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 .
This communication is responsive to the claim set filed 04/15/2026. Claims 17, 19-29 are pending. The elected claims 17, 19-21 and 24-27 are under consideration in this Office Action.
Non-elected Claims 22-23 and 28-29 are withdrawn. Claims 1-16 and 18 are cancelled.
Any rejections and/or objections made in the Office Action dated 12/15/2025 and not repeated below are hereby withdrawn.
Claims 17, 19-21 and 24-27 are rejected for the reasons set forth below.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 04/15/2026. In particular, claim 17 has been amended to limit the compound is represented by general formula (2) and claim 24 has been amended to limit the compound is represented by general formula (4). Thus, the following action is properly made final.
The text of those sections of Title 35 U.S. Code not included in this action can be found in a previous Office Action.
Claim Objections
Claims 17 and 24 are objected to because of the following informalities:
Claim 17 line 2 “an additive for synthetic reins” should read –an additive for the synthetic resin--.
Claim 24 lines 1-2 “an additive for synthetic reins” should read –an additive for the synthetic resin--.
Appropriate correction is required.
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 17, 19-21 and 24-27 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.
Claim 17 defines that X represents a divalent group, also defines that X is a group represented by general formula (6). Thus, the claim is indefinite because one ordinary skilled would not understand which scope of X Claim 17 refers to. In according with claims must be given be their broadest reasonable interpretation (MPEP 2111), X is interpreted as a divalent group in this Office Action.
Claim 24 defines that X1 and X2 are each independently represent a divalent group, also defines that X1 and X2 are each independently a group represented by general formula (6). Thus, the claim is indefinite because one ordinary skilled would not understand which scope of X1 and X2 Claim 24 refers to. In according with claims must be given be their broadest reasonable interpretation (MPEP 2111), X1 and X2 are interpreted as each independently represent a divalent group in this Office Action.
Claims 19-21 and 23-27 are rejected under 35 U.S.C. 112(b) for being dependent on claim 17 and claim 24, respectively.
Claim Rejections - 35 USC§ 102
Claims 17-20 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Crook
Et al. (GB1413172).
Regarding Claims 17-20, Crook teaches a composition of a stabilizer compound and polypropylene (Examples 19 and 23). Wherein the stabilizer has the structure of:
PNG
media_image1.png
472
545
media_image1.png
Greyscale
(Example 12), the compounds read on the claimed formula (2) wherein W1 and W2 each independently a substituted phenyloxy group;
or the structure of:
PNG
media_image2.png
234
260
media_image2.png
Greyscale
(Example 20). The compounds read on the claimed formula (2) wherein W1 and W2 each independently a group of general formula (1).
Claim Rejections - 35 USC§ 103
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US2021/0304916
Al) in view of Crook et al. (GB1413172), as applied to Claim 17 above.
Lee teaches a composition comprising a blend of polyethylene and a polyolefin elastomer
([0012]), suitable polyolefin elastomers include an ethylene-propylene rubber ("EPR"), and ethylene propylene-diene monomer ("EPDM"), or combinations thereof ([0015]). Lee further teaches that the composition comprising a UV stabilizer which includes triazines ([0026]).
The difference between Lee and instant Claim 21 is that Lee is silent on the UV stabilizer is a
compound having the claimed structure.
However, Crook teaches a UV stabilizer being a triazine compound (page 1, left column, lines
29-32) wherein the triazine compound comprises the structure reading on the claimed formula. Crook further teaches the triazine compound is a suitable UV stabilizer for polyethylene and polypropylene materials (page 2, the bottom left column to the top right column). In view of such teaching, one ordinary skilled artisan would have been motivated, before the effective filing date of the instant application, to use the triazine compounds taught by Crook in the composition of Lee because the compounds are suitable UV stabilizers for the polyethylene and polypropylene materials.
Claims 17, 19-21 and 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki et al. (US10,647,094 B2, EFD: 03/24/2019) in view of Hitomi et al. (WO2019013261 A1 citing US2020/0180957 as English translation).
Regarding Claims 17 and 19-21, Sasaki teaches that a thermally conductive material comprises boron nitride in a matrix (ab.) wherein the matrix can be a combination of thermoplastic resin, such as polyethylene and polypropylene resin, and an elastomer, such as a polyolefin elastomer, or ethylene-propylene-diene rubber (5:55-6:3).
The difference between Sasaki and the instant claims is that Sasaki is silent on the thermally conductive material comprising the claimed compounds.
However, Hitomi teaches a thermally conductive material (claim 14) comprising boron nitride and a compound (claim 9), wherein the candidate compound includes:
PNG
media_image3.png
357
438
media_image3.png
Greyscale
(p34). The compound reads the instant claimed formula (2) wherein W1 and W2 each independently represent a substituted phenyloxy group and a monovalent group represented by general formula (1).
Hitomi teaches that the compound is a surface modifier for boron nitride and modified boron nitride has improved dispersibility with resin and consequently has improved thermally conductive properties ([0005]). In view of such benefits, one ordinary skilled artisan would have been motivated before the effective filing date of the instant application, the incorporate the C-54 compound into the thermally conductive material of Sasaki because Table 2-3 (P39) shows surface modified boron nitride obtained A in both dispersibility and thermally conductive properties.
Regarding Claims 24-27, the C-54 compound reads on the instant claimed formula (4) wherein W3 is a substituted phenyloxy group.
Response to Arguments
Applicant’s arguments on Hitetoshi (JPS6343918 A) and Li (CN104725665 A), with respect to claims 17 and 24 have been considered but are moot because the rejections based on the references are withdrawn.
Applicant's arguments Crook and Hitomi have been fully considered but they are not persuasive. Applicant argued that neither Crook nor Hitomi discloses a compound having the structural unit of X being represented by general formula (6); however, as stated at para. 9, the instant Claims 17 and 24 are interpreted X, X1 and X2 being a divalent group in this Office Action.
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 HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
Prosecution Insights