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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim 1 contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is amended by the term “having a single average particle diameter of 0 .1 to 40 µm….”, wherein the limiting word “single” has not been disclosed before and in fact on the pages of 26-27 of the submitted specification a variety of Zefiac 300 series are disclosed as a component of the claimed grease composition with no reference to “having a single average particle diameter”..
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 1-8 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 claims 1 and 6, 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; [24].
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 or 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].
Response to Arguments
Applicant's arguments filed 2025/12/08 have been fully considered but they are not persuasive. Because;
In response to applicant’s argument (pages 5-6) that; “wherein the thermally
conductive particles are a mixture of at least three distributions of thermally
conductive particles." (Emphasis added). Kendall at Abstract; see also claims 1-3, 7-9, 11, 13-15, 17-19, 28, and 29, and paragraphs [0006}, [0025}-[0026}, and [0029}-[0030}. In contrast, amended claim 1 of the present application is directed to a single average particle diameter. In other words, Kendall teaches away from amended claim 1.”, the argument is not persuasive for two reasons. I)- The term “single average particle diameter: has not been disclosed by the applicant’s submitted specification. II)- The guiding independent claim 1 language of the “comprising” type and thus allows for presence of any other similar ingredient or component that does not alter the physio-chemical nature of composition is permissible.
In response to applicant’s argument (pages 6-7) that; “Based on this, it is clear that at least one of the purposes of Kendall is to provide improved flowability to allow for easier application. Further, Kendall achieves this purpose and advantage by providing at least three distributions of the thermally conductive particles. Thus, one of ordinary skill in the art would not modify Kendall to have only a single average particle diameter as recited in amended claim 1, as this would go against the purpose of Kendall. Therefore, Kendall does not teach each feature of amended claim 1.”, it is noted that the applicant’s assertion regarding Kendal’s paragraph [0029] on middle diameter distribution, largest diameter distribution and on mean diameter of smallest distribution has no bearing on the scope of the instant claim 1, since the limitation is only construed according to its explanation from the submitted specification (pages 26-27). and no more.
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dr. Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.R.A./Examiner, Art Unit 1767
2026/02/02
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767