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 .
Claim Objections
Claim 1 is objected to because of the following informalities: A) “the number of an open pore” should instead be –the number of open pores--. B) the parentheses around “(Measurement method) The magnesium” should instead be –wherein in the measurement method the magnesium--. In other words i) the parenthesis needs to be removed, ii) the capitalizations need to be made lowercase, and iii) the measurement method cannot appear as its own sentence. C) “(double-click here)” is not a proper claim status modifier and needs to be corrected. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-7 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.
Regarding claim 1, the recitation of “8.0 x 10-4/µm2” is indefinite as a unit of measurement as it is not clear *what* is per µm2. It is assumed that the claim intended to recite 8.0 x 10-4 open pores/µm2 (assumed for the purpose of this Office action) or may have intended to recite 8.0 x 10-4 pores/µm2 or 8.0 x 10-4 number of pores/µm2, etc., but the intended unit is not clear. This includes claims 2-7 as they depend from claim 1.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Konishi et al. (JP 2018-131378 A; using US PGPub 2019/0359873 for English language citations; both cited on IDS of 7/14/2023).
Regarding claim 1, Konishi teaches a spherical magnesium oxide that has both high sphericity and a smooth surface resulting in a magnesium oxide filler material that has excellent moisture resistance and excellent filling properties when filling a resin (abstract; FIG 1; [0006]; [0014]; [0034]; [0068]). Konishi teaches the magnesium oxide is spray dried and calcined (instant powder) to obtain a material having a particle diameter D50 of from 3 to 200 µm, a sphericity of 1.00 to 1.20, a BET specific surface area of 0.01 to 1.00 m2/g as smoothness indicator, and an interparticle void volume of 0.1 to 0.8 cm3/g ([0007]; [0009]-[0012]; [0026]-[0027]).
As such, Konishi teaches a highly spherical and smooth magnesium oxide particle with few pores. Konishi does not utilize the measurement method as recited by the instant claim and as such is silent as to a value of 8.0 x 10-4/µm2 or less with respect to a number of open pores communicating with surface of the particle. However, it is noted that the method by which Konishi obtains the magnesium oxide material itself (see Example 1 at [0055]-[0056]) is substantially identical to the method by which the instantly claimed magnesium oxide powder is obtained (instant original specification; see pg41-43 at [0067]-[0068]).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Konishi teaches the claimed magnesium oxide material obtained by utilizing substantially the same components/ingredients in substantially the same amounts/ratios/concentrations in substantially the same process having substantially the same conditions and steps. The original specification does not identify a feature that results in the claimed open pore communication property outside of the magnesium oxide particles being obtained by the as noted method (instant original specification; see pg41-43 at [0067]-[0068]) which is also taught by Konishi (Example 1 at [0055]-[0056]). Therefore, the claimed properties, i.e. an open pore communication property of 8.0 x 10-4/µm2 or less as measured by the claimed measurement method, would naturally arise and be achieved by a the magnesium oxide obtained by the method of Konishi ("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 (see MPEP § 2112.01).
Regarding claim 2, Konishi teaches the magnesium oxide particles as set forth in claim 1 above. Konishi further teaches the magnesium oxide can be combined with alumina and/or silica sols ([0028])(instant ‘other’ inorganic filler).
Regarding claim 4, Konishi teaches the magnesium oxide particles as set forth in claim 2 above. Konishi further teaches incorporation into a resin to provide excellent thermal conductivity to said resin ([0034]-[0035]).
Regarding claims 5-7, Konishi teaches the magnesium oxide filler materials as set forth in claims 1-2 above and the resin composition as set forth in claim 4 above. Konishi further teaches use and application in various fields including heat dissipation applications ([0036])(instant heat dissipation parts).
Claim Rejections - 35 USC § 103
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.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Konishi et al. (JP 2018-131378 A; using US PGPub 2019/0359873 for English language citations) in view of Sakamoto et al. (WO 2018/221662 A1; using US PGPub 2020/0157350 as English language equivalent for citations).
Kinishi teaches the magnesium oxide particles as set forth in claim 1 above and teaches use in combination with alumina and/or silica sols as set forth in claim 2 above. Kinishi does not specifically teach the filler combination as recited in instant claim 3.
However, Sakamoto teaches similar thermally conductive resin compositions comprising a (A) thermally conductive filler combination and (B) resin (abstract; [0008]-[0012]). Sakamoto teaches the thermally conductive filler comprises a combination of three fillers of differing particle sizes, wherein: the larger filler has a particle size of 20 µm or more, the intermediate filler has a particle size of more than 1 µm to less than 20 µm, and the smaller filler has a particle size of less than 1 µm ([0027]), as measured by laser light diffraction ([0028]). Sakamoto further teaches the larger filler is 30 to 70% of the filler combination with the remainder being the intermediate and smaller filler (70 to 30% remainder) ([0027]). Sakamoto teaches preferred fillers comprise alumina, magnesium oxide, etc. where a combination of different inorganic fillers of different chemical species are used in combination ([0025]). Sakamoto further teaches, by example, filler combinations where the intermediate and smaller fillers are both aluminum oxides and the larger filler is a different species (Ex6), i.e. aluminum nitride, where Sakamoto teaches aluminum nitride is equivalent and interchangeable with magnesium oxide ([0025]).
Sakamoto and Kinishi are analogous art and are combinable because they are concerned with the same filed of endeavor, namely thermally conductive resin compositions comprising magnesium oxide, and filler combinations thereof, which are suitable for use heat dissipation applications. At the time of filing a person having ordinary skill in the art would have found it obvious to incorporate into the filler composition of Sakamoto the 3-200 µm spherical magnesium oxide filler of Kanishi and would have been motivated to do so as Kanishi teaches the spherical magnesium oxide is suitable for use in resin compositions as the magnesium oxide has excellent moisture resistance and excellent filling properties and results in excellent heat dissipation properties ([0006]; [0034]; [0036]) and further as Sakamoto teaches filler combinations of differing particle sizes is well-known for incorporation into resin compositions to obtain increased filler ratio without resulting in undesirable viscosity issues ([0026]-[0027]), where magnesium oxide is a suitable and desirable larger thermally conductive filler of greater than 20 µm ([0025]-[0028]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
A) Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/025,212 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending applications are directed to substantially similar magnesium oxide filler powders and to filler compositions comprising such, resin compositions comprising such, and parts comprising such.
The copending claims differ from the instant claims in that the copending claims are silent as to a value of 8.0 x 10-4/µm2 or less with respect to a number of open pores communicating with surface of the particle as measured as claimed. However, the magnesium oxide powder as instantly claimed and the magnesium oxide powder of the copending application are obtained by substantially identical methods (instant original specification [0067]-[0068]; copending original specification [0063]). 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 (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
B) Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/026,415 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending applications are directed to substantially similar magnesium oxide filler powders and to filler compositions comprising such, resin compositions comprising such, and parts comprising such.
The copending claims differ from the instant claims in that the copending claims are silent as to a value of 8.0 x 10-4/µm2 or less with respect to a number of open pores communicating with surface of the particle as measured as claimed. However, the magnesium oxide powder as instantly claimed and the magnesium oxide powder of the copending application are obtained by substantially identical methods (instant original specification [0067]-[0068]; copending original specification [0062]). 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 (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
C) Claims 1 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 17/593,958 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending applications are directed to substantially similar magnesium oxide filler powders and to resin compositions comprising such (instant heat dissipating part).
The copending claims differ from the instant claims in that the copending claims are silent as to a value of 8.0 x 10-4/µm2 or less with respect to a number of open pores communicating with surface of the particle as measured as claimed. However, the magnesium oxide powder as instantly claimed and the magnesium oxide powder of the copending application are obtained by substantially identical methods (instant original specification [0067]-[0068]; copending original specification [0047]). 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 (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
D) Claims 1 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,912,847 (Application No. 17/268,071). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant application and the granted patent are directed to substantially similar magnesium oxide filler powders and to resin compositions comprising such (instant heat dissipating part).
The claims of the granted patent differ from the instant claims in that the granted claims are silent as to a value of 8.0 x 10-4/µm2 or less with respect to a number of open pores communicating with surface of the particle as measured as claimed. However, the magnesium oxide powder as instantly claimed and the magnesium oxide powder of the granted patent are obtained by substantially identical methods (instant original specification [0067]-[0068]; granted patent original specification [0045]). 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 (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
E) Claims 1 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,180,688 (Application No. 16/481,445). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant application and the granted patent are directed to substantially similar magnesium oxide filler powders and to resin compositions comprising such (instant heat dissipating part).
The granted patent claims differ from the instant claims in that the granted claims are silent as to a value of 8.0 x 10-4/µm2 or less with respect to a number of open pores communicating with surface of the particle as measured as claimed. However, the magnesium oxide powder as instantly claimed and the magnesium oxide powder of the granted patent are obtained by substantially identical methods (instant original specification [0067]-[0068]; granted patent original specification [0037]). 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 (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/Primary Examiner, Art Unit 1767