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 .
The rejection of claims 1-11 under 35 U.S.C. 103 as being unpatentable over Ota (US-WO-2019021825-A1) in view of Hu (WO-202013334-A1) is withdrawn in view of amendments and arguments.
Response to Arguments & Amendments
Applicant’s arguments, see page 7-11, filed 13 August 2026, with respect to the rejection of claims 1-11 under 35 U.S.C. 103 as being unpatentable over Ota (US-WO-2019021825-A1) in view of Hu (WO-202013334-A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Ishihara (WO-2020116057-A1).
Please note: The paragraph citations correspond to the English language equivalent Ishihara (US-20220220354-A1)
Applicant argues unexpected results for composition comprising aluminum nitride particles having a particle size within the claimed D-2 particle size and volume range yields the achievable thermal conductivity of 7 W/mK or more (see page 11).
In response, the showing is only true for the components and their proportions recited therein. It has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Ishihara (WO-2020116057-A1) teaches a cured material of a thermally conductive silicone composition comprising a specific combination of fillers: 21 to 29 vol% crushed alumina with an average particle size of 1 to 4 μm (Component B-6), 4 to 9 vol% unsintered crushed aluminum nitride with an average particle size of 40 to 60 μm (Component B-2), and 5 to 9 vol% spherical alumina with an average particle size of 60 to 80 μm (Component B-3)(paragraphs [0027]–[0033]). Furthermore, Ishihara demonstrates an embodiment wherein the aluminum nitride content is within 20 vol%, the remaining heat-conductive filler constitutes 70 vol% or more of the total volume, and the resulting thermal conductivity is 7 W/mK or higher (Table 1, Example 1). Consequently, these disclosures directly overlap with the presently claimed filler components and volume ranges.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP §2144.05(I). As such, the teaching of Ishihara, when combined with general knowledge in the art, render the claimed results obvious.
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 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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ishihara (WO-2020116057-A1) in view of Ota (US-WO-2019021825-A1).
Please note: The paragraph citations correspond to the English language equivalent Ishihara (US-20220220354-A1) and Ota (US-20200270500 A1).
With regard to claim 1, Ishihara teaches a cured material of a thermally conductive silicone composition comprising (Abstract):
(A) organopolysiloxane having at least two alkenyl groups in a molecule with a viscosity of 100 and 600 mPa-s (para [0107]);
(B) a thermally conductive filler comprised of:
(B-6) 21 to 29 vol % crushed alumina having an average particle size of 1 to 4 μm;
(B-2) 4 to 9 vol% unsintered crushed aluminum nitride having an average particle size of 40 to 60 μm;
(B-3) 5 to 9 vol% spherical alumina having an average particle size of 60 to 80 μm (paras [0027-0033]), wherein the aluminum nitride is within 20 vol%, the combined volume of the heat conductive filler is 70 vol or more, and the thermal conductivity is 7 W/mK or higher (Table 1, Example 1);
a hydrosilylation addition reaction catalyst (para [0090 and 0091,
an organohydrogenpolysiloxane used as an addition vulcanizing agent (crosslinking agent) has two or more hydrogen atoms bonded to a silicon atom (SiH groups) in one molecule (para [0090 and 0091];
(C) a surface treatment agent comprised of:
(C-1) is an alkoxysilane compound represented by the following general formula (para [0080]):
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wherein R2 independently represents an alkyl group having 6 to 15 carbon atoms, R3 independently represents an unsubstituted or substituted monovalent hydrocarbon group having 1 to 12 carbon atoms, R4 represents an independent alkyl group having 1 to 6 carbon atoms, “a” represents an integer of 1 to 3, and “b” represents an integer of 0 to 2, where a+b is an integer of 1 to 3;
and (C-2) of the following structure:
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wherein R5 independently represents an alkyl group having 1 to 6 carbon atoms, and “c” represents an integer of 5 to 100 (paras [0080-0083]).
This composition overlaps with the claimed components of the present invention of Ishihara and the claimed elements of A, B, C, D, D-1, D-2, D-3, E, E-1, E-2, curability, and thermal conductivity.
However, Ishihara does not explicitly teach the amount of silicon atom-bonded hydrogen atoms to the relative alkenyl groups or the ratio of the surface treatment agents.
In the same field of endeavor, Ota teaches a thermally-conductive silicone composition comprising (Abstract):
(A) An alkenyl group-containing organopolysiloxane exhibiting a viscosity of 10 to 100,000 mPa · s at 25 ° C (para [0015]);
(B) An organohydrogenpolysiloxane: provided in an amount such that the ratio of silicon-bonded hydrogen atoms (B) to alkenyl groups in component (A) is approximately 0.2:1 to 5:1 moles (para [0016]);
(C) A catalytic amount of a hydrosilylation catalyst (para [0017]);
(D) a thermally conductive filler comprised of (para [0030]):
(D-1) boron nitride powder having an average particle size of 0.1 to 30 μm;
(D-2) boron nitride powder having an average particle size of 0.1 to 50 μm;
(D-3 ) Spherical aluminum oxide powder having an average particle diameter of 0.01 to 50 μm; and/or mixtures thereof;
(E) A silane-coupling agent (e.g. decyltromethoxysilane) that satisfies claimed structure (E-2, para [0095]);
and (F) A specific terminal hydrolysable silyl-group-containing organopolysiloxane that satisfies the claimed structure (E-1, (ii), para [0102]):
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Wherein R 4 represents identical or different monovalent hydrocarbon groups, selected from linear alkyl or alkenyl groups; R 5 represents an oxygen atom or a divalent hydrocarbon group (e.g. an alkylene group); R 2 independently represents an alkyl group; p is an integer of 100 to 500; and d is an integer of 1 to 3 (para [0103]).
This composition overlaps with the claimed components of the present invention of Ishihara and the claimed elements of A, B, C, D, D-1, E, E-1, E-2, curability, and thermal conductivity.
Furthermore, Ota teaches that the amount of silicon-bonded hydrogen atoms in component (B) must be at least 0.2 to 5 mol per mole of alkenyl groups in component (A) (which reads on the claimed range). This specific range is critical for optimizing the formation of the thermally conductive silicone gel cured product, as well as ensuring its releasability and repairability. Specifically, if the silicon-bonded hydrogen atom content falls below the lower limit, the composition may exhibit insufficient curing. Conversely, exceeding the upper limit results in an excess of silicon-bonded hydrogen atoms, which can impair the releasability and repairability of the resulting cured product (para [0051]).
Ota further teaches that the mass ratio of component (E) to component (F) should ideally range from 5:95 to 95:5 (which reads on the claimed range). To achieve the desired properties, both components must be utilized concurrently within this specified range. If either component is omitted, or if the mass ratio falls outside this range, the composition's fluidity, gap-filling capabilities, and thixotropic properties cannot be sufficiently enhanced (para [0112]).
With regard to the silicon atom bonded hydrogen to alkenyl ratio, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the organohydrogenpolysiloxane of Ishihara. Specifically, to the amount of silicon-bonded hydrogen atoms to alkenyl parameter established in Ota. Ota would guide one having ordinary skill in the art to employ within the parameter that ensures proper cured product formation, releasability, and repairability (para [0051]). The combined references collectively teach overlapping components for identical applications. A person of ordinary skill in the art prior to the effective filling date would have recognized the utility of this configuration, as Ishihara can be provided with an organohydrogenpolysiloxane. Therefore, given the overlapping components disclosed in a single composition, a person of ordinary skill in the art would make the modification with a reasonable level of success.
With regard to surface treating agent ratio, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the mass ratio of the surface treating agents (C-1 and C-2) of Ishihara. Specifically, to the mass ratio parameter established in Ota. Ota would guide one having ordinary skill in the art to employ within these parameters optimizes fluid dynamics, gap-filling capabilities, and thixotropic properties (para [0112]). The combined references collectively teach overlapping components for identical applications. A person of ordinary skill in the art prior to the effective filling date would have recognized the utility of this configuration, as Ishihara can be provided with the respective surface treating agents (C-1 and C-2). Therefore, given the overlapping components disclosed in a single composition, a person of ordinary skill in the art would make the modification with a reasonable level of success.
With regard to claim 2, Ishihara teaches that heat-conductive fillers, distinct from component (B-i), generally include non-magnetic metals such as copper and aluminum; metal oxides such as alumina, silica, magnesia, and zirconia; and metal nitrides such as aluminum nitride (excluding (B-i)), silicon nitride, and boron nitride (paragraph [0073]). This disclosure reads on the claimed aluminum powder and aluminum oxide powder.
With regard to claim 3, Ishihara exemplifies components B-6 (2 µm alumina) and B-6-1 (0.7 µm alumina) (Table 1, paragraph [0108]), which reads on the claimed components D-1-1 and D-1-2.
However, Ishihara does not teach the mass ratio when utilized together.
Ota teaches a 50:50 ratio of a 0.4 μm aluminum oxide powder (D-1) and a 2.5 μm aluminum oxide powder (D-2) in the same technical field (Table 1, paras. [0173]–[0174]). This satisfies the claimed mass ratio limitations for D-1-1 and D-1-2. Ota notes that combining large and small particle sizes to match a theoretical close-packing distribution curve successfully optimizes filling efficiency, minimizes viscosity, and maximizes thermal conductivity (para. [0076]).
With regard to the mass ratio, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the mass ratio of the thermally conductive fillers of Ishihara. Specifically, to the mass ratio parameter established in Ota. Ota would guide one having ordinary skill in the art to employ alumina specifically small and larger particle size to optimize filling efficiency, reduce viscosity, and enhance thermal conductivity (para [0076]). The combined references collectively teach overlapping components for identical applications. A person of ordinary skill in the art prior to the effective filling date would have recognized the utility of this configuration, as Ishihara can be provided with the use of various alumina particle sizes. Therefore, given the overlapping components disclosed in a single composition, a person of ordinary skill in the art would make the modification with a reasonable level of success.
With regard to claim 4, Ishihara teaches the use of ethynyl methylidene carbinol as an addition reaction control agent (F) at 1.3 wt.% (Table 1, para. [0114]), which reads on the claimed hydrosilylation reaction inhibitor and its specified concentration.
With regard to claims 5 and 8, Ishihara does not explicitly teach the inclusion of a heat resistance imparting agent.
In the same field of endeavor, Ota teaches that a heat-conductive silicone gel composition preferably includes (G) a heat resistance imparting agent to enhance the thermal stability of both the mixed composition and its cured product (para [0119]). Ota places no particular restrictions on component (G), provided it imparts the desired heat resistance. Furthermore, Ota explicitly discloses incorporating this agent (e.g., phthalocyanine) in a range of 0.01 to 5% by mass based on the total mass of the composition (para [0119]–[0120]).
With regard to the heat resistance imparting agent, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the composition of Ishihara. Specifically, to incorporate the heat resistance imparting agent of Ota. Ota would guide one having ordinary skill in the art to employ a heat resistance imparting agent to impart heat resistance towards the cured product (para [0119]).The combined references collectively teach overlapping components for identical applications. Therefore, a person of ordinary skill in the art prior to the effective filling date would have been motivated to incorporate Ota’s heat resistance imparting agent into Ishihara’s composition to achieve the predictable result of enhanced thermal stability.
With regard to claim 7, Ishihara teaches that the cured material exhibits excellent thermal conductivity when utilized as a heat-dissipating member (paragraph [0039]).
With regard to claim 9, Ishihara teaches that the cured material can be used between a heat-generating component and a heat-dissipating component within an electronic device to facilitate heat dissipation (para [0102]), which reads on electrical equipment.
With regard to claim 10, Ishihara does not explicitly disclose the use of the cured material within a secondary battery, it teaches that the cured material obtained may be disposed between a heat-generating component and a heat-dissipating component in an electronic device for heat dissipation purposes (para [0102]).
In the same field of endeavor, Ota teaches that the disclosed thermally conductive silicone composition can be utilized without restriction in various electrical and electronic devices. Specifically, the thermally conductive member can be configured as a heat dissipation structure for a secondary battery. Ota further teaches that controlling the rheology of the silicone gel composition allows for effective application across horizontal, inclined, or vertical surfaces. This rheological control enables the composition to fully penetrate the microstructures of heat-generating elements—such as electrical components, electronic components, or secondary batteries—thereby forming a seamless, gap-free heat dissipation structure. Consequently, the composition resists displacement or slumping when oriented vertically under extreme temperature conditions, rendering it highly suitable as a heat-dissipating member and protective material for automotive control units (paras. [0143]–[0144]).
With regard to the secondary battery, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to utilize the composition of Ishihara within a secondary battery as established in Ota. Ota would guide one having ordinary skill in the art to employ the composition within a secondary battery by controlling the rheology to form a gap-free, heat-dissipating structure (paras. [0143-0144]). The combined references collectively teach overlapping components for identical applications. A person of ordinary skill in the art prior to the effective filling date would have recognized the utility of this configuration, as Ishihara can be provided within an electronic device. Therefore, given the overlapping components disclosed in a single composition, a person of ordinary skill in the art would make the modification with a reasonable level of success.
With regard to claim 11, Ishihara does not explicitly teach the strain rate.
In the same field of endeavor, Ota teaches a viscosity of 50–400 Pa·s at a strain rate of 10 (1/s), and teaches that the viscosity at a strain rate of 1 (1/s), is at least 2.0 times that at 10 (1/s), This disclosure establishes a viscosity range of 100 to 1,200 Pa·s at a strain rate of 1 (1/s), which overlaps with the claimed range. Within this specified range, the uncured thermally conductive silicone gel composition maintains an optimal viscosity and suitable thixotropic behavior. Consequently, it exhibits excellent retention properties on inclined or vertical surfaces without compromising its gap-filling capabilities.
Ota teaches that if the viscosity exceeds the upper limit of this range, the composition becomes too viscous, potentially leading to poor gap-filling performance. Conversely, if the viscosity falls below the lower limit, the composition may sag, run, or drip when applied to inclined or vertical surfaces. Furthermore, if the viscosity at a strain rate of 1 (1/s) is less than 2.0 times the viscosity at 10 (1/s), the thixotropic properties remain insufficient. In such cases, adequate surface retention may not be achieved, even if the absolute viscosity at 1 (1/s) falls within the aforementioned range (para [0132]).
With regard to the strain rate, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the composition of Ishihara in view of Ota. Specifically, to measure the thixotropic behavior properties such as the strain rate established in Ota. Ota would guide one having ordinary skill in the art that maintaining these strain rate parameters optimizes the composition's viscosity, thixotropic behavior, and structural retention (para [0132]).The combined references collectively teach overlapping components for identical applications. Therefore, a person of ordinary skill in the art prior to the effective filling date would have motivated to modify Ishihara’s composition to achieve the precise viscosity, thixotropic, and retention properties established by Ota.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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/A.A.W./Examiner, Art Unit 1761
/TANISHA DIGGS/Primary Examiner, Art Unit 1761 September 25, 2026
