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 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 Morita et al (US PGPub 2016/0338666).
Regarding claim 1, Morita teaches a lens forming composition comprising a silicone rubber and metal oxide particles, wherein the metal oxide particles have an oil absorption amount of 20 mL or less per 100 g (abstract; [0012]). Morita teaches the metal oxide particles ([0057]) have the oil absorption of 20 mL or less per 100g as measured by the refined linseed oil method JIS K 5101-13-1 or the boiled linseed oil method JIS K 5101-13-2 ([0058]). Morita teaches the metal oxide particles having the desired properties can be MgO particles ([0067]).
Regarding claims 2 and 4, Morita teaches the composition as set forth above, where the silicone rubber (instant resin) and metal oxide composition (instant resin composition) may further include an inorganic support material such as aluminum oxide ([0090]) and/or may include zinc oxide as a vulcanization aide and/or other inorganic additives including alumina, silica, etc. ([0070]) (instant filler other than magnesium oxide particles).
Regarding claims 5-7, Morita teaches the composition as set forth in claims 1-2 and 4 above. Morita teaches industrial uses include molded acoustic lenses and ultrasound probes/apparatuses ([0131]). Morita does not specifically teach a ‘heat dissipation part’. However, as the claimed heat dissipation part contains the same materials as the molded lens of Morita, it is held that the articles of Morita read on the claimed part.
It is further noted that the recitation that the basic formulation is to be used as a heat dissipation part does not confer patentability to the claims since the recitation of an intended use does not impart patentability to otherwise old compounds or compositions (see In re Tuominen, 671 F.2d 1359, 213 USPQ 89 (CCPA 1982)). Furthermore, the recitation of a new intended use for an old product does not make a claim(s) to that product patentable (see In re Schreiber, 44 USPQ 2d 1429, (Fed. Cir. 1997)).
Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishida et al. (WO 2018/180123 A1; using US PGPub 2020/0017692 as English language equivalent for citations).
Regarding claim 1, Nishida teaches thermally conductive resin compositions comprising a resin and coated magnesium oxide particles having an oil absorption of less than 25 mL/100g (abstract; [0010]-[0012]; [0018]).
Nishida teaches the oil absorption measurement was obtained using apparatus S-500 ([0052]) but does not specifically teach the JIS (Japanese Industrial Standard) test method used. However, Nishida teaches an oil absorption that meets the claimed limitation, regardless of the method by which the testing was done absent a showing of evidence. 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)).
Regarding claim 5, Nishida teaches the thermally conductive resin compositions as set forth above. Nishida further teaches the composition provides thermal conductivity properties to thermal interfaces, heat dissipating grease and pads, electronic components, LSI chips, substrates, smartphones, LED bulbs, etc. ([0039]-[0041]).
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. (WO 2018/221662 A1; using US PGPub 2020/0157350 as English language equivalent for citations) in view of Nishida et al. (WO 2018/180123 A1; using US PGPub 2020/0017692 as English language equivalent for citations).
Regarding claims 1-3, Sakamoto teaches thermally conductive resin compositions comprising a (A) thermally conductive filler and (B) polysiloxane 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 ([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])(instant other inorganic filler than magnesium oxide). Sakamoto further exemplifies filler combinations where the intermediate and smaller fillers are both aluminum oxides and the larger filler is a different species (Ex6, larger filler is aluminum nitride).
Sakamoto teaches the larger filler is selected from fillers including alumina, magnesium oxide, aluminum nitride, etc. ([0025]), and the exemplified larger filler of aluminum nitride (Ex6) is taught as equivalent and interchangeable with magnesium oxide at [0025]) (MPEP 2144.06), where the larger filler is 30-70% of the filler total (instant 40-70% magnesium oxide to 30-60% alumina). Sakamoto renders obvious the larger filler being magnesium oxide but does not specifically teach magnesium oxide having an oil absorption of 2.5 mL/10g or less. However, Nishida teaches magnesium oxide particles having an oil absorption of less than 25 mL/100g (abstract; [0010]-[0012]; [0018]) and a particle size D50 of 10 to 80 µm, as measured by laser diffraction ([0011]; [0025]; [0028]-[0029]), which are suitable for inclusion into resin compositions usable for thermal interface materials, heat dissipating pads and greases, electronic components, etc. ([0039]-[0041]). Nishida teaches the oil absorption is related to flowability and filling efficiency, wherein an oil absorption of less than 25 mL/100g results in improved filling of the resin as well as improved thermal conductivity properties thereof ([0029]). Nishida and Sakamoto are analogous art and are combinable because they are concerned with the same field of endeavor, namely thermally conductive resin compositions comprising magnesium oxide which are suitable for use in electronic devices. At the time of filing a person having ordinary skill in the art would have found it obvious to use a magnesium oxide of Nishida as the magnesium oxide of Sakamoto and would have been motivated to do so as Sakamoto invites the larger filler particles of greater than 20 µm to be magnesium oxide and further as Nishida teaches similarly sized magnesium oxide fillers having oil absorption values of 25 mL/100g or less are advantageous as they improve filing efficiency and improve resin composition thermal conductivity properties ([0029]).
Nishida teaches the oil absorption measurement was obtained using apparatus S-500 ([0052]) but does not specifically teach the JIS (Japanese Industrial Standard) test method used. However, Nishida teaches an oil absorption that meets the claimed limitation, regardless of the method by which the testing was done absent a showing of evidence. 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)).
Regarding claims 4-7, Sakamoto in view of Nishida renders obvious the compositions as set forth in claims 1 and 2 above. Sakamoto further teaches the above noted resin compositions comprising a polyorganosiloxane resin (B). Sakamoto further teaches the thermally conductive cured products suitable for wide use including radiator members of electronic devices, electronic parts. Etc. ([0095]; [0006]; [0008])(heat dissipation parts).
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 an oil absorption if 2.5 mL/10g or less according to JIS K 5101-13-1. 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 [0062]; 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. 18/025,251 (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 an oil absorption if 2.5 mL/10g or less according to JIS K 5101-13-1. 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 [0062]; copending original specification [0067]). 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.
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