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 .
Claim Objections
Claims 2 and 4 are objected to because of the following informalities: Claims 2 and 4 recite “the (D) polysiloxane compound”, which appears to be “the polysiloxane compound (D)”. Appropriate correction is 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.
Claim 4 is 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.
Claim 4 recites the limitation “the alkyl group “. There is insufficient antecedent basis for the limitation in claim 1. The phrase should state the “at least one alkyl group”.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4 and 5 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US2017/0029571A1 (Kusunoki), which is listed in Applicant’s information disclosure statement.
Regarding claims 1 and 4, Kunsunoki teaches a curable silicone composition comprising:
an organopolysiloxane of network structure having at least two alkenyl groups ([0035]), which meets the claimed (A);
an organohydrogenpolysiloxane having at least 4 terminal hydrosilyl groups ([0033]), which meets the claimed (B) ;
an inorganic filler such as alumina ([0133]), which meets the claimed thermally conductive filler (C) as evidenced by instant disclosure ([0018]); and
a linear organopolysiloxane having C1-C12 monovalent saturated hydrocarbon group such as butyl and hexyl ([0032] and [0089]), which meets the claimed (D) and alkyl group, respectively.
Regarding claim 5, Kunsunoki teaches that the composition cures into a product that can be applied to electronics as encapsulating materials ([0147]-[0148]).
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over US20200308404A1 (Liu), which is listed in Applicant’s information disclosure statement.
Regarding claims 1 and 4, Liu teaches a thermally conductive composition comprises :
a polyorganosiloxane which has an average per molecule of at least two unsaturated organic group, i.e., alkenyl groups ([0013] and [0017]), which meets the claimed (A).
an organohydrogenpolysiloxane having an average of at least two silicon-bonded hydrogen atoms per molecule ([0037]), which meets the claimed (B);
a single thermally conductive filler or a combination of two or more thermally conductive fillers ([0034]), which meets the claimed (C); and
a compound of the formula ([0029], formula (I)):
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wherein Ra can be an alkyl group having 1 to 6 carbon atoms ([0029]), which renders the claimed alkyl group having 4 or more carbon atoms or butyl group and the claimed polysiloxane (D) obvious since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Regarding claims 2 and 3, Liu teaches that in formula (I) ([0029]), Rb can be an acrylate or methacrylate group, which meets the claimed reactive group and (meth)acryloyl group in polysiloxane compound (D).
Regarding claim 5, Liu teaches the composition cures to form a cured polymer material ([0055]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US2021/0359355A1 (Schmitt) in view of Liu.
Schmitt teaches a battery module comprises a plurality of battery cells arranged in the form of a stack of battery cells, which are enclosed by a mechanical bracing device ([0008] and Figure 1), which meets the module housing, wherein a thermally conductive in the form of a gap filler is located between the outer face of the stack of battery cells and the mechanical bracing device ([0009], [0012] and Figure 1).
Schmitt does not teach the instantly claimed thermally conductive gap filler.
Liu teaches a thermally conductive composition comprises :
a polyorganosiloxane which has an average per molecule of at least two unsaturated organic group, i.e., alkenyl groups ([0013] and [0017]), which meets the claimed (A).
an organohydrogenpolysiloxane having an average of at least two silicon-bonded hydrogen atoms per molecule ([0037]), which meets the claimed (B);
a single thermally conductive filler or a combination of two or more thermally conductive fillers ([0034]), which meets the claimed (C); and
a compound of the formula ([0029], formula (I)):
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wherein Ra can be an alkyl group having 1 to 6 carbon atoms ([0029]), which renders the claimed alkyl group having 4 or more carbon atoms or butyl group and the claimed polysiloxane (D) obvious since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Liu teaches the composition cures to form a cured polymer material on an article ([0055]), which can be electronic components([0056]), wherein the interface between the surface of the article and the surface of the cured polymer material is fully contacted with no or quite less air spaces therefore improved thermal conductivity ([0002], [0007] and [0055]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the cured thermally conductive polymer as the thermally conductive gap filler material of Schmitt. The rationale to do so would have been the motivation provided by the teaching of Liu that to do so would predictably provide full contact between the interfaces therefore improved thermal conductivity ([0007] and [0055]), which is desirable by Schmit ([0012] and [0038]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/ Ph.D., Primary Examiner, Art Unit 1766