Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Election/Restriction
2. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-3 and 7-11, drawn to “a surface-treated filler” (claims 1-3), “a heat conducting composition” (claims 7-9), and “a cured product” (claims 10 and 11), classified in C08L 83/04, C08K 9/08.
II. Claims 4-6, drawn to "a method for producing a surface-treated filler", classified in C09C 1/3081.
3. The inventions are independent or distinct, each from the other because:
4. Inventions II and I (“a surface-treated filler”) are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product of Group I can be made by another and materially different process than that of Group II, such a process involving the steps of pre-treating the filler before its mixture with the treatment liquid.
5. Inventions I (“a heat conducting composition: and “a cured product”) and II are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06. In the instant case, the process of Group II is directed to a process for preparing a surface-treated filler, not a heat conducting composition involving the addition of a polymer component or a cured product involving curing.
6. Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention; and/or
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112(a).
7. Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
8. The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
9. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
10. During a telephone conversation with Mr. Bruce Kramer on January 28, 2026, a provisional election was made WITHOUT traverse to prosecute the invention of Group I, claims 1-3 and 7-11 (“a surface-treated filler”, “a heat conducting composition” and “a cured product”). Affirmation of this election must be made by applicant in replying to this Office action. Claims 4-6 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
11. The examiner has required restriction between product claims and process claims. Where applicant elects claims directed to the product, and all product claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product claim for that process invention to be rejoined.
12. In the event of rejoinder, the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
13. Claims 2 and 10-11 are objected to because of the following informalities:
As to Claim 2: The applicants are advised to replace the claimed phrase “wherein the filler is at least one selected from the group consisting of at least one metal selected form the group consisting of” with the new phrase “wherein the filler is at least one metal selected from the group consisting of”.
As to Claim 10: The applicants are advised to replace the claimed phrase “A cured product of the heat conducting composition” with the new phrase “A cured product comprising the heat conducting composition”.
As to Claim 11: The applicants are advised to replace the claimed phrase “The cured product of the heat conducting composition according to claim 10” with the new phrase “The cured product according to claim 10”.
Appropriate corrections are 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.
14. Claims 2 and 9 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.
As to Claim 2: As recited, it is not clear whether the metal oxide, silicon, nitride and composite oxide are referring to the metal itself or the filler due to the improper Markush grouping, and thus, unclear what is in the group.
As to Claim 9: It recites, among other things, “the polymer component is at least one selected from…an oil” (Emphasis added). As recited, it is not clear whether “an oil” is referring to as a type of polymer or something else because an oil is not necessarily a polymer and the present specification does not define it to mean to be a polymer species.
Clarification in the next response by applicants will be helpful to better ascertaining the scope of these claims.
Accordingly, the scope of these claims is deemed indefinite.
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.
Double Patenting I
15. Claims 1-3 and 7-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5 and 7-9 of co-pending U.S. Application No. 18/354,873 (hereinafter referred to as “US Appl. ‘873”; corresponding to US PG PUB 2024/0043659).
The claims of the US Appl. ‘873 and the present application recite a surface-treated filler obtained by surface-treating a filler with α-butyl-ω-(2-trimethoxysilylethyl)polydimethylsiloxane having a weight average molecular weight of 500-5,000, wherein its adhesion percentage to the filler is from 20-50% by mass, and is used together with a polymer component to prepare a heat conducting composition. The claims of US Appl. ‘873 and the present application also recite that filler has a cumulative volume-based 50% particle size of from 0.1-30 µm, the filler is at least one selected from the group consisting of a metal, silicon, a metal oxide, a nitride and a composite oxide, and the polymer component is a thermosetting resin, an elastomer and an oil. The claims of US Appl. ‘873 further recite that the surface-treated filler is present in an amount of 30-96 mass% (which overlaps with the presently claimed content of the surface-treated filler, i.e., 40-60% by mass and the presently claimed content of the filler, i.e., 85-98% by mass) and the polymer component has a content of 1-15% by mass (encompassed by the presently claimed 2-15% by mass of the polymer component). The claims of the US Appl. ‘873, like the claims of the present application, recite that the above heat conducting composition is used to prepare a cured product. Moreover, the claims of US Appl. ‘873 recite that their cured product has a thermal conductivity of 3.0 W/m∙K or more which is inclusive of the presently claimed thermal conductivity of 4.0 W/m∙K or more.
However, the claims of US Appl. ‘873 further recite the presence of a silicone-containing oxide-coated nitride having a nitride and a silicon containing oxide coating that coats the nitride in their heat conducting composition. Nevertheless, by virtue of using the transitional phrase “comprising” in independent present claim 7, the claims of the present application do not preclude any additional ingredients including those recited in the claims of US Appl. ‘873. Therefore, it would have been obvious that the instantly claimed invention is unpatentable over the conflicting US Appl. ‘873.
This is a provisional nonstatutory double patenting rejection.
Double Patenting II
16. Claims 1-3 and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, and 9-10 of co-pending U.S. Application No. 18/272,669 (hereinafter referred to as “US Appl. ‘669”; corresponding to US PG PUB 2024/0101885).
The claims of US Appl. ‘669 recite a metal oxide treated with at least one surface treatment agent selected from α-butyl-ω-(2-trimethoxysilylethyl)polydimethylsiloxane (corresponding to the presently claimed surface-treated filler) which according to paragraph [0164] of US PG PUB 2024/0101885 has a molecular weight of 1400 (encompassed by the presently claimed weight average molecular weight of 500-5,000). The claim of the US Appl. ‘669 also recite that the metal oxide (filler) has a cumulative volume-based 50% particle size of 0.1-1 µm which is encompassed by the presently claimed cumulative volume-based 50% particle size of 0.1-30 µm. The claims of US Appl. ‘669 further recite the addition of a curable silicone resin (corresponding to the presently claimed polymer component, i.e., a thermosetting resin) to prepare a heat conducting composition and cured product, wherein the cured product has a thermal conductivity of 10 W/m∙K or more (which is encompassed by the presently claimed thermal conductivity of 4 W/m∙K or more). Moreover, the claims of US Appl. ‘669 recite that the curable silicone resin (polymer component) in an amount of 1-30% by mass (overlaps with the presently claimed amount of 2-15% by mass of the polymer component), the thermally conductive powder (filler) in an amount of 70-98% by mass (overlaps with the claimed amount of 85-98% by mass of the filler), and the surface-treated zinc oxide (surface-treated filler) in an amount of 10-40% by mass (which touches the claimed 40-60% by mass of the surface-treated filler) to provide the heat conducting composition. [0026]-[0032] and [0057]).
However, the claims of US Appl. ‘669 do not specify a particular adhesion percentage of α-butyl-ω-(2-trimethoxysilylethyl)polydimethylsiloxane to the filler as required by the claims of the present application. Nevertheless, the claims of US Appl. ‘669 do recite that the metal oxide (filler) is surface treated with a surface treatment agent selected from α-butyl-ω-(2-trimethoxysilylethyl)polydimethylsiloxane for the purposes of preparing surface-treated fillers in the heat conducting composition useful for cured products. In other words, the amount of surface treatment agent (adhesion percentage) is used is a known results-effect variable, i.e., affecting the properties of the Thus, it would have been obvious to one of ordinary skill in the art to employ an optimum or workable adhesion percentage of α-butyl-ω-(2-trimethoxysilylethyl)polydimethylsiloxane to the filler, with a reasonable expectation of successfully obtaining surface-treated fillers in a heat conducting composition suitable for cured products. See MPEP section 2144.05, IIB.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
17. Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2023/119903 (hereinafter referred to as “WO ‘903”; utilized US 2024/0101885 as its English equivalent).
It is noted that WO 2023/119903 is used for date purposes only, and all paragraph numbers cited below refer to its English equivalent, namely US 2024/0101885 since WO 2023/119903 is in Japanese.
It is further noted that the applicants have not submitted a certified English translation of the foreign priority document JP 2022-117041 having written descriptive support for the pending claims of the present application under 35 USC 112(a), they are not entitled to the benefit of the foreign priority filing date of such document, See MPEP § 2163.03, II-III. Thus, WO ‘903 is available as prior art at this time.
As to Claims 1-3: WO ‘903 teaches a zinc oxide (which according to present claim 2 corresponds to the claimed filler, i.e., metal oxide) surface treated with a surface treatment agent selected from α-butyl-ω-(2-trimethoxysilylethyl)polydimethylsiloxane having a molecular weight of, for example, 1400 (encompassed by the claimed weight average molecular weight of 500-5,000) and its adhesion percentage to the filler is 50% by mass (encompassed by the claimed adhesion percentage of 20-50% by mass) (Paragraph [0167]). WO ‘903 also teaches that zinc oxide (filler) has a cumulative volume-based 50% particle size of, for example, 0.8 µm (encompassed by the claimed cumulative volume-based 50% particle size of from 0.1-30 µm) (Paragraph [0168]).
In light of the above, the cited claims are rendered anticipated by WO ‘903.
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.
18. Claims 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2023/119903 (hereinafter referred to as “WO ‘903”; utilized US 2024/0101885 as its English equivalent).
It is noted that WO 2023/119903 is used for date purposes only, and all paragraph numbers cited below refer to its English equivalent, namely US 2024/0101885 since WO 2023/119903 is in Japanese.
It is further noted that the applicants have not submitted a certified English translation of the foreign priority document JP 2022-117041 having written descriptive support for the pending claims of the present application under 35 USC 112(a), they are not entitled to the benefit of the foreign priority filing date of such document, See MPEP § 2163.03, II-III. Thus, WO ‘903 is available as prior art at this time.
The disclosure with respect to WO ‘903 in paragraph 17 is incorporated here by reference.
WO ‘903 also teaches a heat conducting composition comprising a curable silicone resin which is a resin having an organopolysiloxane structure as a main chain (corresponding to the claimed polymer component, i.e., a thermosetting resin) and a thermally conductive power (filler) comprising zinc oxide surface treated with a surface treatment agent selected from α-butyl-ω-(2-trimethoxysilylethyl)polydimethylsiloxane (corresponding to the claimed surface-treated filler) (Paragraphs [0013]-[0016], [0033] and [0167]). WO ‘903 also teaches that the heat conducting composition is used to prepare a cured product, wherein the cured product has a thermal conductivity of 10 W/m∙K or more (which is encompassed by the claimed thermal conductivity of 4 W/m∙K or more) (Paragraph [0024]-[0025]).
However, it does mention the particular amounts of the filler, surface-treated filler, and polymer component in the heat conducting composition recited in claims 7 and 8.
Nevertheless, WO ‘903 teaches employing the curable silicone resin (polymer component) in an amount of 1-30% by mass (overlaps with the claimed amount of 2-15% by mass of the polymer component), the thermally conductive powder (filler) in an amount of 70-98% by mass (overlaps with the claimed amount of 85-98% by mass of the filler), and the surface-treated zinc oxide (surface-treated filler) in an amount of 10-40% by mass (which touches the claimed 40-60% by mass of the surface-treated filler) to provide the heat conducting composition having both high thermal conduction performance and good fluidity, and also useful for preparing cured products (Paragraphs [0001], [0026]-[0032] and [0057]). See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the overlapping portion of the range taught in the prior art and the range claimed by the applicants has been held to be a prima facie case of obviousness.).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the claimed amounts of the polymer component, filler and surface-treated filler in the heat conducting composition, with a reasonable expectation of successfully providing the same with both high thermal conduction performance and good fluidity useful for cured products as suggested by WO ‘903.
Correspondence
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764