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 .
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 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.
Claims 1-31 are pending.
Election/Restrictions
Applicant’s election, without traverse, of Group I and the following species, claims 1-11, 15-27 in the reply filed on 12/18/25 is acknowledged.
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Claim(s) 12-14, 28-31 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/18/25.
Claim Objections
Claim 8 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 6. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 25 recites “is comprises” which needs correction.
Claim Rejections - 35 USC § 103
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-11, 15-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirakawa (WO 2018/016566, see U.S. 2021/0147681 as English equivalent) with evidence from the Gelest NPL document.
Regarding claims 1-11, 15-27, Hirakawa teaches a composition comprising thermal conductive filler corresponding to the claimed C ingredient and overlapping the elected species (as explained below), as well as a B component corresponding to the elected species, as in claim 2, which may be a mixture of multiple compounds within the disclosed formula (1), as in claim 4, which overlaps the claimed k number (d in Hirakawa) of claims 3 and 5, such that first and second compounds with the respective k ranges of claim 5 are within the overlapped disclosure of Hirakawa ([0050]-[0053], [0081]-[0082]), as well as alkenyl and hydrogen terminally functional linear polydimethylsiloxane polymers overlapping the claimed Ai and Aii ingredients and corresponding species ([0086]-[0100]), and with the combined amounts of the Ai and Aii ingredients overlapping the range of claims 6 and 8 (based on the amount of the Ai equivalent compound ([0092]) and the stoichiometric ratio range of the Aii equivalent compound ([0100]) which includes ratios that result in excess vinyl or hydrogen groups, thus yielding a crosslinkable reaction product). The number of repeating units in the Ai and Aii equivalent compounds is not explicitly disclosed, but their structure overlaps the claimed structure (linear polydimethylsiloxane chain with terminal groups bearing vinyl or hydrogen) and the disclosed viscosity ([0091], [0099]) corresponds to a MW with an overlapping number of repeating units (as evidenced by Gelest NPL page 8 and 19).
The relative amounts of the multiple B component equivalents is not disclosed, but a 1:1 mixture of the two B components is prima facie obvious (see below) and the total amount of B component equivalents overlaps the claimed ranges of claim 7 when split in a 1:1 ratio ([0081]). When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding the thermally conductive filler, Hirakawa discloses aluminum nitride with a large size overlapping the claimed second aluminum nitride of claim 27 ([0026]), as well as multiple types of thermally conductive filler (such as zinc oxide, aluminum oxide, and aluminum nitride) having smaller 0.1-1 micron particle and medium 1-30 micron particle sizes of claim 27 ([0036]-[0044], with the smaller particles being for thermal conductivity and the medium particles being for composition uniformity and viscosity) such that it would have been obvious to have included the smaller 0.1-1 micron particles of zinc oxide, aluminum oxide, and aluminum nitride (for thermal conductivity, thereby arriving at the claimed first aluminum oxide) and to have included the medium 1-30 micron particles of zinc oxide, aluminum oxide, and aluminum nitride (for uniformity and viscosity, thereby arriving at the claimed second aluminum oxide and first aluminum nitride). The overall amount of thermally conductive particles overlaps claims 11 (based on the above cited amounts of the Ai, Aii, and B equivalent ingredients which are all based on 100 parts of the thermally conductive filler). Based on the above, the thermally conductive filler of Hirakawa overlaps and renders obvious the claimed thermally conductive filler of claims 9-11 and 25-27 and the elected species.
Hirakawa also discloses that the overall composition may be addition cured (by combining the two Ai and Aii parts into one part as claimed) with a platinum catalyst or alternatively condensation cured with a condensation catalyst and in a moist environment ([0114]-[0118]), such that when the composition is addition cured (e.g., without condensation catalyst and without moisture/water), the Ai and Aii ingredients would be reacted as claimed, to produce a partially cured composition that is still curable (via the residual unreacted vinyl/hydrogen groups discussed above, and the hydrolyzable groups of the B ingredient), as claimed. Even if a combination of addition curing and condensation curing was used (despite Hirakawa disclosing they may be used as alternatives) during the curing process, the Ai and Aii ingredients would still react while leaving some unreacted vinyl/hydrogen groups and unreacted hydrolyzable of the B ingredient (before the composition is 100% cured). Curing to a “gel” state is disclosed as claimed ([0127]).
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787