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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: On page 3, the applicant presents the following structure:
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with an alkyl linker that is represented in the form CmH2m+1, however this linker structure would necessarily mean that one of the carbons in the linker would have 5 bonds, which exceeds the valence allowed on carbon, resulting in a structure that is not possible to exist.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 and 4-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-8 of copending Application No. 18/127720 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications require the use of siloxane compound with hydroxyl groups on one end of the molecule connected through an alkyl linker in compositions with similar amounts of filler that can be cured using organic peroxides and having components of closely overlapping viscosities and which lead to curable compositions which are thermally conductive that differ in a manner which would have been obvious to one having ordinary skill in the art with the expectation of success in the absence of a showing of new or unexpected results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 4,
In claim 4, the applicant states that the polysiloxane is represented by the following general formula:
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however a compound of the above formula would result in a carbon containing more than four bonds due to the CmH2m+1 notation in the alkyl linker. As such, no compound would be able to meet this criterion and therefore, the claim cannot be evaluated as currently constructed. The applicant is required to revise the claim to correct the structure to remove the requirement of a carbon with more than four bonds, keeping in mind that no new matter may be added.
Claim 4 is further indefinite as the applicant states that in the above structure that n can be a value from 5 to 250, however it is unclear how a value of 5 for n would meet the molecular weight requirement of 10,000 to 20,000 from claim 1 without further limiting the possible R substituents. Applicant is required to revise the claim to clarify the requirements to comply with the molecular weight range disclosed in claim 1. In the light of the ambiguities listed, claims 4-6 have not been further considered on the merits.
Claims 5 and 6 are rejected based upon their dependency on Claim 4.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Proctor (GB 2474474).
Regarding Claims 1 and 8,
Proctor teaches a composition a composition that is comprised of silicones of the following structure:
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where each R group may be an alkyl group of 1 to 6 carbons, alkenyl groups, or hydroxyl groups and where x is an integer while y and s are integers and may be zero (Paragraph 16). Proctor also teaches that two or more may be used (Paragraph 18), which would allow for the use of one polymer containing alkenyl units and one with hydroxyl units and where neither group would need to be present together in the same molecule. Further, Proctor teaches that the viscosity of the polymer may be in a range of 100 to 150,000 mPa·s for liquid silicones (Paragraph 14). While Proctor does not explicitly state the molecular weight range for the silicone, given the broad range of viscosities disclosed, this range would include silicone polymers within the 10,000 to 20,000 molecular weight range of the instant claim. Additionally, while Proctor does not explicitly state the range of incorporation between the two components, as Proctor discloses that the use of mixtures of two or more siloxanes, it would have been obvious prior to the effective filing date of the instant application to have mixed them in any suitable ratio.
With regard to the thermal conductivity, Proctor teaches the use of thermally conductive fillers such as carbon black (Paragraph 22) as well as alumina and aluminum nitride (Paragraph 46). Proctor teaches that carbon black is to be the majority of filler and may be present in amounts to about 200 parts relative to 100 parts of resin (Paragraph 23). This would allow for the use of fillers such as alumina and aluminum nitride in amounts below 200 parts by weight, which would meet the requirement of thermally conductive filler greater than 300 parts by weight relative to the resin of the instant claim. While Proctor is silent on the thermal conductivity, it would logically follow that the thermal conductivity of a composition with levels of thermally conductive filler stated above that the composition would have thermal conductivity greater than 1 W/mk. As such, it would have been obvious prior to the effective filing date of the instant application to have set the thermal conductivity to be greater than 1 W/mk.
Regarding Claim 2,
Proctor teaches the use of siloxanes of the following structure:
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where as mentioned above in regard to claim 1 both the R and R1 groups can be hydroxyl (Paragraph 16), indicating at least two hydroxyl groups may be present at the end of the siloxane, meeting the requirement of the instant claim.
Regarding Claim 3,
Proctor teaches the use of catalysts such as organic peroxides (Paragraph 28).
Regarding Claim 7,
As Proctor teaches that carbon black is the majority of filler and is present in amounts up to about 200 parts by weight relative to 100 parts resin (Paragraph 23), the amount of filler would necessarily be less than 4,000 parts by weight, meeting the requirement of the instant claim.
Regarding Claim 9,
Proctor is silent on the use of the composition for a heater element. However, as the composition would contain substantially the same components, it would necessarily follow that the composition would be useful for the same purposes. Therefore, it would have been obvious prior to the effective filing date of the instant application to have used a composition containing thermally conductive filler in an application where heat is to be conducted.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nakamura (US 20080004401) teaches siloxane structures similar to those represented by the structure found in claim 4 for use in polymeric compositions.
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.
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, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765