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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/1/2026 has been entered.
Status of Claims
The examiner acknowledges the amendments to claims 1, 5, 12, 18, and 19 as well as the cancellation of claim 14 and the addition of claim 21.
Claim Interpretation
The term “thermal management composition” appears in the preamble to listing the limitations of the composition and is being interpreted as intended use. The examiner notes that this term does not impose any meaningful limitation upon the composition as the thermal conductivity of the composition would be a function of the components of the composition itself and further, there is no alteration to the composition that is implied nor explicitly stated by referring to it as such. As a result, this term is not given patentable weight.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5, 7-13 and 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over Onizuka (WO 2022138343, herein using US version US 20240301176) as evidenced by Wen (Advanced Materials, 2022, volume 34, 2201023).
Regarding Claims 1, 3, 8, 11-13, and 15
Onizuka teaches a composition generate from an epoxy resin (Paragraph 59), examples of which include bisphenol A and bisphenol F glycidyl ethers (Paragraph 62) and in which the examples are generated from a bisphenol A resin (Paragraph 255), a latent curing agent (Paragraph 71) which Onizuka teaches preferably cures at temperatures below 220 °C (Paragraph 213), and which includes an inorganic filler (Paragraph 139). Onizuka also teaches that the epoxy resin should preferably comprise between 10 and 90% by weight of the composition (Paragraph 70), while the latent catalyst is preferably 2 to 30% by weight (Paragraph 99), and the filler, while not limited, is preferably between 20 and 85% by mass of the composition. These ranges overlap with the ranges of the instant claims. One of ordinary skill in the art would recognize that altering the amount of curing agent would affect the cure rate of the material and that the amount of filler, which can be used for thermal conductivity (Paragraph 139) would necessarily have an effect on this property. As such, the ordinarily skilled artisan would alter their amounts in order to meet the desired cure time and thermal conductivity required for the use case and it would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding the lack of anhydride curing agent, Onizuka states that amine based curing catalysts are preferred (Paragraph 74) and while anhydrides may be used, are not required and further Onizuka does not demonstrate the use of anhydride curing catalysts in any examples (Table 1, examples 1-10). Therefore, the composition would be anhydride-free when no such compound is added.
Onizuka teaches that the composition may be used in printed wiring boards and semiconductor chip packaging (Paragraph 10). Combined with the use of filler disclosed for thermal conductivity (Paragraph 139), this reads upon being disposed on a heat-generating component as semiconductor devices are known to generate heat and are additionally found in various machines, communication devices, and computers.
Finally, while Onizuka is silent on the thermal conductivity of the cured composition, Onizuka does teach that fillers can be chosen from the viewpoint of thermal conductivity (Paragraph 139) and teaches the use of fillers such as alumina, silica, aluminum nitride, and boron nitride and further notes a preference for the use of boron nitride, all of which are known to be used in the art as a thermally conductive filler as evidenced by Wen (Table 2, page 8). As both aluminum and boron nitrides have large thermal conductivity values (80 and 60 W/mK respectively, Wen, Table 2), it would logically follow that incorporating them into an epoxy composition in the amounts (preferably from 20 to 85% by mass) taught by Onizuka (Paragraph 143), it would logically follow that the composition would have a thermal conductivity of greater that 0.4 W/mK as required by the instant claims. Additionally, because Onizuka teaches a broad range of filler amount, the ordinarily skilled artisan would recognize that increasing the amount of filler within this range would afford a higher level of thermal conductivity and would also allow for freedom to select a thermal conductivity for the composition that could bet tailored to the desired use case and requirements. Because Onizuka teaches the use of fillers that are known to be thermally conductive and further teaches that fillers can be chosen for this property, it would have been obvious prior to the effective filing date to have incorporated such fillers and it would further have been obvious to have used such fillers to obtain the predictable result of a thermally conductive composition with a thermal conductivity of 0.4 W/mK or greater based upon the thermal conductivity values and incorporation amounts of these fillers.
Regarding Claim 2,
As Onizuka teaches the polymers as listed above in regard to claim 3 and uses a bisphenol A-based resin particularly in the examples (Paragraph 255) which are the same as those listed by the applicant, it would logically follow that this polymer as well as the other listed polymers would meet the requirements of the instant claim regarding aromatic content. See MPEP 2112.01.II.
Regarding Claims 4 and 5,
Onizuka teaches the use of latent curing agents that are solid at room temperature (Paragraph 72) and enumerates imidazole and imidazole-based adducts (Paragraph 77) among the preferred amine-based curing agents (Paragraph 74), which would include tertiary amines and meets the requirements of claims 4 and 5.
Regarding Claim 7,
Onizuka teaches the use of inorganic fillers such as silica, alumina, boron nitride, and silicon nitride as well as oxides (Paragraph 142), with silica, alumina, and boron nitride being particularly preferred (Paragraph 142).
Regarding Claim 9,
Onizuka teaches the use of an alcohol component such as 3-phenoxy-1,2-propanediol and 3-phenoxy-1,3-propanediol (Paragraph 107), meeting the requirements of the instant claim.
Regarding Claim 10,
Onizuka is silent on the use of the polyhydric alcohols of the instant claim. However, Onizuka does teach the use of alcohols in the composition that coordinate with the latent curing catalyst (Paragraph 103). As polyhydric alcohols such as ethylene and propylene glycol are similar to those disclosed by Onizuka, it would have been obvious to have added any polyhydric alcohol that could serve a similar purpose.
Regarding Claim 16,
Onizuka teaches that the composition is formed and can be stored for preferably more than 30 days prior to use (Paragraph 204).
Regarding Claim 17,
Onizuka teaches that additives such as stabilizers may be used (Paragraph 161) in addition to silicone rubbers and oils (Paragraph 183) which are used as air release agents and may be included in amounts up to 20% by weight but is most preferred to be 3% or less (Paragraph 163).
Regarding Claim 18,
Onizuka teaches the use of 3-phenoxy-1,2-propanediol and 3-phenoxy-1,3-propanediol (Paragraph 107), meeting the requirements of the instant claim.
Regarding Claims 19 and 20,
Onizuka teaches that the composition can be used in the formation of printed wiring boards and semiconductor chip packages (Paragraph 10). While Onizuka does not detail the steps of this process, based upon the disclosure for this use as well as the inclusion of heat-conducting fillers (Paragraph 139-142), it would have been obvious prior to the effective filing date of the instant application to have used the composition in a method as described in the instant claims. Additionally, Onizuka teaches that the composition is preferably cured in the temperature range of 150-250 °C (Paragraph 212) and further uses a cure temperature of 200 °C in example 6 (Paragraph 233), meeting the requirements of claim 20.
Onizuka is silent on the thermal conductivity of the cured composition, Onizuka does teach that fillers can be chosen from the viewpoint of thermal conductivity (Paragraph 139) and teaches the use of fillers such as alumina, silica, aluminum nitride, and boron nitride and further notes a preference for the use of boron nitride, all of which are known to be used in the art as a thermally conductive filler as evidenced by Wen (Table 2, page 8). As both aluminum and boron nitrides have large thermal conductivity values (80 and 60 W/mK respectively, Wen, Table 2), it would logically follow that incorporating them into an epoxy composition in the amounts (preferably from 20 to 85% by mass) taught by Onizuka (Paragraph 143), it would logically follow that the composition would have a thermal conductivity of greater that 0.4 W/mK as required by the instant claims. Additionally, because Onizuka teaches a broad range of filler amount, the ordinarily skilled artisan would recognize that increasing the amount of filler within this range would afford a higher level of thermal conductivity and would also allow for freedom to select a thermal conductivity for the composition that could bet tailored to the desired use case and requirements. Because Onizuka teaches the use of fillers that are known to be thermally conductive and further teaches that fillers can be chosen for this property, it would have been obvious prior to the effective filing date to have incorporated such fillers and it would further have been obvious to have used such fillers to obtain the predictable result of a thermally conductive composition with a thermal conductivity of 0.5 W/mK or greater based upon the thermal conductivity values and incorporation amounts of these fillers.
Regarding Claim 21,
Onizuka teaches that the latent curing agent is used in amounts preferred to be between 0.2 and 30% by mass (Paragraph 99), which overlaps with the range of the instant claim. One of ordinary skill in the art would recognize that the amount of curing agent present in the composition would have an effect on the curing rate of the composition and would therefore adjust the amount used in order to obtain a curing rate that was suitable for the purpose of the composition. As a result, it would have been obvious prior to the effective filing date of the instant application to have used any amount of curing agent that afforded the desired curing rate and it would further have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Onizuka (WO 2022138343, herein using US version US 20240301176) as evidenced by Wen (Advanced Materials, 2022, volume 34, 2201023) as applied to claims 1-5, 7-13 and 15-21 above, and further in view of Roth (US 5,247,113).
Regarding Claim 6,
Onizuka teaches the use of latent curing catalysts that are solid at 25 °C (Paragraph 15) which Onizuka teaches improves room temperature stability and also improves reactivity with the epoxy resin (Paragraph 73), but does not teach the use of sulfonium salts. Roth teaches sulfonium compounds that can be used for heat curing of epoxy resins (Abstract) that are of the following formulae:
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in which A (equivalent to R of the instant claim) is a 1 to 12 carbon alkyl chain, 3 to 8 carbon cyclic alkyl, a 4 to 10 carbon cycloalkylalkyl, or a substituted or unsubstituted phenyl (Abstract) and that the Ar groups are independently substituted or unsubstituted phenyl or naphthyl groups (Abstract) and that Q is SbF6, AsF6, or SbF5OH (Abstract). Roth teaches that the preferred resins include diglycidyl ethers of dihydric phenols and specifically mentions bisphenol A (Column 6, Lines 57-62), which is substantially similar to the epoxy resins taught by Onizuka (Paragraph 62). Sulfonium salts are solid at room temperature and because Roth teaches that such compounds have distinct latency at room temperature which allows wide processing margins but also rapid curing when heating above 100 °C (Column 1, Lines 25-30), one of ordinary skill in the art would recognize that these compounds could be advantageously used in the composition as taught by Onizuka, which seeks to improve curing performance while maintaining room temperature stability (Paragraphs 9 and 10). As such, it would have been obvious prior to the effective filing date of the instant application to have combined the sulfonium-based curing catalysts taught by Roth in the composition taught by Onizuka to obtain the predictable result of a latent-curable epoxy composition with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 7/1/2026 have been fully considered but they are not persuasive for at least the following reasons.
On page 8, the applicant argues that Onizuka is not directed towards a composition for thermal management or the fabrication of heat-dissipating articles. The examiner disagrees. Onizuka is directed towards a film for semiconductor applications (Paragraph 1) and further notes that fillers to be used in the composition can be chosen for their thermal conductivity (Paragraph 139) as noted in the rejection. Further, any material would have some level of thermal conductivity and because Onizuka mentions this property in regard to filler specifically, it would logically follow that the composition would possess the ability to thermally conduct, particularly in light of the preference toward fillers such as boron nitride which are known for their use in such compositions. Therefore, while Onizuka does not explicitly direct the composition to be used for this purpose, this does not exclude the composition from being able to function in such a capacity, particularly when using known thermally conductive fillers as Onizuka expresses a preference for.
On page 9, the applicant argues that Onizuka does not explicitly teach that the composition is anhydride free nor to teach the benefits of lacking acid anhydrides. The examiner points out that not only does Onizuka express a preference for using amine catalysts (Paragraph 74), Onizuka does not exemplify any composition that contains an acid anhydride. The ordinarily skilled artisan would interpret this as teaching towards the use of amines for this purpose. The ordinarily skilled artisan would likewise need no motivation to have omitted an acid anhydride based upon the stated preference and exemplified examples presented by Onizuka.
On pages 10 and 11, the applicant argues that Onizuka does not teach thermally conductive compositions. The examiner argues that while Onizuka does not explicitly teach that the composition is thermally conductive, this does not preclude the composition from being used in this context. Firstly, Onizuka teaches that the composition is to be used for semiconductor applications, which one of ordinary skill in the art would recognize generate heat that by necessity must be dissipated. Secondly, Onizuka specifically states that the filler may be chosen on the basis of thermal conductivity (Paragraph 139) and as noted in the rejection above, notes several fillers such as aluminum and boron nitrides that are noted for their use as thermally conductive fillers in addition to silica and alumina, which are also used in such capacities. This would imply that Onizuka recognizes that heat transfer occurs with the material and is providing for compositions with improved ability to dissipate heat. As aluminum and boron nitride have notably high thermal conductivity values (80 and 60 W/mK as noted in the rejection), it would logically follow that within the disclosed range of Onizuka (preferred to be 20 to 85% by mass, Paragraph 143) that a thermal conductivity value within the range required by the applicant would be achieved, as this value for the overall composition would be a direct result of the components used. While the applicant argues that Onizuka teaches this component as optional, the examiner points out that silica, a filler that has higher thermal conductivity than an epoxy resin (see Wen Table 2), is used in examples 1-10 of Table 1, which does not agree with the applicant’s assertion and which also does not agree with Onizuka’s direction that filler may be selected on the basis of thermal conductivity as noted previously. Additionally, while the applicant argues that Onizuka does not provide loading requirements, the examiner points to Onizuka Paragraph 143 which explicitly states a range for filler incorporation.
With regard to the applicant’s arguments around in re Spada on page 12, the examiner notes this is not invoked in the current rejection as is therefore considered to be moot.
Also on page 12, the applicant appears to argue that Onizuka does not teach a latent curing agent, however Onizuka requires the use of latent curing agents (Paragraph 71) and further Onizuka teaches amounts of this latent catalyst to be between 0.2 and 30% by mass (Paragraph 99) and preferred to be imidazole or amine based (Paragraph 77), which does not support the applicant’s argument that PHOSITA would think this was used stoichiometrically nor that there is no overlap with the applicant’s desired catalysts.
Finally, on page 13 the applicant argues that Roth does not correct the previously listed deficiencies, which have been addressed in the preceding arguments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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