DETAILED ACTION
Claims 1-11 are pending as amended on 7 May 2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments have been entered and fully considered.
Response to Amendment and Arguments
Applicant’s amendment overcomes the objection to claims 2 and 4. The objection has been withdrawn.
Applicant’s amendment overcomes the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph of claim 4. The rejection has been withdrawn.
Applicant’s amendment distinguishes from US2017/0029571A1 (Kusunoki). The rejection under 35 U.S.C. 102(a)(1)/(a)(2) over Kusunoki has been withdrawn.
Applicant’s amendment does not distinguish from US20200308404A1 (Liu).
Applicant’s arguments in light of the amendment have been fully considered but are not persuasive.
Applicant argues that Liu teaches the presence of at least three alkenyl or alkynl groups thus a plurality of reactive groups. However, instant claims do not exclude additional reactive groups as
the transitional phrase "contains " or “containing” of claim 1 has been interpreted as open terminology allowing the inclusion of other reactive groups. See MPEP2111.03 IV.
Claim Rejections - 35 USC § 103
Claims 1-5 stand and new claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Liu.
Regarding claims 1-4 and 7, 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 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]).
Claims 1 -5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over US2008/0057325A1 (Sakurai).
Regarding claims 1-4 and 7, Sakurai teaches a heat-conductive silicone composition, comprising ([0021]):
an organopolysiloxanes having at least one silicon atom-bonded alkenyl group such as copolymers of dimethylsiloxane and methylvinylsiloxane with both molecular chain terminals blocked with dimethylvinylsiloxy group ([0041] and [0045]), which meets the claimed (A);
an organohydrogenpolysiloxane containing an average of two or more silicon atom-bonded hydrogen atoms within each molecule ([0081]), which meets the claimed (B);
a heat-conductive filler ([0024]), which meets the claimed (C); and
an organosilicon compound represented by a general formula of ([0047], formula (2)):
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Wherein m is 0 to 4 ([0048]), R2 represents an unsubstituted or substituted alkyl group such as a hexyl group ([0049]), which meets the claimed alkyl group of 4 or more carbon atoms; each R3 represents, independently, an unsubstituted or substituted alkyl group such as a methyl group or aryl group such as a phenyl group; R4 and R5 each represent identical or different, unsubstituted or substituted monovalent hydrocarbon groups including a methyl group, butyl or a phenyl group ([0051]); each R6 represents, independently, a hydrogen atom, or an unsubstituted or substituted monovalent hydrocarbon group([0052]); and each R7 represents, independently, an unsubstituted or substituted alkyl group, alkoxyalkyl group, alkenyl group or acyl group ([0053]), wherein the acyl group includes acryloyl or methacryloyl group ([0053]), which renders the claimed polysiloxane (D) and formula (1) obvious when one of the R7 is acryloyl or methacryloyl group.
Regarding claim 5, Sakurai teaches that the composition cures to form a cured heat-conductive product ([0026]).
Regarding claim 8, while Sakurai teaches one of the organic group of
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([0047])
which resembles the claimed formula (2), Sakurai does not teach the claimed n, however, a person of ordinary skill in the art would have been motivated to adjust the m of Sakurai in order to obtain a workable product. It is noted that no criticality has been demonstrated in the specification with regard to the recited in the claims.
Claim 6 stands 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 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).
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 of Liu 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]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Schmitt in view of Sakurai.
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.
Sakurai teaches a heat-conductive silicone composition, comprising ([0021]):
an organopolysiloxanes having at least one silicon atom-bonded alkenyl group such as copolymers of dimethylsiloxane and methylvinylsiloxane with both molecular chain terminals blocked with dimethylvinylsiloxy group ([0041] and [0045]), which meets the claimed (A);
an organohydrogenpolysiloxane containing an average of two or more silicon atom-bonded hydrogen atoms within each molecule ([0081]), which meets the claimed (B);
a heat-conductive filler ([0024]), which meets the claimed (C); and
an organosilicon compound represented by a general formula of ([0047], formula (2)):
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Wherein R2 represents an unsubstituted or substituted alkyl group such as a hexyl group ([0049]), which meets the claimed alkyl group of 4 or more carbon atoms; each R3 represents, independently, an unsubstituted or substituted alkyl group such as a methyl group or aryl group such as a phenyl group; R4 and R5 each represent identical or different, unsubstituted or substituted monovalent hydrocarbon groups including a methyl group, butyl or a phenyl group ([0051]); each R6 represents, independently, a hydrogen atom, or an unsubstituted or substituted monovalent hydrocarbon group([0052]); and each R7 represents, independently, an unsubstituted or substituted alkyl group, alkoxyalkyl group, alkenyl group or acyl group ([0053]), wherein the acyl group includes acryloyl or methacryloyl group ([0053]), which renders the claimed polysiloxane (D) obvious when one of the R7 is acryloyl or methacryloyl group.
Sakurai teaches the composition cures to form a cured heat-conductive product ([0026]), which can be applied the above cured product to a surface of the heat-generating electronic component, and
sandwiching the cured product between the heat-generating electronic component and the heat-radiating component, thereby dissipating the heat into the heat-radiating component ([0029] and [0030]).
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 silicone compound of Sakura 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 heat dissipating ([0007] and [0055]), which is desirable by Schmit ([0012] and [0038]).
Allowable Subject Matter
Claims 9-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-2721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
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