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 03 April 2026.
The rejection of claims 1-4 under 35 U.S.C. 103 as being unpatentable over Endo et al. (US-20070149834-A1) is unpersuasive in view of amendments and arguments.
The rejection of claims 1-4 on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 8,017,684 is unpersuasive in view of amendments and arguments.
Response to Amendment
Applicant’s arguments with respect to the prior rejections have been considered but are considered unpersuasive.
Applicant’s argues Endo et al. does not provide a basis for the claimed kinematic viscosity of 10 to 10,000 mm2/s at 25° C of the organopolysiloxane of component B; asserting that the reference only exemplifies the component that corresponds to component B at a kinematic viscosity at 500 mm2/s at 25° C (see page 5).
Applicant’s argument is unpersuasive. Endo et al. explicitly teaches that the kinematic viscosity of the component D (which corresponds to the claimed component B) at 25° C is typically from 10 to 100,000 mm2/s, and preferably from 10 to 10,000 mm2/s (para [0057]), thereby reading on the claimed limitation.
Therefore, it would have been obvious to one of ordinary skill in the art before the effectivefilling date of the invention to have selected the overlapping portion of the ranges disclosed bythe reference because selection of overlapping portion of ranges has been held to be a prima faciecase of obviousness. See MPEP §2144.05(I). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference is not limited to the working examples, see In re Fracalossi, 215 USPQ 569 (CCPA 1982). As such, the teaching of Endo et al., when combined with general knowledge in the art, render the claimed feature obvious.
Applicant argues within the newly-submitted Declaration under 37 CFR 1.132 unexpected results are introduced with such organopolysiloxane of component B exhibiting a kinematic viscosity of 500 mm2/s would fail to obtain an excellent effect that’s achievable in claim 1 (see page 5).
Applicant’s argument is unpersuasive. As stated above, Endo covers the kinematic viscosity range of component D (claimed component B) that satisfies the claimed limitation to be able to achieve the excellent effect.
Therefore, it would have been obvious to one of ordinary skill in the art before the effectivefilling date of the invention to have selected the overlapping portion of the ranges disclosed bythe reference because selection of overlapping portion of ranges has been held to be a prima faciecase of obviousness. See MPEP §2144.05(I). It has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227. As such, the teaching of Endo et al., when combined with general knowledge in the art, render the claimed feature obvious.
Applicant argues U.S. Patent No. 8,017,684 is silent regarding the specific limitations of the amended claims—namely, that amended component B exhibits a kinematic viscosity of 10 to 10,000 mm2/s and claimed component D (the thermal conductive filler) has a claimed thermal conductivity of 10 W/m° C or more (see page 6).
Applicant’s argument is unpersuasive. U.S. Patent No. 8,017,684 claims a kinematic viscosity at 25° C. of 10 to 100,000 mm2/s of component D (claimed component B) within claim 1, thereby reading on the limitation. As well as, 684’ further claims the use of component C (the thermal conductive filler) which directly corresponds to the instant claimed component D within claim 1. The difference between the instant claims and 684’ lies in the fact that the element such as, specific numerical range for the thermal conductivity of the fillers, and thus much more specific.
Therefore, a person having ordinary skill in the art would conclude that the invention described in the instant claims would have been an obvious variation.
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 et al. (US 20070149834 A1).
With regard to claim 1, Endo et al. teaches a thermal conductive silicone composition comprising (Abstract):
(A) 100 parts by volume of an organopolysiloxane represented by the following general formula (1) exhibiting a kinematic viscosity of 10 to 10,000 mm2/s at 25° C (Component A, para [0027]):
PNG
media_image1.png
127
292
media_image1.png
Greyscale
wherein R1 is independently represents 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), thereby reading on the claimed component A.
(D) any quantity up to 500 parts by volume of an organopolysiloxane represented by the following general formula (3) and exhibiting a kinematic viscosity at 25° C. of 10 to 100,000 mm2/s (Component D, paras [0054, 0057, and 0059]):
PNG
media_image2.png
100
311
media_image2.png
Greyscale
wherein R6 represents 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, paras [0054 and 0057] ), thereby reading on the claimed component B.
(B) 0.1 to 50 parts by volume, based on 100 parts y volume of the component A, of an alkoxysilane represent by the following general formula (2) (Component B, paras [0041 and 0048]:
PNG
media_image3.png
92
285
media_image3.png
Greyscale
wherein R3 independently represents an alkyl group of 9 to 15 carbon atoms; R4 independently represents an unsubstituted or substituted monovalent hydrocarbon group of 1 to 8 carbon atoms; R5 independently represents 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]), thereby reading on the claimed component C.
(C) 100 to 2,500 parts by volume, based on 100 parts by volume of component A (Component C, paras [0053 and 0008]). Furthermore, Endo et al. teaches incorporating a thermally conductive filler possessing high thermal conductivity, exemplified by aluminum nitride exceeding 70 W/m-K (para 0008), thereby reading on the claimed component D.
With regard to the mass, Endo et al. teaches 100 parts by volume of an organopolysiloxane having the claimed formula as Component A, any quantity up to 500 parts by volume of an organopolysiloxane having the claimed formula as Component B, 0.1-50 parts by volume of an alkoxysilane having the claimed formula as Component C, 100-2500 parts by volume of heat conductive filler (paras. [0027, 0054, 0057, 0059, 0041, 0048, 0048, and 0053). 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), which reads on the claimed viscosity due to overlapping ranges.
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 specific amount of each component claimed and the feature of the specified thermal conductivity of the thermally conductive fillers is much more specific. Therefore, a person having ordinary skill in the art would conclude that the invention described in the instant claims would also have been an obvious variation. 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
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.
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, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
Prosecution Insights