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 .
This action is responsive to Applicant’s amendment/remarks filed 06 July 2026.
The rejection of claims 1-9 under 35 U.S.C. 103 as being unpatentable over Proctor (GB-2474474) in view of Yamada (US 6,114,429 A) is withdrawn in view of amendments.
The double patenting of claims 1-5 and 7-8 provisionally rejected as being unpatentable over claim 1-2 and 4-8 of copending Application No. 18/127704 is withdrawn in view of abandonment.
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 10 July 2026. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
Response to Amendment & Arguments
Applicant’s arguments with respect to the prior rejections have been considered but are moot because the arguments do not apply to all of the references being used in the current rejection. The current rejection utilizes a new reference, Kwon (WO 2021261758 A1) in view of “Mono-terminal Silaplane for Filler Dispersant Product...” JNC et al. under new ground(s) of rejection which renders obvious the instant claims.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The specification and claims, as originally filed, recites the below Formula (1), where the hydrogen are H2m+1.
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With regard to claims 1-9, the applicant states that the polysiloxane is the represented by a new Formula (1):
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However, a compound with the above formula is not supported in the instant specification and is considered new matter added. The only representation of the above formula is located in [instant specification on page 32, para [0118] of a polysiloxane represented by the following formula.
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The applicant must review the claims to correct the structure and remove the requirement of the recently claimed compound to a formula or compound that is represented within the specification, keeping in mind that no new matter may be added.
Claims 2-12 are rejected based upon their dependency on Claim 1.
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.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kwon (WO 2021261758 A1) in view of “Mono-terminal Silaplane for Filler Dispersant Product...” JNC et al.
With regard to claim 1, Kwon teaches a thermally conductive silicone composition comprising a silicone resin, inorganic filler, and a dispersant (Abstract). Kwon further teaches the dispersant is a siloxane compound present at 10 to 50 parts by weight based on 100 parts by weight of the silicone resin, which overlaps the claimed mass ratio of silicone resin to siloxane (paras. [28 and 31]).
Furthermore, Kwon’s Example 1 teaches a composition containing 91 parts mass of combined alumina and ag-carbon filler per 10 parts by mass of dispersant and silicone resin (paras. [90-91]). Scaled to 100 parts by mass of the total composition, this equates to 910 parts by mass of filler, which falls in the claimed range of 300 to 5,000 parts by mass with respect to 100 parts by mass of the resin composition.
Kwon does not explicitly teach the claimed instruments or state that viscosity was measured at 25° C. However, Kwon’s Table 1 teaches the thermal conductivity of greater than 1 W/mK and a viscosity ranging from 10 to 900 Pa-s (Table 1), which equates to range from 10,000 to 900,000 mPa-s and both overlap the claimed ranges. Kwon further specifies that the alumina, dispersant, silicone resin, and metal-carbon composite filler are mixed at room temperature 25° C, heated, and then mixed again at room temperature (paras. [60-61]).
With regard to the viscosity, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, that to accurately characterize a composition’s viscosity requires a stable, standardized environment, such as room temperature 25° C. Therefore, a person having ordinary skill in the art would expect to record the viscosity at temperature stability.
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 equivalent testing instruments would yield consistent, reproducible results for substantially identical compositions. Therefore, a person having ordinary skill in the art would expect such instruments would render the same results.
Kwon also does not explicitly teach the polysiloxane compound of general formula (1).
In the same field of endeavor, JNC et al. teaches a mono-terminal Silaplane for filler dispersant of the following structure:
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Wherein n can range from 10 to 200 with regards to the provided molecular weight. This compound reads on the claimed polysiloxane compound of general formula (1).
Furthermore, JNC et al. teaches the products are reactive polydimethylsiloxane (PDMS) that impart silicone-like properties to non-silicone materials across various applications, including electronics and semiconductors. JNC et al. further establishes that these products enhance filler surface adsorption, dispersion stability, and lower viscosity, alongside imparting water repellency, mold releasability, and anti-fouling resistance.
With regard to the dispersant, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify Kwon’s dispersant to similarly improve filler interactions, dispersion stability, and lower viscosity, as well as water repellency, and anti-fouling resistance. Kwon’s dispersant to similarly to improve filler surface interactions, viscosity, and thermal conductivity (para [42]). The person having ordinary skill in the art would expect the modification to the dispersant to improve the viscosity and overall properties as taught by JNC et al. to the base product of Kwon.
With regard to claim 2, Kwon does not explicitly teach the polysiloxane compound of general formula (1).
In the same field of endeavor, JNC et al. teaches a mono-terminal type Silaplane containing a hydroxy diol at one end of the main chain. In this diol, the two hydroxy groups are not directly bound to a silicon atom.
Therefore, the combination of Kwon and JNC et al. teaches the claimed polysiloxane compound.
With regard to claim 3, JNC et al. teaches a mono-terminal type Silaplane featuring a butyl group (at the claimed R1), a methyl group (at the claimed R5), a hydroxymethyl group (at the claimed R6 and R8), and an ethyl group (at the claimed R7), wherein m is 3 and n is 10 to 200 (which overlaps the claimed n)..
As stated above, Kwon in combination JNC et al. teaches the polysiloxane compound.
With regard to claim 4, JNC et al. teaches a mono-terminal type Silaplane containing a butyl group (at the claimed R1).
As stated above, Kwon in combination JNC et al. teaches the polysiloxane compound.
With regard to claim 5, JNC et al. teaches a mono-terminal type Silaplane containing a hydroxymethyl group (at the claimed R6 and R8).
As stated above, Kwon in combination JNC et al. teaches the polysiloxane compound.
With regard to claim 6, Kwon teaches that the silicone compound can be cured by mixing it with additives, such as a Karstedt catalyst, to accelerate the curing reaction (paras [51 and 89]). This disclosure is readable on an addition-reaction silicon resin.
With regard to claim 7, Kwon’s Example 1 teaches a composition containing 91 parts mass of combined alumina and ag-carbon filler per 10 parts by mass of dispersant and silicone resin (paras. [90-91]). Scaled to 100 parts by mass of the total composition, this equates to 910 parts by mass of filler, which reads on the claimed limit of 3,000 parts by mass or less.
With regard to claim 8, Kwon’s Table 1 teaches a viscosity range of 10 to 900 Pa-s (Table 1), equivalent to 10,000 to 900,000 mPa-s and reads on the claimed limit of 10,000,000 mPa-s or less. Kwon further specifies that the alumina, dispersant, silicone resin, and metal-carbon composite filler are mixed at room temperature 25° C, heated, and then mixed again at room temperature (paras. [60-61]).
As stated above, Kwon teaches the instrument reading and temperature to be obvious.
With regard to claim 9, Kwon teaches that the thermally conductive composition can be utilized in a semiconductor device, which reads directly onto the claimed semiconductor package (para [64]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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