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 remarks filed 04/07/2026.
Claims 1-3, 5, 6, and 9-13 are currently pending and under examination.
The rejection of claims 1, 3, 5, 6, and 9-13 under 35 U.S.C. 103 as being unpatentable over Suzumura (WO 2020/137086 A1) in view of Takahashi (US 5,981,641 A), Ito (EP 2194581 A1), Otsuka (JP 2020073621 A), and Ding (CN 104098914 B) is maintained in view of the above remarks.
The rejection of claim 2 under 35 U.S.C. 103 as being unpatentable over Suzumura (WO 2020/137086 A1) in view of Takahashi (US 5,981,641 A), Ito (EP 2194581 A1), Otsuka (JP 2020073621 A), and Ding (CN 104098914 B), and further in view of Liu (US 2018/0323130 A1) is maintained in view of the above remarks.
Response to Arguments
Applicant's arguments filed 04/07/2026 have been fully considered but they are not persuasive.
1. Applicant argues that the claimed silane coupling agent having an alkyl group having 10 to 22 carbon atoms shows an unexpected result to achieve good fluidity (50,000 Pa·s or less) of the heat conducting composition (p. 3).
Applicant also argues that the criticality of the claimed C10-C22 alkyl group range is clearly demonstrated in the Applicant's specification by comparing Example 4 with Comparative Example 5 (p.3);
In Comparative Example 5, the zinc oxide was surface-treated with n-propyltrimethoxysilane, which has an alkyl group having 3 carbon atoms (C3); this C3 silane falls within the broad C1-C20 range taught by Suzumura; however, the resulting composition in Comparative Example 5 was "too hard", and its viscosity could not even be measured (p. 3);
in contrast, in Example 4, the zinc oxide was surface-treated with decyltrimethoxysilane, which has an alkyl group having 10 carbon atoms (C10), representing the lower limit of the claimed range; the resulting composition in Example 4 achieved excellent fluidity with a measurable viscosity of 25,300 Pa·s (p. 3);
therefore, this objective evidence demonstrates that simply applying Suzumura's broad teaching (C1-C20 silanes) to the zinc oxide particles taught by Takahashi and Ito does not guarantee the claimed fluidity (p. 3).
In response, Applicant's arguments have been fully considered but they are not persuasive.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02 (d). Therefore, Applicant should compare a sufficient number of tests both inside and outside the claimed range to show an unexpected result over a claimed range.
Here, the claimed silane coupling agent has an alkyl group having 10 to 22 carbon atoms. Applicant only compares Example 4 (decyltrimethoxysilane which has an alkyl group having 10 carbon atoms (C10)) with Comparative Example 5 (n-propyltrimethoxysilane which has an alkyl group having 3 carbon atoms (C3)) to demonstrate the unexpected result. Applicant did not compare a sufficient number of tests both inside and outside the claimed range (the claimed C10-C22 alkyl group range) to show an unexpected result.
The limited number of exemplified alkyl-substituted silane coupling agents (decyltrimethoxysilane and/or hexadecyltrimethoxysilane having the claimed 10 to 22 carbon atom alkyl group versus n-propyltrimethoxysilane having a 3 carbon atom alkyl group outside the claims) do not provide an adequate basis for concluding that similar results would be obtained for the dozens of other silane coupling agents having a 10 to 22 carbon atom alkyl group encompassed within the scope of the claims. There is insufficient data to reasonably concluding that the significant number and variety of silane coupling agents included in the claims would behave in the same manner as the two tested decyltrimethoxysilane and hexadecyltrimethoxysilane species. Applicant has also not provided evidence and a reasoned argument explaining why the few tested silane coupling agents are representative of the full scope of the claimed silane coupling agent’s breadth.
The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979). Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition." In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972).
Conclusion
THIS ACTION IS MADE FINAL. 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 JIAJIA JANIE CAI whose telephone number is 571-270-0951. The examiner can normally be reached Monday-Friday 8:30 am - 5:00 pm.
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 on 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.
/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
Prosecution Insights