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 .
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-11, 13-14 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2002146155 in view of Bekemeier (US 20130030115-both appear on PTO 892).
JP teaches an aqueous resin dispersion obtained by copolymerizing a mixture of 0.5-30 wt % alpha-beta ethylenically unsaturated monomers containing a polyorganosiloxane (monomer C of present claim 1); 0.01-5 wt% of a radical polymerizable light stabilizer (monomer B of present claim 1) ; 0.1-30 wt% of an alpha-beta ethylenically unsaturated monomer containing carboxy groups (monomer A of present claim 1) and an alpha-beta ethylenically unsaturated monomer other than the above mentioned monomers (see abstract).
JP teaches that the carboxyl group containing monomer may be 2-carboxyethyl methacrylate, which reads on monomer A (see page 6, first paragraph). The radically polymerizable light stabilizer can be a piperidyl methacrylate which reads on monomer B (see page 5, last 4 paragraphs); and a polyorganosiloxane may be a methacryloxypolydimethylsiloxane such as Silaplane FM0711 which reads on monomer C (see page 4, last line through page 5, lines 1-6). Silaplane has a known molecular of 1,000-10,000 (see product data sheet).
JP teaches pigments such as aluminum oxide, zinc oxide and boron nitride. These compounds meet the limitation of being thermally conductive fillers having a thermal conductivity of 10 W/mk or more. JP meets the limitations of the claims other than the differences that are set forth below.
JP does not specifically teach 95 to 5 parts by weight of a silicone resin (component b of present claim 1). However, Bekemeier teaches this difference.
Bekemeier teaches an aqueous dispersion of a silicone resin (see abstract). The dispersion is useful for forming coatings on various substrates that are substantially free of co-surfactants or volatile organic solvents (see para 0003). The silicone resinous structures of Bekemeier are organopolysiloxanes. Organopolysiloxanes are polymers containing siloxane units independently selected from (R3SiO0.5), (R2SiO), (RSiO1.5), or (SiO2) siloxy units (see para 0045). Example 2 discloses that the silicone resin has a viscosity of 14cP (14mPa.s).
It would have been obvious to one of ordinary skill in the art to combine the water dispersible silicone resin of Bekemeier with the water dispersible copolymer of JP because It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 205 USPQ 1069, 1072 (CCPA 1980). JP and Bekemeier are interested in producing coating by reducing the amount of solvent used in their processes.
With respect to the proportions, a prima facie case of obviousness exists because it would have been obvious to one of ordinary skill in the art to optimize the proportions of the components through routine experimentation for the best results. As to optimization of results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990).
With respect to the molecular weight of the copolymer, JP teaches that the methacryloxypolydimethylsiloxane (Silaplane FM-0711) has a molecular weight of at least 1,000 up to 10,000 and given the other monomers in the copolymer one skilled in the art could easily arrive at a molecular weight of at least 5,000.
Claims 12, 15 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art does not teach or suggest the use of a surface treatment agent, the silicone resin comprising the claimed molecules or an electronic device comprising the thermally conductive resin composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18030210/20251109