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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12, drawn to a moisture-curable thermally conductive material, classified in 524.
II. Claims 13 and 14 drawn to an electronic apparatus, classified in 361.
III. Claims 15-17, drawn to a method for forming a thermal interface on a surface, classified in 427.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and apparatus using the product. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product in the apparatus as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the moisture-curable thermally conductive material as claimed can be used in a materially different process outside of the electronic component, as evidence by Group III.
Inventions I and III are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful in an apparatus, as evidence by group II, and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions II and III are unrelated. The inventions are unrelated as they are not disclosed as capable of use together and they have different designs, modes of operation, and effects (MPEP § 802.01 and § 806.06).
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:
The claims include the thermally conductive material, as well as an apparatus prepared using the material, and another final product prepared using the material. It would represent an undue burden on the examiner to examine all of these inventions in a single application.
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.
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.
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.
During a telephone conversation with Steven Bauman on 3/17/2029, a provisional election was made with traverse to prosecute the invention of Group I, claims 1-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-17 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 102/103
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.
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.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Matsuki et al. (WO 2013042638).
In ¶’s 4, 12, 13, 21, and 32 and Table 1, Matsuki et al. teach a heat conductive material of a moisture curable resin, comprising
(A) an organic polymer (exemplified at 7.0 wt%) containing two or more crosslinkable hydrolyzable silyl groups, wherein the organic polymer has a polyether main chain structure or a polyester main chain structure, wherein the crosslinkable hydrolysable silyl group is an alkoxysilyl group such as trimethoxysilyl group, triethoxysilyl group, or dimethoxymethylsilyl group (see ¶ 20);
(B) a thermally conductive filler (exemplified at 90 wt%); and
(C) a low molecular weight one-end reactive silylated polyether as a reactive diluent to reduce the viscosity of the composition, wherein component (A) and (C) are especially preferably at a ratio of 35:65 to 5:95 (see ¶ 31);
wherein the viscosity of the diluent component (C) is preferable to be 100-1000 mPa·s; and
wherein the heat conductive moisture curable resin composition has a thermal conductivity from 2.70 to 4 W/m·K and hardnesses from 31-75 (see table 2).
In ¶ 32, Matsuki et al. teach that the thermally conductive moisture-curing resin composition may be supplemented with various additives as necessary, including moisture absorbers (water scavengers), fillers (thickening agent) and curing catalysts. In ¶ 35, dibutyltin dilaurate, dibutyltin oxide, and dibutyltin diacetate are exemplified as curing catalysts.
The utility in an orifice recited in the present claim 2 is inherent in the composition.
While Matsuki et al. may not explicitly recite the particular viscosity measurements recited for the curable heat conductive material in the present claims, it is reasonable that the curable heat conductive material of Matsuki et al. would possess the presently claimed viscosities, since the same diluent (C) of the present claims is taught in Matsuki et al. to reduce the viscosity of the composition and the curable heat conductive material of Matsuki et al. is essentially the same as the claimed composition. The USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort (See the Reologica DAR-100 viscoelastic measurements disclosed in Table 2). In any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same viscosities in the inventive composition because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE