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 .
This is a final office action in response to Applicant's remarks and amendments filed on 06/25/2026. Claim 1 is currently amended. Claims 7-11 are newly added. Claims 1-11 are pending review in this action. The previous 35 U.S.C. 102 and 35 U.S.C. 103 rejections are withdrawn in light of Applicant's amendment to Claim 1. New grounds of rejection necessitated by Applicant's amendments are presented below.
Information Disclosure Statement
The information disclosure statements submitted on 06/11/2026 and 07/31/2026 have been considered by the examiner.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Inafuku (US 2018/0051199 A1) (disclosed by Applicant on IDS dated 09/18/2023) further in view of Kato (US 2014/0179863 A1).
Regarding Claim 1:
Inafuku discloses a thermally conductive composition (heat-conductive silicone resin composition) comprising (A) an organopolysiloxane containing at least two alkenyl groups, (B) a hydrogenorganopolysiloxane containing at least two hydrosilyl groups (SiH), and (C) a thermally conductive filler (heat-conductive filler) [0012-0017]. Inafuku further discloses that the thermally conductive composition (heat-conductive silicone resin composition) comprises a platinum group metal based catalyst for the promotion of a hydrosilylation reaction [0016, 0039]. Inafuku further discloses that the platinum group metal based catalyst may be a platinum metal catalyst supported on alumina [0039]. Inafuku further discloses that the organopolysiloxane (A) is an organopolysiloxane containing at least two alkenyl groups per molecule, wherein the alkenyl groups may be selected from a group which includes vinyl, allyl, butenyl, and hexenyl [0025, 0029]. Inafuku further discloses that the hydrogenorganopolysiloxane (B) is a hydrogenorganopolysiloxane containing at least two hydrosilyl groups (SiH) per molecule [0033]. Inafuku further discloses that the thermally conductive filler (heat-conductive filler) may be selected from a group which includes alumina powder, boron nitride powder, aluminum nitride powder, aluminum powder, copper powder, and nickel powder [0037].
Inafuku is deficient in disclosing 1) a reaction rate controlling agent (D), wherein the (D) reaction rate controlling agent has an acetylene moiety; and 2) that in a measurement using a viscoelasticity measuring apparatus under conditions of 35°C, a shear mode, a frequency of 1 Hz, and a strain of 10%, a storage modulus G'1 after 3,600 seconds from the start of the measurement is 2,000 Pa or less, and a storage modulus G'2 after 7,200 seconds from the start of the measurement is 4,350 Pa or more, and wherein viscosity measured at 25°C and the number of revolutions of 10 rpm is 220 Pa∙s or less.
Kato discloses an addition curable self-adhesive silicone rubber composition comprising: (A) an organopolysiloxane, (B) an organosilicon compound, (C) an organohydrogenpolysiloxane, (D) a triazole compound, (E) a platinum catalyst, (F) a reinforcement silica fine powder, and (G) an acetylene alcohol compound modified with a silane or a siloxane [0009-0017]. Kato further discloses that component (G), the acetylene alcohol compound modified with a silane or a siloxane functions as an inhibiting agent for the platinum catalyst, and the timing of the curing initiation can be controlled by the amount of component (G) added [0082].
Therefore, it would be obvious to one of ordinary skill in the art at the time of the filing of the invention to modify the thermally conductive composition of Inafuku by including the acetylene alcohol compound modified with a silane or a siloxane of Kato, in order to function as an inhibiting agent for the platinum catalyst, as taught by Kato. By doing so, the skilled artisan would have a reasonable expectation of success in providing a means of controlling the rate of curing, as taught by Kato. Upon the above modification, the limitation of Claim 1 requiring a reaction rate controlling agent (D), wherein the (D) reaction rate controlling agent has an acetylene moiety, is met.
Modified Inafuku does not explicitly disclose that in measurement using a viscoelasticity measuring apparatus under conditions of 35°C, a shear mode, a frequency of 1 Hz, and a strain of 10%, a storage modulus G'1 after 3,600 seconds from the start of the measurement is 2,000 Pa or less, and a storage modulus G'2 after 7,200 seconds from the start of the measurement is 4,350 Pa or more, and wherein viscosity measured at 25°C and the number of revolutions of 10 rpm is 220 Pa∙s or less.
However, the instant specification teaches that that the organopolysiloxane (A) is an organopolysiloxane containing at least two alkenyl groups, wherein the alkenyl groups may be selected from a group which includes vinyl, allyl, butenyl, and hexenyl [0023-0024]. The instant specification further teaches that the hydrogenorganopolysiloxane (B) is a hydrogenorganopolysiloxane containing at least two hydrosilyl groups [0025]. The instant specification further teaches that the thermally conductive filler may be selected from a group which includes alumina, boron nitride, aluminum nitride, aluminum, copper, and nickel [0029]. The instant specification further teaches that the reaction rate controlling agent (D) may have an acetylene moiety and a silicon atom [0034]. The instant specification further teaches that the thermally conductive composition may include a platinum catalyst [0026]. The instant application also teaches that the storage moduli may be adjusted based on the type and amount of the rate controlling agent, component (A), and component (B) [0016].
As such, the skilled artisan would appreciate that as the thermally conductive composition (heat-conductive silicone resin composition) of modified Inafuku meets all of the compositional limitations of instant Claim 1, and as the viscosity and storage moduli are material properties dependent on the composition of the thermally conductive composition as taught by the instant specification, the thermally conductive composition (heat-conductive silicone resin composition) of Inafuku would be expected to have a storage moduli and viscosity within the claimed ranges. Thus, all of the limitations of Claim 1 are met.
Regarding Claim 2 (Dependent Upon Claim 1):
Inafuku as modified by Kato discloses the thermally conductive composition of Claim 1 as set forth above. Inafuku does not explicitly disclose that in a compressive load test, a ratio of a compressive load after the composition is left to stand at 35°C for 1 hour to an initial compressive load is 145% or less, and a ratio of the compressive load after the composition is left to stand at 18°C for 18 hours to the initial compressive load is 820% or more.
However, the instant specification teaches that the compressive load test measures the viscosity maintaining property of the thermally conductive composition [0018].
As such, the skilled artisan would appreciate that as the thermally conductive composition (heat-conductive silicone resin composition) of modified Inafuku meets all of the compositional limitations of instant Claim 1, and as the compressive load test measures material properties dependent on the composition of the thermally conductive composition as taught by the instant specification, the thermally conductive composition (heat-conductive silicone resin composition) of Inafuku would be expected to meet the ratios of compressive load as claimed. Thus, all of the limitations of Claim 2 are met.
Regarding Claim 3 (Dependent Upon Claim 1):
Inafuku as modified by Kato discloses the thermally conductive composition of Claim 1 as set forth above. Inafuku further discloses that the thermally conductive composition (heat-conductive silicone resin composition) may further comprise an adhesive aid which includes an alkoxysilane compound [0043]. Thus, all of the limitations of Claim 3 are met.
Regarding Claim 4 (Dependent Upon Claim 1):
Inafuku as modified by Kato discloses the thermally conductive composition of Claim 1 as set forth above. As disclosed above in the rejection of Claim 1, Inafuku further discloses that the platinum group metal based catalyst may be a platinum metal catalyst supported on alumina [0039].
Although modified Inafuku does not explicitly disclose a thixotropic agent, the instant application teaches that the thixotropic agent may be alumina [0043]. As such, the skilled artisan would appreciate that the alumina support of the platinum catalyst may be considered a thixotropic agent. Thus, all of the limitations of Claim 4 are met.
Regarding Claim 5 (Dependent Upon Claim 1):
Inafuku as modified by Kato discloses the thermally conductive composition of Claim 1 as set forth above. Inafuku further discloses a thermally conductive member (Cured product) made by curing the thermally conductive composition (heat-conductive silicone resin composition) of Claim 1 [0047, 0054]. Thus, all of the limitations of Claim 5 are met.
Regarding Claim 7 (Dependent Upon Claim 1):
Inafuku as modified by Kato discloses the thermally conductive composition of Claim 1 as set forth above. As detailed above in the rejection of Claim 1, modified Inafuku discloses a reaction rate controlling agent which may be acetylene alcohol compound modified with a silane or a siloxane, thus the reaction rate controlling agent would indeed have a silicon atom and the acetylene moiety. Thus, all of the limitations of Claim 7 are met.
Regarding Claim 8 (Dependent Upon Claim 1):
Inafuku as modified by Kato discloses the thermally conductive composition of Claim 1 as set forth above. As detailed above in the rejection of Claim 1, modified Inafuku discloses a platinum group metal based catalyst [0039]. Thus, all of the limitations of Claim 8 are met.
Regarding Claim 9 (Dependent Upon Claim 1):
Inafuku as modified by Kato discloses the thermally conductive composition of Claim 1 as set forth above.
Inafuku does not explicitly disclose that the component (B) comprises two or more hydrogenorganopolysiloxanes. However, Inafuku does disclose that that component (B) may be selected from a group which includes, for example, 1,1,3,3-tetramethyldisiloxane, 1,3,5,7-tetramethyltetracyclosiloxane, 1,3,5,7,8-pentamethylpentacyclosiloxane, and trimethylsiloxy-endcapped methylhydrogenpolysiloxane [0033-0036].
Therefore, it would be obvious to one of ordinary skill in the art at the time of the filing of the invention to select for component (B), a combination of two hydrogenorganopolysiloxanes, as Inafuku teaches that component (B) may be any of the above list and thus the skilled artisan would expect that if they are suitable alternatives to one another they are suitable to be combined with one another. The substitution of known equivalent structures involves only ordinary skill in the art. In re Fout 213 USPQ 532 (CCPA 1982); In re Susi 169 USPQ 423 (CCPA 1971); In re Siebentritt 152 USPQ 618 (CCPA 1967); In re Ruff 118 USPQ 343 (CCPA 1958). When a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. By doing so, all of the limitations of Claim 9 are met.
Regarding Claim 10 (Dependent Upon Claim 1):
Inafuku as modified by Kato discloses the thermally conductive composition of Claim 1 as set forth above.
Inafuku does not explicitly disclose that the component (C) comprises two or more thermally conductive fillers. However, Inafuku does disclose that that component (C) may be selected from a group which includes, for example, alumina powder, boron nitride powder, aluminum nitride powder, and silicon nitride powder [0037].
Therefore, it would be obvious to one of ordinary skill in the art at the time of the filing of the invention to select for component (C), a combination of two thermally conductive fillers, as Inafuku teaches that component (C) may be any of the above list and thus the skilled artisan would expect that if they are suitable alternatives to one another they are suitable to be combined with one another. The substitution of known equivalent structures involves only ordinary skill in the art. In re Fout 213 USPQ 532 (CCPA 1982); In re Susi 169 USPQ 423 (CCPA 1971); In re Siebentritt 152 USPQ 618 (CCPA 1967); In re Ruff 118 USPQ 343 (CCPA 1958). When a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. By doing so, all of the limitations of Claim 10 are met.
Regarding Claim 11 (Dependent Upon Claim 1):
Inafuku as modified by Kato discloses the thermally conductive composition of Claim 1 as set forth above.
Modified Inafuku does not explicitly disclose that in a thermogravimetric measurement using 50 mg of the reaction rate controlling agent as a sample, under conditions where the temperature is raised from 25°C to 35°C at a heating rate of 4°C/min under a nitrogen atmosphere and then held at a constant temperature of 35°C until 120 minutes have elapsed from the start of raising temperature, when the weight after 60 minutes from the start of the measurement is W60 and the weight after 120 minutes from the start of the measurement is W120, W60-W12 is from 0.3 mg to 1.0 mg.
However, the instant specification teaches that that the reaction rate controlling agent (D) may have an acetylene moiety and a silicon atom [0034]. Modified Inafuku teaches that the reaction rate controlling agent is an acetylene alcohol compound modified with a silane or a siloxane. As such, the skilled artisan would appreciate that as the reaction rate controlling agent of modified Inafuku meets all of the compositional limitations of instant Claim 1, the reaction rate controlling agent of modified Inafuku would be expected to experience the claimed weight loss in the claimed thermogravimetric measurement. Thus, all of the limitations of Claim 11 are met.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Inafuku (US 2018/0051199 A1) (disclosed by Applicant on IDS dated 09/18/2023) as modified by Kato (US 2014/0179863 A1), as applied to Claim 5 above, and further in view of Kim et al. (US 2019/0280355 A1).
Regarding Claim 6 (Dependent Upon Claim 5):
Inafuku as modified by Kato discloses the thermally conductive member of Claim 5 as set forth above. Inafuku further discloses that the thermally conductive composition (heat-conductive silicone resin composition) is suitable for use in various electronic parts [0002].
Inafuku is deficient in disclosing a battery module comprising a gap filler composed of the thermally conductive member according to Claim 5, a plurality of battery cells, and a module housing for storing the plurality of the battery cells, wherein the gap filler is arranged inside the module housing.
Kim discloses a battery module (1) comprising a gap filler composed of a thermally conductive member (30), a plurality of battery cells (10), and a module housing (40) for storing the plurality of the battery cells (10), wherein the gap filler is arranged inside the module housing (40) (Figures 1C and 2, [0046, 0052]).
Therefore, it would be obvious to one of ordinary skill in the art at the time of the invention to utilize the thermally conductive member of Inafuku as a gap filler in a battery module according to Kim, as it is known in the art that such a thermally conductive member is suitable for use within a battery module as a gap filler, as taught by Kim. The skilled artisan would be motivated to utilize the thermally conductive member of Inafuku as such because Inafuku teaches that the thermally conductive composition (heat-conductive silicone resin composition) is suitable for use in various electronic parts (i.e., a battery). Furthermore, the selection of a known configuration based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07). Upon the above modification, all of the limitations of Claim 6 are met.
Response to Arguments
Applicant’s arguments, filed 06/25/2026, with respect to the rejection of Claims 1-6 under 35 U.S.C. 102 and 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Inafuku (US 2018/0051199 A1), Kato (US 2014/0179863 A1), and Kim et al. (US 2019/0280355 A1).
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.
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/E.E.F./ Examiner, Art Unit 1724
/STEWART A FRASER/ Primary Examiner, Art Unit 1724
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