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 23 August 2023, 05 December 2024, and 06 August 2025. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Endo (US 20070149834 A1).
With regard to claim 1, Endo et al teaches a thermal conductive silicone composition (Abstract), comprising 100 parts by volume of an organopolysiloxane (Component A) possessing a kinematic viscosity of 10 to 10,000 mm2/s at 25° C (Component A, paras 0027, Table 1), structured according to the following formula:
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127
292
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wherein R1 is independently an unsubstituted or substituted monovalent hydrocarbon group; R2 is independently an alkyl, alkoxyalkyl, alkenyl, or acyl group; the variable a represents an integer from 5 to 100, and b is an integer from 1 to 3 (Component A, para 0027). Endo et al further teaches the composition comprises an organopolysiloxane (Component D) in an amount of 500 parts by volume or less with respect to component A (para 0054); represented by the following formula:
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100
311
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wherein R6 is independently an unsubstituted or substituted monovalent hydrocarbon group of 1 to 18 carbon atoms, and the variable e represents a number from 1.8 to 2.2 (Component D, claim 4, para 0058). Additionally, Endo et al discloses an alkoxysilane (Component B), present in an amount of 0.1 to 50 parts by volume, based on 100 parts by mass of component A (para 0041); represented by the following formula:
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wherein R3 is independently an alkyl group of 9 to 15 carbon atoms; R4 is independently an unsubstituted or substituted monovalent hydrocarbon group of 1 to 8 carbon atoms; R5 is independently an alkyl group of 1 to 6 carbon atoms; c is an integer from 1 to 3, and d is an integer from 0 to 2, provided that c+d represents an integer from 1 to 3 (Component B, para 0041). Furthermore, Endo et al teaches incorporating a thermally conductive filler (Component C) possessing high thermal conductivity, exemplified by aluminum nitride exceeding 70 W/m-K (para 0008). Component C is incorporated at a concentration of 100 to 2,500 parts by volume, based on 100 parts by volume of component A (para 0053).
With regard to the mass, Endo et al teaches 100 parts by volume of an organopolysiloxane having the formula as Component A, 0.1-50 parts by volume of an alkoxysilane having the same formula as Component C, 100-2500 parts by volume of heat conductive filler, which is the same as Component D and not more than 500 parts by volume of an organopolysiloxane having the same formula as component B (Abstract, para 0041, 0054, 0059), Endo et al overlaps the instantly claimed ranges. Endo et al teaches the same four components as the instantly claims and thus, equivalent densities; hence, a proportion by volume corresponds directly to an equivalent proportion by mass. A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
With regard to claim 2, Endo et al teaches the thermal conductive silicone composition, when measured at 25° C, exhibits an absolute viscosity of 1 to 500 Pa·s (para 0066).
With regard to claims 3-4, Endo et al teaches the thermal conductive silicone composition has a thermal conductivity of 4 W/mK or more (Table 1).
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 1-4 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 8,017,684. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons listed below.
US 8,017,684 claims a heat conductive silicone grease composition consisting of 100 parts by volume of an organopolysiloxane having the formula as component A, 0.1-50 parts by volume of an alkoxysilane having the same formula as component C, 100-2500 parts by volume of heat conductive filler, which is the same as component D, and a secondary organopolysiloxane having the same formula as component B, with a kinematic viscosity ranging from 10 to 100,000 mm2/s at 25° C. US 8,017,684 further specifies that component D is present in 24.8 to 500 parts by volume per 100 parts by volume of component A. US No 8,017,684 claims teaches the same four components as the instantly claims and thus, equivalent densities; hence, a proportion by volume corresponds directly to an equivalent proportion by mass. The difference between the instant claims and ‘684 is the exact amounts of each component are different. However, the instant overlaps with the claimed range of ‘684 range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05
Conclusion
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761