DETAILED ACTION
Applicant’s reply and request for continued examination (RCE), filed 24 June 2026 in response to the Advisory action mailed 9 June 2026, has been entered and fully considered. As per Applicant’s filed claim amendments (see filed claim amendments of 21 May 20206) claims 1-3, 5-7, 9-12 and 15-18 are pending, wherein: claim 1 has been amended, claims 2-3, 5-6, 9-12 and 15-18 are as originally filed, claim 7 is as previously presented, and claims 4, 8, 13-14 and 19 have been cancelled by this and/or prior amendment(s).
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 21 May 2026 has been entered.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, from which claim 10 depends, recites a specific list of liquid organic acid (c). As such, the claim 10 recitation that (c) is a carboxylic acid is improper for failing to include the limitations of the claim upon which it depends and for failing to further limit. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, from which claim 11 depends, recites a specific list of liquid organic acid (c). As such, the claim 11 recitation that (c) is a fluorinated carboxylic acid is improper for failing to include the limitations of the claim upon which it depends and for failing to further limit. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, from which claim 12 depends, recites a specific list of liquid organic acid (c). As such, the claim 12 recitation that (c) is a phosphorous-containing acid or a sulfur-containing acid is improper for failing to include the limitations of the claim upon which it depends and for failing to further limit. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 1-3, 5-7, 9-12 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Sumimura et al. (US 4,696,970) in view of Kato et al. (US PGPub 2015/0097138) and furth in view of Gervasi et al. (US 6,515,069).
Regarding claims 1, 5-7, 10-11 and 18, Sumimura teaches silicone polymer-filler mixtures, useful as silicone rubber compositions, silicone compounds and silicone grease compositions, comprising a silicone oligomer (A), filler (B), and polymerization catalyst (C) (abstract; col 2 ln 1-31) and may further comprise optional curing catalysts and crosslinkers (col 5 ln 12-40). Sumimura teaches the silicone oligomer (A) is selected from polydiorganosiloxanes (col 2 ln 4-25)(instant (a) silicone or silicone-hybrid resin matrix). Simimura teaches the filler (B) includes extending fillers including aluminum oxide (col 3 ln 28-36)(instant (b) conducting filler comprising an aluminum oxide-containing particle (claim 1); instant alumina (claim 18)). Simimura further teaches the polymerization catalyst (C) includes perfluorinated alkanesulfonic acids, sulfuric acids of formula XSO3H where X includes alkyl, aryl, etc., and carboxylic acids (col 3 ln 52-63)(instant (c) liquid organic acid soluble in the matrix).
Sumimura further teaches the amount of silicone oligomer (A) is 100 weight parts, and the amount of filler (B) is 1 to 150 weight parts (col 2 ln 3 and 27) (renders taught instant ratio of 95:5 to 5:95 (claim 7)), and the amount of catalyst (C) is 0.002 to 10 weight parts (col 4 ln 12-13)(100 parts (A), 1-150 parts (B), 0.02-10 parts (C) ≈ approx. 38-99% (A), approx. 0.4-62% (B), and approx. 0.008-9.9% (C) (instant (b) about 50 to about 95 wt% (claim 1); instant about 0.01 to about 5 wt% (c)(claim 1)).
Sumimura teaches the noted filler including aluminum oxide. Sumimura further teaches the filler may be a combination of two fillers (col 3 ln 45-46). Sumimura does not specifically teach the combination of aluminum trihydroxide and alumina (claims 1 and 5) in a ratio of 95:5 to 5:95 (claim 6). However, Kato teaches similar thermally conductive silicone-based resin compositions ([0006]) and teaches it is advantageous to use a combination of aluminum oxide powder and aluminum hydroxide powder (instant aluminum trihydroxide, noting that ‘aluminum trihydroxide’ and ‘aluminum hydroxide’ are synonyms for the same chemical compound: Al(OH)3) in a ratio of 50 to 600 parts aluminum oxide to 100 to 500 parts aluminum hydroxide ([0013]-[0016]), per 100 parts base resin, in order to obtain a thermally conductive silicone composition having low thixotropy, low specific gravity and high thermal conductivity ([0005]; [0007]). Kato and Sumimura are analogous art and are combinable because they are concerned with the same field of endeavor, namely filled silicone compositions comprising thermally conductive fillers. At the time of filing a person having ordinary skill in the art would have found it obvious to select the combination of aluminum oxide and aluminum hydroxide of Kato as the filler combination of Sumimura and would have been motivated to do so as Kato teaches doing so allow for a composition that has low thixotropy, low specific gravity and high thermal conductivity.
Sumimura teaches the above noted polymerization catalyst (C) includes perfluorinated alkanesulfonic acids, sulfuric acids of formula XSO3H where X includes alkyl, aryl, etc., and carboxylic acids (col 3 ln 52-63). Sumimura further teaches the polymerization catalyst is used in combination with the inorganic filler (col 3 ln 52-54). Sumimura does not specifically teach a fluorinated carboxylic acid (claim 11) or a compound of claim 13. However, Gervasi teaches it is known to combine a nonionic surfactants with siloxanes and/or polydimethylsilanes, in the presence of metal oxide fillers (col 13 ln 29-35), to obtain desired system requirements and further teaches fluorinated nonionic surfactants are advantageous for the robust and uniform incorporation of the surfactant in the fluid, as well as improved wettability (col 7 ln 52 to col 8 ln 16). Gervasi teaches a suitable fluorinated surfactant includes tridecafluoroheptanoic acid (col 8 ln 34)(instant fluorinated carboxylic acid (claim 11); instant perfluoro heptanoic acid (claim 1)). Gervasi and Sumimura are analogous art and are combinable because they are concerned with the same technical feature, namely polydimethylsiloxane based compositions comprising perfluorinated/carboxylic acid based additives. At the time of filing a person having ordinary skill in the art would have found it obvious to include the fluorinated nonionic surfactants of Gervasi in the composition of Sumimura and would have been motivated to do so as Sumimura invites perfluorinated additives and further as Gervasi teaches such fluorinated surfactants are suitable for use in polydimethylsiloxane based compositions and improve wettability.
Regarding claim 2, Sumimura in view of Kato and Gervasi renders obvious the mixtures as set forth above and Sumimura further teaches the optional curing catalysts including metal carboxylates, alkylmetal carboxylates, alkylmetal alkoxides and organotitanates, including stannous octanoate, dibutyltin dilaurate, etc., and platinum containing catalysts (col 5 ln 23-41)(instant (d) hydrosilation catalyst). Sumimura teaches the crosslinker includes trifunctional silanes, tetrafunctional silanes and polyfunctional polysiloxane oligomers (col 5 ln 18-22)(instant (e) a crosslinker).
Regarding claim 3, Sumimura in view of Kato and Gervasi renders obvious the mixtures as set forth above and Sumimura further teaches the combination of silicone polymer forming oligomer, filler, polymerization catalysts, curing catalysts and crosslinkers as noted above (instant curable or non-curable).
Regarding claim 9, Sumimura in view of Kato and Gervasi renders obvious the mixtures as set forth above and Sumimura further teaches the amount of silicone oligomer (A) is 100 weight parts, and the amount of filler (B) is 1 to 150 weight parts (col 2 ln 3 and 27) (renders taught instant ratio of 95:5 to 5:95 (claim 7)), and the amount of catalyst (C) is 0.002 to 10 weight parts (col 4 ln 12-13)(100 parts (A), 1-150 parts (B), 0.02-10 parts (C) ≈ approx. 38-99% (A), approx. 0.4-62% (B), and approx. 0.008-9.9% (C)).
Sumimura further teaches that the quantity of filler used depends on the type of filler selected and the application of the mixture and further teaches that while 1 to 150 weight parts per 100 parts (A) is preferred, the optimal quantity is readily determinable by experimentation (col 3 ln 37-48). Therefore, Sumimura teaches a range of filler (B) that is close (~0.4-62%) to the instantly claimed range of about 70 to about 90 wt% and also teaches the amount is optimizable. The experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of filler and would have been motivated to do so as Sumimura expressly teaches such can be optimized depending on type and end-use. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Regarding claim 12, Sumimura in view of Kato and Gervasi renders obvious the mixtures as set forth above and Sumimura further teaches the above noted catalysts (C) (instant carboxylic acid (c); instant sulfuric-containing acid (claim 12)). Sumimura further exemplifies dodecylbenzenesulfonic acid (see example 5).
Regarding claim 15, Sumimura in view of Kato and Gervasi renders obvious the mixtures as set forth above and Sumimura further teaches such is processable via a continuous kneader at a barrel temperature of from 50 to 200ºC for 1 min to 1h at a screw rate of 10 to 500 rpm (col 4 ln 16-68) to produce a homogeneous paste (examples)(instant ‘flowable form’).
Regarding claims 16-17, Sumimura in view of Kato and Gervasi renders obvious the mixtures as set forth above. Sumimura is silent as to the viscosity at a 1/sec shear rate of less than about 1500 Pas (claim 16) and athermal conductivity of the resultant mixture of up to about 20 W/mK (claim 17). However, it is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Response to Arguments/Amendments
The objection to claim 13 is withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 103 rejections of claims 1, 3, 5-7, 10 and 14-18 as unpatentable over Adams (US PGPub 2018/0134925) in view of Kato (US PGPub 2015/0097138) and of claims 11 and 13 as unpatentable over Adams in view of Kato and further in view of Gervasi (US 6,515,069) are withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 103 rejection of claims 1-3, 5-10, 12, 14-15 and 17-18 as unpatentable over Sumimura (US 4,696,970) in view of Kato (US PGPub 2015/0097138) is withdrawn as a result of Applicant’s filed claim amendments incorporating the subject matter of claim 13 into independent claim 1.
The 35 U.S.C. 103 rejection of claims 11 and 13 as unpatentable over Sumimura in view of Kato and further in view of Gervasi (US 6,515,069) is maintained. Applicant’s arguments (Remarks, pages 5-7) have been fully considered but were not found persuasive.
Applicant notes that now-cancelled dependent claims 8 and 13 were not rejected over Adams in view of Kato. The Examiner agrees and notes however that now-cancelled claim 8 was rejected under Sumimura in view of Kato and now-cancelled claim 13 was rejected under Sumimura in view of Kato and further in view of Gervasi (see above; see Final Office action), rejections to which Applicant provides no arguments.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JANE L STANLEY/Primary Examiner, Art Unit 1767
Prosecution Insights