopolysiloxane having a hydrolysable silyl group at one end thereof. The thermally conductive silicone gel composition includes (Liquid I) a liquid composition that includes components (A), (C), (D), (E), and (F), but does not include component (B) and (Liquid II) a liquid composition that includes components (B), (D), (E), and (F), but does not include component (C) which are individually stored [abstract]. Ota et al teaches that Liquid II preferably contains some of component (A) [p. 0040].
Ota et al exemplifies component (A) as a dimethylpolysiloxane capped at both ends of the molecular chain with a dimethylvinylsiloxy group having a Vi content of 1.52 % by mass (0.56 mmol/g) [p. 0048].
Ota et al teaches the amount of silicon-bonded hydrogen atoms in component (B) has to be in the range of 0.2 to 5 mol per mol of alkenyl groups in component (A), reading over applicants claimed ratio of (H/Ak) of 2 to 10 [p. 0054]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Ota teaches, from the standpoint of the technical effects of the invention, (B’2) is a preferred combination of organohydrogenpolysiloxane crosslinking agents, wherein (B’2) is an organohydrogenpolysiloxane mixture comprising component (B1) and one or more types of organohydrogenpolysiloxanes (non-B1) [p. 0064]
Ota (B1) corresponds to applicants formula 3. Ota teaches examples of (B1) include methyl hydrogen siloxane/dimethyl siloxane copolymers capped on both ends of the molecular chain with trimethylsiloxy groups [p. 0059]. Ota teaches component (B1) contains an average of 2 to 4 silicon-bonded hydrogen atoms in the molecule, which, in the broadest interpretation, corresponds to p ≥ 1 and q ≥ 2 of [formula 3] [p. 0056]. Embodiments wherein (B1) contains 3 or 4 silicon-bonded hydrogen atoms fall in the claimed range of 3 to 20 for repeat unit q of formula 3.
Ota (non-B1) corresponds to applicants formula 2. Ota teaches suitable examples of (non-B1) include dimethyl polysiloxane capped at both ends of the molecular chain with a dimethyl hydrogen siloxy group which, in the broadest interpretation, corresponds to m ≥ 1 of [formula 2] [p. 0066]. It would be obvious to one having ordinary skill in the art that this embodiment of (non-B1) has 2 silicon-bonded hydrogen atoms in the molecule.
In amended claim 1, applicants claim a ratio (H1/H2) of the mole number (H1) of silicon-bonded hydrogens in the first polyorganosiloxane component (presumably formula 2), to the mole number (H2) of silicon-bonded hydrogens in the second polyorganosiloxane component (presumably formula 3).
In the general teachings of Ota, (non-B1) corresponds to [formula 2] and has 2 silicon-bonded hydrogen atoms in the molecule, while (B1) corresponds to [formula 3] and has 3 to 4 silicon-bonded hydrogen atoms in the molecule. Therefore, the teachings of Ota have a (H1/H2) of 2/4 to 2/3, or 0.5 to 0.67. This ratio falls in the claimed range for (H1/H2) of 0.5 to 10.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Ota et al teaches examples of thermally conductive (D) filler include aluminum hydroxide [p. 0076]. Ota et al teaches in each of liquid (I) and liquid (II) the amount of component (D) is in a range from 600 to 3500 parts by mass per 100 parts by mass of component (A) in the composition as a whole [p. 0080]. Ota is silent with respect to the volume ratio of the second filler component.
Iwata et al teaches a heat conductive silicone adhesive composition for use with heat-generating parts as a heat-sink [p. 0001-0002]. Iwata et al teaches a composition comprising 100 parts by weight of a base polymer composition and 1,000 parts by weight aluminum oxide powder correlates to 70% by volume aluminum oxide [p. 0004].
Ota et al exemplifies component (A) comprises roughly half of the polymeric constituents of the composition [table 1, examples 1 and 2]. In light of this, a skilled artisan would predict liquid (II) of the composition of Ota et al comprising 600 to 3500 parts by mass filler per 100 parts by mass of component (A) would embrace or overlap the claimed volume ratio of 50 to 75 vol% based on the total volume of the two-component composition.
Regarding claim 7: Ota et al teaches the amount of silicon-bonded hydrogen atoms in the organohydrogenpolysiloxanes (B1) and (B’2) is preferably in the range of 0.5 to 1.5 mmol/g [p. 0067]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 9-12: Ota et al teaches metal hydroxides, such as aluminum hydroxide, are suitable for use as the thermally conductive filler (D).
Ota et al teaches that combining a filler with a large particle size and a filler with a small particle size, filling efficiency can be improved, the viscosity can be reduced, and the thermal conductivity can be increased [p. 0079]. Ota et al exemplifies the use of a filler having a average particle size of 0.4 um, a filler having an average particle size of 2.5 um, and a filler having an average particle size of 35 um, wherein the corresponding ratios are (35/0.4)=87.5 and (35/2.5)=14 [p. 0178-0179]. Ota et al exemplifies the use of the filler at a weight ratio of (w. 35 um/ w. 2.5 um) = 2.7, and (w. 35 um/ (w. 0.4 um + w. 2.5 um)) = 1.4 [table 1, example 1]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 13: Ota et al teaches in each of liquid (I) and liquid (II) the amount of component (D) is in a range from 600 to 3500 parts by mass per 100 parts by mass of component (A) in the composition as a whole [p. 0080]. Ota et al teaches that Liquid II preferably contains some of component (A) [p. 0040]. Ota is silent with respect to limitations on the parts by mass of component (A) present in liquid (II). However, as there are no particular restrictions regarding the amount of component (A) in liquid (II), as skilled artisan would appreciate embodiments of Ota et al with 8.5 parts by mass or more of component (A) would embrace or overlap the claimed range.
Regarding claim 14: Ota et al exemplifies a ratio of second filler component of 11,328 parts by weight relative to 100 parts by weight of the silicon-bonded hydrogen-containing polysiloxane components [table 1, example 1].
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Beyer et al (US 2020/0181408 A1) and further in view of Matsumoto et al (US 2012/0123054 A1) as evidenced by Peri et al (Journal of Physical chemistry, 1960) and Cao et al (Nano convergence, 2020).
Beyer et al teaches a liquid curable composition comprising: an organopolysiloxane (A) comprising: an organopolysiloxane (A1) containing at least 2 alkenyl groups bonded to silicon atom per molecule, and an organopolysiloxane (A2) containing at least 2 alkenyl groups bonded to silicon atom per molecule; an organopolysiloxane (B) comprising an organopolysiloxane (B1) containing at least 2 silicon-bonded hydrogen atoms per molecule; a platinum based catalyst (C); an inhibitor (D) selected from the group consisting of acetylenic alcohols and their derivatives; and a silica filler (E) [abstract].
Beyer et al teaches the liquid curable silicone elastomer composition may be prepared by providing 2 separate compositions, such as part I and part II. Part I may contain the catalyst (C) and any one of the organopolysiloxane (A) or the silica filler (E), or a combination of both. Part II may contain the inhibitor (D) and the organopolysiloxane (B), and any one of the organopolysiloxane (A) or the silica filler (E), or a combination of the latter two. The other or optional additives may be in any of part I or II or in both parts. [p. 0123-0129].
Beyer et al teaches the organopolysiloxane (A) comprises organopolysiloxane (A1) and organopolysiloxane (A2) [p. 0044]. The organopolysiloxane (A1) contains at least 2 alkenyl groups bonded to silicon atom per molecule and has a total alkenyl content of from 0.01 to 1.5 mmol alkenyl/g [p. 0046]. The organopolysiloxane (A2) contains at least 2 alkenyl groups bonded to silicon atom per molecule and has a total alkenyl content of from 5.0 to 15.0 mmol alkenyl/g [p. 0053].
The organopolysiloxane (B) comprises organohydrogenpolysiloxane (B1) containing at least 2 silicon-bonded hydrogen atom (SiH) per molecule, and optional organohydrogenpolysiloxane (B2) containing at least 2 silicon-bonded hydrogen atom (SiH) per molecule [p. 0019].
Beyer et al teaches any one of the organopolysiloxanes (A) may be in either part I or part II of the composition; therefore, selection of organopolysiloxane (A2) for part I and selection of organopolysiloxane (A1) for part II is prima facie obvious, as is the opposite selection (e.g., (A1) for part 1, and (A2) for part II), see In reGibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious); see also In reBurhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results) [MPEP 2144.4C].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare embodiments of the two-part composition of Beyer et al wherein Part I of comprises organopolysiloxane (A2), platinum-based catalyst (C), silica filler (E), and optional other additives; and Part II comprises organopolysiloxane (A1), organohydrogenpolysiloxane (B), silica filler (E), and optional other additives.
Beyer et al teaches, in the overall composition, the silicon bonded hydrogen atoms in organopolysiloxane (B) are present in a slight excess from the alkenyl groups in organopolysiloxane (A) wherein ratio of hydrogen in organopolysiloxane (B)/(alkenyl groups in organopolysiloxane (A) (also SiH/SiAlk ratio) may be >1.8, which overlaps with the claimed range for the ratio (H/Ak) of 2 to 10 [p. 0087]. In addition, embodiments of Beyer et al in which Part I comprises organopolysiloxane (A2; 5.0 to 15.0 mmol alkenyl/g (Ak1)) and Part II comprises organopolysiloxane (A1; 0.01 to 1.5 mmol alkenyl/g (Ak2)) appear to embrace the claimed range of (Ak1/Ak2) of 0.5 to 5. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Beyer et al teaches the silica filler is present in the composition in an amount of from 10 to 40% wt based on the total weight of the composition [p. 0099]. Beyer et al teaches additives may be present in the composition depending on the intended use of the curable silicone elastomer composition, wherein examples of additives include electrically conductive fillers, thermally conductive fillers, non-conductive filler different from silica filler (E) [p. 0099, 0100]. Beyer et al further teaches thermally conductive fillers include metal oxides (such as zinc oxide, and aluminum oxide) [p. 0102]. Zinc oxide and aluminum oxide are both known in the art to contain many neutral hydroxyl groups on their surfaces due to adsorption of water from air, as evidenced by Cao et al and Peri et al [Cao et al, p. 2, column 1; Peri et al, abstract]. Beyer et al is silent with respect to the limitations regarding the volume ratio of the silica filler (E) and additive fillers with respect to the total volume of the composition.
Matsumoto et al teaches a curable resin composition comprising: (A) a polysiloxane containing in a molecule at least two carbon-carbon double-bonds having reactivity with a SiH group; (B) a compound containing in a molecule at least two SiH groups; and (C) a heat-conductive filler [abstract; p. 0032]. Matsumoto et al teaches the curable resin composition is intended for use as a semiconductor or LED package as it has excellent heat resistance [p. 0002-0005]. Matsumoto et al teaches examples of the heat conductive filler include aluminum oxide and zinc oxide as their heat resistance and electric insulation are excellent and they also increase heat conductivity [p. 0063]. Matsumoto teaches, from the viewpoint of the heat conductivity of the curable resin composition, a volume ratio of heat-conductive filler at room temperature is most preferably at least 40% by volume of the entire composition, and even more preferably at most 75% by volume of the entire composition [p. 0066]. Matsumoto teaches if the heat conductive filler is less than 5% by volume, the heat-conductivity tends to become insufficient, and if it is over 90% by volume, the strength of the material tends to decrease or the molding process may be difficult [p. 0066].
Beyer et al teaches additives may be present in the composition depending on the intended use of the curable silicone elastomer composition, and does not appear to limit the amount thereof. In light of the teachings of Matsumoto et al, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Beyer et al with a volume ratio of 40% to 75% heat conductive filler relative to the entire composition in order to achieve excellent heat resistance/conductivity when the intended use for the composition of Beyer et al is a semiconductor or LED package. The heat conductive filler volume ratio of 40% to 75% with respect to the entire composition overlaps with the claimed volume ratio of 50 to 75%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 5: in the embodiment of Beyer et al discussed above, organopolysiloxane (A1) corresponds to applicants claimed second alkenyl group-containing polyorganosiloxane component. Beyer et al teaches the organopolysiloxane (A1) may have any structure, and examples of (A1) include vinyldimethylsiloxy-endblocked polydimethylsiloxane [p. 0045, 0049].
Regarding claim 6: Beyer et al exemplifies the use of a ‘chain extender’ HMe2SiO0.5 terminal poly(dimethylsiloxane) having a 0.15 wt % H as SiH and a viscosity of about 11 mPa-s, reading over [formula 2] [p. 0167]. Beyer et al teaches the chain extenders are straight chain organopolysiloxanes containing 2 silicon-bonded hydrogen groups on the terminal position [p. 0105]. Beyer et al is does not limit the number of repeat units in the linear siloxane portion of the chain extender, which, in the broadest interpretation, corresponds to m ≥ 1 of [formula 2]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Beyer et al also exemplifies Me3SiO¬0.5 terminal poly(dimethyl-co-methylhydrogen) siloxane having 0.69% H as SiH and a viscosity of 43.5 mPa-s [p. 0166]. the Beyer et al teaches organopolysiloxane (B2) may have general formula (VII):
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In formula (VII), Bayer et al teaches: x=0, y > 0, z ≥ 2, p ≥ 0, q ≥0 [p. 0082]. The ranges taught by Beyer et al overlap with the applicants claimed ranges for [formula 3] where p is 20 to 60 (corresponding to p of Beyer et al) and q is 3 to 20 (corresponding to z of Beyer et al). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 7: The exemplified organohydrogenpolysiloxane corresponding to claimed [formula 2], also referred to as first polyorganosiloxane component, has 0.15 wt % H as SiH, which is also understood as a content of silicon-bonded hydrogen of 1.5 mmol/g [p. 0167].
The exemplified organohydrogenpolysiloxane corresponding to claimed [formula 3], also referred to as second polyorganosiloxane component, has 0.69 wt % H as SiH, which is also understood as a content of silicon-bonded hydrogen of 6.9 mmol/g [p. 0167]. Although a content silicon-bonded hydrogens of 6.9 mmol/g is higher than the claimed range of 0.5 to 6 mmol/g, the broader teachings of Beyer et al embrace embodiments wherein the content of silicon-bonded hydrogens is lower as well as higher, depending on the respective values of p and z of formula (VII) [p. 0082]. Furthermore, Beyer et al is silent with respect to a range of silicone-bonded hydrogens for the polyorganosiloxanes of the composition. In light of this, the broader teachings of Beyer et al appear to obviously embrace an organohydrogenpolysiloxane of [formula 3] having a silicone-bonded hydrogen content of 0.5 to 6 mmol/g.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766