DETAILED ACTION
Applicant’s reply, filed 11 February 2026 in response to the non-final Office action mailed 7 January 2026, has been fully considered. As per Applicant’s filed claim amendments claims 1-3 and 5-18 are pending, wherein: claims 1, 7 and 13 have been amended, claims 2-3, 5-6, 8-12 and 14-18 are as originally filed, and claims 4 and 19 have been cancelled.
Claim Objections
Claim 13 is objected to because of the following informalities: “Iso-stearic acid” should instead be –iso-stearic acid-- (i.e. not capitalized). Appropriate correction is required.
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, 10 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. (US PGPub 2018/0134925) in view of Kato et al. (US PGPub 2015/0097138).
Regarding claims 1, 5-6 and 18, Adams teaches high temperature resistant pressure sensitive adhesives comprising a first silicon resin, a second silicon resin (first and second resins reading on instant (a) silicone or silicone-hybrid resin matrix), a first thermally conductive filler, a second thermally conductive filler, a curing agent, optional defaoming agent and optional drying agent (abstract; [0035-0041]).
Adams teaches the thermally conductive fillers are particles ([0048]) and include metal oxides, including alumina ([0047])(instant (b) aluminum oxide-containing particle (claim 1); instant alumina (claim 18)). Adams further teaches the inclusion of a dispersing agent in order to hep disperse the thermally conductive particles and teaches DISPERBYK-108 as the ideal dispersing agent ([0051])(instant (c) liquid organic acid soluble in the matrix).
Adams teaches the above noted combination of a first and as second filler which may be selected from metal oxides, etc. including alumina ([0047]). Adams 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 Adams are analogous art and are combinable because they are concerned with the same field of endeavor, namely thermally conductive silicone compositions. 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 Adams 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.
Regarding claim 3, Adams in view of Kato renders obvious the adhesives as set forth in claim 1 above and as noted above, Adams teaches the combination of a first and second silicone resin and a curing agent (instant curable or non-curable).
Regarding claim 7, Adams in view of Kato renders obvious the adhesives as set forth in claim 1 above and Adams further teaches the first silicone resin is 55-75 wt% ([0044]), the second silicone resin is 4-12 wt% ([0045]), one thermally conductive filler is 5-18 wt% and the other thermally conductive filler is 10-14 wt% ([0048]) (15-32 wt% total filler : 59-82 wt% total silicone resin, renders taught instant ratio of 95:5 to 5:95).
Regarding claims 10 and 14, Adams in view of Kato renders obvious the adhesives as set forth in claim 1 above and as noted above, Adams teaches the dispersing agent is DISPERBYK-108 (instant carboxylic acid (claim 10)). Adams further teaches the dispersing agent is present from a 0.1 to 4 wt% ([0051])(claim 14).
Regarding claims 15-16, Adams in view of Kato renders obvious the adhesives as set forth in claim 1 above and Adams further teaches prior to milling and applying to a release liner, the viscosity of the mixture is reduced with solvent (instant flowable form (claim 15)) to a viscosity of 300 to 20,000 cps (=0.3-20 Pa·s)(instant less than about 1500 Pa·s (claim 16)).
Regarding claim 17, Adams in view of Kato renders obvious the adhesives as set forth in claim 1 above and Adams further teaches the adhesive has thermal conductivity (see Table 2) (instant thermal conductivity of up to about 20 W/m·K). It is further 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)).
Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. (US PGPub 2018/0134925) in view of Kato et al. (US PGPub 2015/0097138) as set forth above, and further in view of Gervasi et al. (US 6,515,069).
Adams in view of Kato renders obvious the adhesive as set forth in claim 1 above. As noted Adams teaches the inclusion of a dispersing agent. Adams further teaches that while DISPERBYK-108 is suitable it is not limiting ([0051]). Adams further teaches the dispersing agent acts to help disperse the thermally conductive materials in the silicone resins ([0051]), including siloxanes ([0042]). Adams 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 13)). Gervasi and Adams are analogous art and are combinable because they are concerned with the same technical feature, namely dispersants suitable for use in siloxane resins. 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 Adams and would have been motivated to do so as Adams invites suitable dispersants in the siloxane-based compositions and further as Gervasi teaches such fluorinated surfactants are known to be suitable for use in such siloxanes to improve wettability.
Claims 1-3, 5-10, 12, 14-15 and 17-18 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).
Regarding claims 1, 5-6 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 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.
Regarding claim 2, Sumimura in view of Kato 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 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 claims 7-8 and 14, Sumimura in view of Kato 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) (instant (b) about 50 to about 95 wt% (claim 8); instant about 0.01 to about 5 wt% (c)(claim 14)).
Regarding claim 9, Sumimura in view of Kato 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 claims 10 and 12, Sumimura in view of Kato renders obvious the mixtures as set forth above and Sumimura further teaches the above noted catalysts (C) (instant carboxylic acid (c) (claim 10); instant sulfuric-containing acid (claim 12)). Sumimura further exemplifies dodecylbenzenesulfonic acid (see example 5).
Regarding claim 15, Sumimura in view of Kato 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 claim 17, Sumimura in view of Kato renders obvious the mixtures as set forth above. Sumimura is silent as to the thermal conductivity of the resultant mixture. 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)).
Claims 11 and 13 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) as set forth above, and furth in view of Gervasi et al. (US 6,515,069).
Sumimura in view of Kato renders obvious the mixtures as set in claim 1 above and, as noted, Sumimura 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). 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 13)). 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.
Response to Arguments/Amendments
The objections to claims 7 and 13 are withdrawn, however note the new objection to claim 13 as necessitated by Applicant amendment.
The 35 U.S.C. 112(b) rejections of claims 13 and 19 are withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 102(a)(1) rejections of claims 1, 3, 7, 10 and 14-19 as anticipated by Adams (US PGPub 2018/0134925) and of claims 1-3, 7-8, 10, 12, 14-15 and 17-18 as anticipated by Sumimura (US 4,696,970) are withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 103 rejections of claims 11 and 13 as being unpatentable over Adams in view of Gervasi (US 6,515,069), of claim 9 as being unpatentable over Sumimura, and of claims 11 and 13 as being unpatentable over Sumimura in view of Gervasi are withdrawn as depending from withdrawn primary rejections. See the above set forth rejections as necessitated by Applicant’s filed claim amendments.
The 35 U.S.C. 103 rejections of claims 4-6 as unpatentable over Adams in view of Kato (US PGPub 2015/0097138) and of claims 4-6 as unpatentable over Sumimura in view of Kato are maintained. Applicant’s arguments (Remarks, pages 11-12) have been fully considered but were not found persuasive.
Applicant argues that the secondary reference of Kato teaches “aluminum hydroxide” while the instant claims recite “aluminum trihydroxide” and concludes that Kato therefore fails to teach the instant limitation. The Examiner notes that aluminum trihydroxide and aluminum hydroxide are well known synonyms for the same chemical: Al(OH)3. Evidence to support such can be found in any relevant chemical database (see Wikipedia, Merck Index, PubChem, etc.).
Applicant generally alleges unexpected and significant results occur when aluminum trihydroxide is present. As Kato expressly teaches that the combination of aluminum hydroxide with aluminum oxide fillers in a thermally conductive silicone composition result in the composition having low thixotropy, low specific gravity and high thermal conductivity, it appears Applicant merely proves true the teachings of the prior art.
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
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767