DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2026/04/01 has been entered.
This Office action is in response to Applicant's amendment filed 2026/04/01. Applicant has amended claims 1, canceled claim 6, and has added new claims 9-13. Currently, claims 1-5 and 7-13 remain pending in the application.
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 1-5 and 7-13 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 1, on lines 4-5, states the limitation “organic solvent having a solubility parameter (SP value) of 7.8 to 10.1” which renders it indefinite. This is simply because there are an innumerable plethora of solvents available that would satisfy this limitation but at the same time do render the claimed composition ambiguous and indefinite, since the solvent is part of claimed components of the composition and therefore, applicant is required to define this limitation unambiguously.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-5, 7-9, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kendall (US 2007/031686 A1) in view of Kaneko (JP2019 167429 A) as evidenced by Examples of commercially available ZEFIAC (Data Sheet, 2025).
Regarding claim 1, Kendall teaches a thermally conductive grease (abstract, 35) for electrical equipment (i.e. microprocessor, 6, 10-11) composition comprising a liquid resin containing (A) polyols and polyethers; [21], and inorganic filler such as aluminum nitride and aluminum oxide (alumina); [24, page 6: table], with particle sizes (i.e. average diameter)of 0.3 to 30 microns; [25].
Regarding claims 1-4 and 7, Kendall does not teach the instantly claimed (B) poly(meth)-acrylic based particles soluble in organic solvent with a solubility parameter of 7.8 to 10.1. However, the related art of Kaneko teaches a thermally (heat) sensitive resin composition comprising particles of polymethacrylic acid such as Zefiac F325; [72], as is identically disclosed by applicant’s disclosure; [Pg.Pub. 2023/0392008 A1: 61], thus having the same SP values. Note that the Kaneko’s Zefiac F325 has particle size of 1 micron which renders the limitation obvious. Kendal and Kaneko are related art that of application/utilization of polymethacrylic polymers in particulate form due to their versatile physical properties in different chemical matrices. It should be noted that instant Pg.Pub. uses the polymer particle for its gelation properties as mean of heat dissipation: [25]. Kendall, on the other hand, teaches the amounts of carrier oil as low as 0.5, 1 or 2%; [19], and polyether dispersant for liquid resin in amount of 0.5-50%; [23]. As consequence, at the time before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to utilize the polymethacrylic acid particles of Kaneko by adding it to Kendall’s liquid resin (grease) with the motivation of enhancing the resin’s stability and facilitating its heat transfer by dissipation. Kaneko teaches (instant claims 2-4, 7) particle size of 0.3-10 micron; [74], and a degree of polymerization 4000-40,000; [72], polyalkyl methacrylic particles; [71, 73], wherein the composition is gelled (swelling) by heating; [75, 121].
Regarding claims 5 and 8, Kendall teaches a resin comprising a carries oil in the range of 0-49.5%; [6, 19], and dispersant no more than 20 or 10%; [23], thus rendering the above 50% amount of polyether (in absence of lower amounts of carrier oil) in the resin composition.is rendered obvious. Kendall (claim 8) teaches a micro-processor, a heat generating body; [4, 10-11, 35], and the instantly claimed grease as a heat dissipating grease; [abstract].
Regarding claims 9, 11 and 13, Kendall teaches the particle sizes of 0.3 to 30 microns present in composition which overlaps with instantly claimed amounts of 20-40 and 1-10 microns (claim 9); [25], thus rendering the Ca-1 and Cb-1, Ca-2 and Cb-2 obvious. At the time before the effective filing date of invention, it would have been obvious to select the instantly claimed sizes of aluminum nitride and aluminum oxide (with different heat conductivity) for adjusting the compositions heat conductivity for desired electrical performance of equipment. With respect to claim 13, Kendall teaches a silane coupling agent of isooctyltrimethoxy silane (a water repellant agent) in the amount of 0.05 to 2 parts by weight of thermal conductive composition; [68]. Note that quantity this amount is directly dependent of the size of electrical equipment containing the above composition and thus subject to obvious routine laboratory experimentation.
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kendall (US 2007/031686 A1) in view of Kaneko (JP2019 167429 A) as applied to claim 1 and further in view of Terada et al. (JP 2012/102301 A).
Regarding claims 10 and 12, Kendal does not teach the aluminum nitride particles as instantly claimed. However, the analogous art of Terada teaches a thermally conducting resin composition layer comprising aluminum nitride particles with the particle sizes (i.e. averaged) in the ranges of 5-45 microns wherein the mas ratio of particles more than 10 micron to particles of less than 10 microns is in the range of 1/10 to 10/1 which renders the instantly claimed ratios obvious; [39, 41, claim 5]. At the time before the effective filing date of invention, it would have ben obvious to person of ordinary skill in the art to select the instantly claimed mass ratios to provide an optimal heat transfer (i.e. temperature control) for electronic equipment’s operation.
Response to Arguments
Applicant's arguments filed 2026/04/01 have been fully considered but they are not persuasive. Because;
Applicant’s assertion on 112(b) rejection in view of claim 1 amendment is persuasive and the rejection is withdrawn.
In response to applicant’s argument (pages 8-9 2nd paragraph) that; “Thus, the cited references are not merely directed to different embodiments of the same technology. Kendall is directed to a grease positioned on a microelectronic heat source, whereas Kaneko is directed to an epoxy matrix resin system for impregnating reinforcing fibers and suppressing resin flow during molding. Kendall, claims 24-26; Kaneko,[0075], [0086], [0101]-[0105]. The Office Action's rationale that both references concern "application/utilization of polymethacrylic polymers in particulate form" is too generalized to supply a reasoned motivation to transplant Kaneko's prepreg thickening particles into Kendall's grease composition while preserving the particular claim requirements”, it is noted that the chemical properties of poly(methacrylic) based polymers (such as swelling) which is important in providing thermal control condition in electronic equipment is identically shared by applicant’s own disclosure (instant Pg.Pub.: 25, 52) and prior art of Kaneko under “Zefiac F325” (65, 69, 72) providing the very reason for combination of Kendall and Kaneko. In this case, it should be noted that; “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property, which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In short, the argument that Zofiac’s chemical properties would be completely different in Kaneko composition from applicant’s instant composition is simply not persuasive. Chemical compounds, in general, do possess multiple characteristics, simultaneously, and are utilized in variety compositions and their applications.
In response to applicant’s argument (page 10) that; “Kaneko Teaches Thickening in an Epoxy Prepreg Environment, Not a Grease Composition for Thermal Interface Use Kaneko's thickening particles function in a very different system and for a very different purpose than those recited in the present claims. Kaneko explains that
component [D] swells in an epoxy resin composition upon heating…”, this argument is not persuasive for the same reasons explained above. Please not that, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant’s argument regarding new claims 9-13, please see the Office action above.
It is, respectfully, suggested that perhaps a more concise and distinct amendment of instant claim(s) would, probably, be more effective in further distinguishing the instant claims from the teaching of combination of prior arts of record.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dr. M. Reza Asdjodi whose telephone number is (571)270-3295. The examiner can normally be reached on 10 AM- 8 PM Flex..
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/M.R.A./Examiner, Art Unit 1767
2026/07/23
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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