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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 25 April 2023 and 06 May 2024. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
Election/Restrictions
Applicant’s election of Group I (claims 1-9) without traverse in the reply filed on 17 February 2026 is acknowledged.
Claims 10-12 are withdrawn from further consideration pursuant to 37 FR 1.142(b), as being withdrawn to a non-elected species of the invention, there being no allowable generic or linking claims.
Claims 1-9 are under examination and the requirement for restriction is made final.
Specification
The disclosure is objected to because of the following informalities: On page 4, the applicant presents the following structure:
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with an alkyl linker, represented by CmH2m+1, however this linker structure would necessarily mean that one of the carbon in the linker would have 5 bonds, which exceeds the valence allowed for a carbon, and would result in a structure that cannot exist.
Appropriate correction is required.
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 3-5 and 6 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.
With regard to claim 3, the applicant states that the polysiloxane is the represented by the following general formula:
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However, a compound with the above formula would have a carbon that contains more than 4 bonds, because of the notation CmH2M+1 in the alkyl linker. As such, no compound could fulfil this criterion and therefore the claim cannot be assessed in its current form. The applicant must review the claim to correct the structure and remove the requirement for a carbon with more than four bonds, keeping in mind that no new matter may be added.
Claims 4 and 5 are rejected based upon their dependency on Claim 3.
Please note: Claims 3-5 were not examined due to the above complications in structure.
With regard to claim 6, the addition of the word “type” to an otherwise definite expression (e.g. curable) extends the scope of the expression so as to render it indefinite, see Ex parte Copenhaver, 109 USPQ 1 18 (Bd. App. 1955). See also MPEP 2173.05 (B) (e). The word “type” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Due to a lack of specificity regarding “type”, it is unclear of the definition that would render a curable type. For examination purposes, the word type is removed and “curable” stands alone.
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.
Claims 1-2 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Proctor (GB2474474) in view of Yamada (US 6,114,429 A).
With regard to claims 1, 2, 7, and 8, Proctor teaches a composition comprising organopolysiloxanes of the following structure (formula 6, para 0060):
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wherein 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 (para 0016). Proctor also teaches that two or more organopolysiloxanes may be used (para 0018), which would allow for one to be the liquid silicone resin and the other would satisfy the structure containing the hydroxy group not directly bound to a silicon atom, and no vinyl group. Proctor further teaches that the viscosity of the polymer may be in a range of 100 to 150,000 mPa·s for liquid silicones at 25C (para 0014).
Proctor teaches the use of thermally conductive fillers such as carbon black (para 0022) as well as alumina and aluminum nitride (para 0046). 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 (para 0023). 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.
However, Proctor fails to teach the mass ratio of resin to siloxane, the thermal conductivity, or the measurements with the specific instruments.
In the same field of endeavor, Yamada teaches a thermally conductive silicone composition comprising 5 to 30 wt.% of a liquid silicone (A), 50 to 94.98 wt.% of thermally conductive fillers (B), 0.01 to 10 wt.% of a hydroxyl group containing organopolysiloxane (C), and 0.01 to 10 wt.% of an alkoxysilane (D) (Abstract). The disclosed weight range of liquid silicone to hydroxyl grouped organopolysiloxane overlaps the claimed ratio. Yamada further teaches that the liquid silicone (A) can be used alone or in combination with siloxanes comprising organopolysiloxanes, organopoly-silalkylenes, organopolysilanes and copolymers thereof (col 3, lines 20-25); wherein the organopolysiloxane can have any of linear, branched, and cyclic structures (col 3, lines 51-23). The hydroxyl group-containing organopolysiloxanes (C) as mentioned above may have any of linear, branched and cyclic structures, and can further comprise two or more of those organopoly-siloxanes different in structure (col 13, lines 16-20). When it is used in a proportion lower than 0.01 wt.% the inhibitory effect upon oil bleeding cannot be achieved. Conversely, when it is used in a proportion of higher than 10 weight %, the resulting composition is too hard to be used as grease and lacking in dispensation suitability (col 14, lines 55-60).
Yamada also teaches the thermal conductivity of a thermally conductive silicone composition according to the present invention depends on the ratio of a thermal conductivity providing filler, which functions as a thickener also, to a liquid silicone (or the filling rate) (col 11, lines 53-57). As a result, the present thermal conductive composition can have a thermal conductivity on a very high level, namely 3.1 to 6.0×10-3 cal/cm·sec·° C. or more (Table 1); which correlates to 1.3 to 2.5 W/mK and overlaps the claimed.
With regard to the mass ratio, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to combine the components in the appropriate proportions to provide better workability in view of Yamada’s teaching. The cited references collectively teach a blend of siloxanes and fillers. The person having ordinary skill in the art would expect such practice and combination would improve longevity upon oil bleeding, workability, and overall quality of Proctor’s base composition, following the teachings of Yamada.
With regard to 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.
With regard to the specific instruments, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, that the composition containing substantially the same components, would logically follow the same measurement. Therefore, a person having ordinary skill in the art would expect such instruments would render the same results.
With regard to claim 6, Proctor teaches the addition of a curing agent, specifically organic peroxides (which satisfies the organic peroxide curable silicone resin, para 0028). Proctor further teaches that in instances when R1 is a hydroxy group or an alkoxy group, the curing agent may comprise of a suitable condensation catalyst, either independently or in combination with a cross-linking agent that undergoes a condensation reaction (which satisfies the condensation reaction curable silicon resin, para 0030).
With regard to claim 9, Proctor is silent on the use of the composition for a semiconductor package. 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 electrically conductive fillers, such as carbon black (para 0045), in an application where electric is to be conducted.
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 1-5 and 7-8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 and 4-8 of copending Application No. 18/127704 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons listed below.
It is clear that all the elements of the US 18/127720 claims (1-5 and 7-8) are to be found in US 18/127704 claims 1-2 and 4-8. US 18/127704 claims a thermally conductive composition comprising a resin, polysiloxane compound containing at least one hydroxy group at an end, having no vinyl group, and thermally conductive fillers. US 18/127720 claims overlap in components, resin viscosity, resin to polysiloxane mass ratio, thermally conductive filler concentration, thermal conductivity, and instruments used as the instant claims. The difference between the instant claims lies in the fact that ‘704 claims includes more elements such as, a specific resin, the molecular weight of the polysiloxane, and the use of the composition and is thus much more specific. A person of ordinary skill in the art would conclude that the invention described in the instant claims would have been an obvious variation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/A.A.W./Examiner, Art Unit 1761 /TANISHA DIGGS/Primary Examiner, Art Unit 1761
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