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 1-8 under 35 U.S.C. 103 as being unpatentable over Takenaka (US-20200140736-A1) in view of Hu (WO-202013334-A1) is withdrawn in view of amendments and arguments.
Response to Amendment & Arguments
Applicant’s arguments with respect to the prior rejections have been considered but are
moot because the arguments do not apply to all of the references being used in the current
rejection. It is noted that Hu (WO-2020133374-A1) was used prior to the amendments. The current rejection utilizes Ota (WO-2019021825-A1) in view of Hu (WO-2020133374-A1) under new ground(s) of rejection which renders obvious the instant claims.
Applicant’s argues Hu does not provide a basis for the claimed aluminum nitride in an amount of 5 to 30%, while achieving thermal conductivity of 7 W/mK or higher (see page 6-9).
Applicant’s argument is unpersuasive. As taught by Hu, specifically, Table 3 (Invention 5,6, and 7) identifies D3-5 (70 μm spherical aluminum nitride) at concentrations ranging from 10 to 24%, yielding thermal conductivities exceeding 7 W/mK (Table 3).
Under the claimed limitations, Hu’s D3-5 could correspond to the claimed D-2, Hu’s D1-1 and D2-1 fillers could correspond to the claimed D-1, and Hu’s D3-6 could correspond to the claimed D-3, while maintaining the claimed (D-1 to D-3: D-2) ratio, respectively.
Additionally, Hu teaches (D) A thermally conductive filler mixture, comprised of:
(D-1) small-particulate filler (mean ≤ 1 μm), selected from zinc oxide, aluminum oxide, aluminum nitride, or combinations thereof (para [0030]);
(D-2) A middle-sized filler (mean size 1 to 20 μm), preferably aluminum nitride (para [0031]); and
(D-3) A large filler (mean size 30 to 200 μm), preferably magnesium oxide (para [0032]). This overlap the claimed thermal conductive filler ranges. Hu further notes that utilizing three distinct groups of filler particles creates a synergistic effect that enhances thermal conductivity (para [0029]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have been motivated to adjust the filler groups, sizes, and ratios to optimize thermal conductivity and achieve the claimed composition. As such, the teaching of Hu, when combined with general knowledge in the art, render the claimed features obvious.
Applicant argues Hu does not provide a basis for curing the composition (see page 7).
Applicant’s argument is unpersuasive. As taught by Hu, discloses that the composition may be curable to form a cured product (para [0042]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the composition could be cured. As such, the teachings of Hu, when combined with general knowledge in the art, render the claimed features obvious.
Applicant argues Hu associates increased aluminum nitride loading to a higher thermal conductivity (see page 8).
Applicant’s argument is unpersuasive. As taught by Hu, explicitly associates the increase in thermal conductivity to an increase in the loading of magnesium oxide (MgO hereinafter), rather than aluminum nitride (para [0061]). Furthermore, Hu teaches that magnesium oxide is a known heat conductive material used in various applications, and the present invention may comprise of solely MgO or be used in combination (e.g. aluminum nitride) to achieve a thermal conductivity greater than 6 W/mK (paras. [0003-0004]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that magnesium oxide would be more favorable. As such, the teachings of Hu, when combined with general knowledge in the art, render the claimed features 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 1-5 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ota (WO-2019021825-A1) in view of Hu (WO-2020133374-A1, already on record).
Please note: The paragraph citations correspond to the English language equivalent Ota (US-20200270500 A1).
With regard to claim 1, 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]). The mass ratio of component (E) to (F) ranges from 5:95 to 95:5, with their combined total representing 0.1 to 5.0% by mass relative to component (D) (para [0021]).
Ota notes that by combining varying particle sizes (large and small) it is possible to enhance filling efficiency, reduce viscosity, and increase thermal conductivity (para [0076]). Ota further demonstrates that this composition yields a cured product with a thermal conductivity of up to 7.0 W/mK (para [0137]). This composition satisfies or closely overlaps the claimed components of A, B, C, D, D-1, E, E-1, E-2, curability, and thermal conductivity.
However, Ota does not specifically teach the use of aluminum nitride for filler D-2 and the higher particle size range for D-3.
In the same field of endeavor, Hu teaches a highly thermally conductive composition comprising (Abstract):
(A) An organopolysiloxane composition (Abstract);
(B) a filler treating agent (e.g. decyltromethoxysilane) (para [0021]);
(C) a thermal stabilizer (e.g. phthalocyanine compound) (para [0025]);
and (D) A thermally conductive filler mixture, comprised of:
(D-1) A small-particulate filler (mean ≤ 1 μm), selected from zinc oxide, aluminum oxide, aluminum nitride, or combinations thereof (para [0030]);
(D-2) A middle-sized filler (mean size 1 to 20 μm), preferably aluminum nitride (para [0031]); and
(D-3) A large filler (mean size 30 to 200 μm), preferably magnesium oxide (para [0032]).
This overlaps the claimed thermal conductive filler ranges. Hu further teaches, specifically, Table 3 (Invention 5,6, and 7) identifies D3-5 (70 μm spherical aluminum nitride) at concentrations ranging from 10 to 24%, yielding thermal conductivities exceeding 7 W/mK (Table 3).
Under the claimed limitations, Hu’s D3-5 could correspond to the claimed D-2, Hu’s D1-1 and D2-1 fillers could correspond to the claimed D-1, and Hu’s D3-6 could correspond to the claimed D-3, while maintaining the claimed (D-1 to D-3: D-2) ratio, respectively. Hu further notes that utilizing three distinct groups of filler particles creates a synergistic effect that enhances thermal conductivity (para [0029]). This would satisfy the claimed limitations.
With regard to filler, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to adjust the filler particle sizes and ratios to optimize thermal conductivity and reach the claimed composition. The references collectively teach similar compositions (e.g. organopolysiloxane, thermal conductive fillers, and additives), yet differ in filler particle applications. With respect to optimal ranges, it is not inventive to discover such regimens by routine experimentation when general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(II). Therefore, a person having ordinary skill in the art would expect the modification would be to optimize thermal conductivity.
With regard to claim 2, Ota discloses D-1 (aluminum oxide powder, 0.4 μm average particle size) (para [0173]). Ota further teaches that the thermally conductive filler (D) may comprise silver, aluminum nitride, or graphite, with metal oxide or metal nitride powders (specifically aluminum oxide, zinc oxide, or aluminum nitride) preferred when electrical insulation is required (para [0074]).
With regard to claim 3, Ota discloses D-1 (aluminum oxide powder, 0.4 μm average particle size) and D-2 (aluminum oxide powder, 2.5 μm average particle size) (paras. [0173-0174]). This could satisfy the limitation of, and are encompassed by, the claimed subject matter of (D-1-1) and (D-1-2).
However, Ota does not teach the claimed D-1-1 and D-1-2 to the degree of specificity as to be anticipatory.
In the same field of endeavor, Hu discloses that groups (D-1) , (D-2) and (D-3) may contain more than one uniform filler subsets. For instance, each group may consist of particles exhibiting a multimodal (two or more peaks) size distribution. Furthermore, (D- 1) may incorporate particles of varying compositions, such as a combination of zinc oxide and aluminum oxide (para [0033]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have selected the overlapping portions of the ranges disclosed by the references to logically fall within the claimed (D-1) because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP §2144.05(I). Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
With regard to claim 4, Ota teaches that the hydrosilylation reaction inhibitor is incorporated within the range of 0.001 to 5% by mass of the total composition (para [0069]).
With regard to claim 5, Ota teaches the incorporation of heat resistance-imparting agent (e.g. phthalocyanine) (G) in the range of 0.01 to 5% by mass of the total composition (paras [0119-0120]).
With regard to claim 7, Ota teaches that the thermally conductive composition is a cured product that is easily fixed to form a thermally conductive member (para [0004]).
With regard to claim 8, Ota teaches the incorporation of heat resistance-imparting agent (e.g. phthalocyanine) (G) in the range of 0.01 to 5% by mass of the total composition (paras [0119-0120]).
With regard to claim 9, Ota teaches that the thermally conductive member can be embodied as a heat dissipation structure for an electrical/electronic component (para [0143]).
With regard to claim 10, Ota teaches that the thermally conductive member can be embodied as a heat dissipation structure for a secondary battery (para. [0143]).
With regard to claim 11, Ota teaches that the viscosity of 50-400 Pa·s at a strain rate of 10 (1/s), and that the viscosity at a strain rate of 1 (1/s) is 2.0 times or higher at a strain rate of 10 (1/s) (para [0026]). This teaching renders a viscosity range of 100 to 1200 Pa·s at a strain rate of 1 (1/s) (the range was multiplied by two), which overlaps the claimed range.
Conclusion
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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