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 amendment/remarks filed 29 July 2026.
The rejection of claims 1-8 as being unpatentable over Tsumura (JP-2004292779-A) in view of Zheng (WO-2020000228-A1) is withdrawn in view of amendments/arguments.
Response to Amendment & Arguments
Applicant's arguments filed 29 with respect to the prior rejections have been considered but are moot because the arguments do not apply to all of the references being used in the current rejection. The current rejection utilizes a new combination of Leibfried (US-5,451,637-A) in view of Hamada (US-20200227337-A1), and Rios (US-20090162596-A1) and further in view of Nguyen (US-5852092-A) under new ground(s) of rejection which renders obvious the instant claims.
Applicant argues unexpected results for the basis of the claimed content of silicon atom bonded hydrogen atoms in the composition (see page 6).
In response, Applicant’s arguments are not persuasive. It is noted that the previous Tsumura (JP-2004292779-A) in view of Zheng (WO-2020000228-A1) was applied prior to the claim amendments. As such, Leibfried (US-5,451,637-A) teaches a composition comprising an organosilicon prepolymer having at least two hydrosilation reactive SiH groups and a polymer having at least two hydrosilation reactive unsaturated carbon-carbon bonds (e.g. liquid polybutadiene, (col 14, line 47)) (Abstract). Leibfried further teaches that the composition may include a hydrosilation catalyst in an amount of approximately 0.0005 to 0.05 wt.% (5 to 500ppm)(col 7, lines 47-50), as well as thermally conductive fillers (page 15, lines 24-39). Leibfried additionally teaches that the unsaturated elastomeric polymer (i.e., liquid polybutadiene) may be present in an amount of approximately 70 to 99wt.% or the composition (claim 2), with the minimum amount of hydrosilation reactive components other than the polymer being in an amount sufficient to permit crosslinking, which may be about 1 wt.% of the composition (i.e., the organosilicon, col 14, lines 26-31). This disclosure reads on the claimed components within the composition, as well as the content of the silicon atom bonded hydrogen atom.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to combine the organosilicon within Leibfried’s parameters. Leibfried would guide one having ordinary skill in the art to employ the silicon atom bonded hydrogen in an amount sufficient to permit crosslinking (col 14, lines 26-31). The reference and the present invention collectively teach analogous components within overlapping ranges. Therefore, a person of ordinary skill in the art would have been motivated to combine the organosilicon within the teachings of Leibfried to arrive at the claimed invention with a reasonable expectation of success. As such, the teaching of Leibfried, when combined with general knowledge in the art, render the claimed silicon atom bonded hydrogen atom content obvious.
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.
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.
Claims 1-4, 6 and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Leibfried (US-5,451,637-A) in view of Hamada (US-20200227337-A1) and Rios (US-20090162596-A1).
With regard to claims 1 and 7, Leibfried teaches a composition comprising an organosilicon prepolymer having at least two hydrosilation reactive SiH groups and a polymer having at least two hydrosilation reactive unsaturated carbon-carbon bonds (e.g. liquid polybutadiene, (col 14, line 47)) (Abstract). Leibfried further teaches that the composition may include a hydrosilation catalyst in an amount of approximately 0.0005 to 0.05 wt.% (5 to 500ppm)(col 7, lines 47-50), as well as fillers (page 15, lines 24-39). Leibfried additionally teaches that the polymer may be present in an amount of approximately 70 to 99wt.% or the composition (claim 2), with the minimum amount of hydrosilation reactive components other than the polymer being in an amount sufficient to permit crosslinking, which may be about 1 wt.% of the composition (which can be the organosilicon, col 14, lines 26-31). These disclosures read on the claimed composition comprising a polyolefin having two aliphatic unsaturated bonds, an organopolysiloxane having at least two silicon atom-bonded hydrogen atoms per molecule, hydrosilylation catalyst not less than 2 ppm, a thermal conductive filler, and the concentration range of the organosilicon of 1 to 10 mass%.
Leibfried does not explicitly teach the viscosity of the polymer that has at least two hydrosilation reactive unsaturated carbon-carbon bonds.
In the same field of endeavor, Hamada teaches a thermally conductive sheet comprising an elastomer resin (e.g. liquid polybutadiene rubber) and thermally conductive fillers, which exhibits an excellent flexibility (para [0021-0022, 0034]). Hamada specifically exemplifies the use of liquid polybutadiene identified by the trade name “Ricon 130,” manufactured by Cray Valley (Example 11, para [0137]), corresponding to the liquid polybutadiene component (a-1) [described in the instant specification on page 11, para [0058])]. Hamada further teaches the composition is utilized inside an electronic device (para [0097]).
Furthermore, Hamada teaches that the viscosity of the elastomer resin may preferably be adjusted depending on the type of thermally conductive filler employed. In particular, Hamada teaches a resin viscosity at 25° C. is of approximately 10 to 2000 Pa·s and explains that a viscosity of 10 Pa·s or more facilitates molding of the thermally conductive sheet, while viscosity of 2000 Pa·s (0.002 mPa·s) or less facilitates molding and improves flexibility by reducing the compression strength of the resulting sheet. This disclosed upper viscosity range overlaps the claimed viscosity of less than 2,500 mPa·s (para [0059]).
With regard to the viscosity, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the viscosity of the liquid polybutadiene of Leibfried. Specifically, adjusting the viscosity into the parameters demonstrated by Hamada or below 2,500 mPa·s. Hamada would guide one having ordinary skill in the art to adjust the viscosity in accordance of thermally conductive fillers and desired characteristics of the resulting product (para [0024 and 0059]). The references collectively teach a liquid polybutadiene-based composition comprising thermally conductive fillers for electronic applications. Therefore, a person of ordinary skill in the art would have been motivated to modify Leibfried’s polybutadiene that exhibits a viscosity within or below 2,500 mPa·s, to obtain a desired molding, flexibility, and thermal-management characteristics.
Leibfried does not explicitly teach the shore OO hardness of the composition.
In the same field of endeavor, Rios teaches a curable composition comprising a catalyst, a lower molecular weight organopolysiloxane having at least two alkenyl groups per molecule, an organopolysiloxane having at least two silicon-bonded hydrogen atoms per molecule, and fillers (Abstract, para [0058]). Rios further teaches that the hydride-containing organopolysiloxane component is employed in an amount sufficient to cure the composition, including an amount of approximately 1.0 to about 10 silicon bonded hydrogen atoms per alkenyl group in the alkenyl-containing organopolysiloxane component (para [0039]).
Furthermore, Rios teaches that the relative amounts of the components may be adjusted to tailor the filler loading and viscosity of the composition and thereby control softness and other properties of the resulting silicone elastomer (para [0031]). Rios further teaches that a suitable lower molecular weight compound, when reacted with the hydride-substituted polyorganosiloxane, provides a cured silicone having a Shore OO Hardness of 20 to 60 (para [0038]), which reads on the claimed shore OO hardness of less than 80. Rios teaches the main difference lies in the fact that the molar ratio of the silicon bonded hydrogen groups (Si—H) groups to the alkenyl groups is usually less than one and is varied to create a “under-cross linked” polymer with the looseness and softness of a cured gel (para [0041]).
With regard to the shore OO hardness, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to tailor the organosilicon of Leibfried. Specifically, adjusting the relative ratio/concentration of the alkenyl groups to silicon bonded hydrogen group ratio in Leibfried to obtain a desired shore OO hardness within the parameters established by Rios. Rios would guide one having ordinary skill in the art to adjust the ratio/concentration of alkenyl to silicon bonded hydrogen group ratio to create a looseness and softness of a cured gel (paras [0039 and 0041]). Such an adjustment would have been a routine optimization of known formulation variables to achieve a desired degree of softness and crosslinking. The references of Leibfried and Rios collectively teach a composition comprising a compound with hydrosilation reactive unsaturated carbon-carbon bonds (alkenyl groups), organopolysiloxane having at least two silicon-bonded hydrogen atoms per molecule, and fillers wherein the relative amounts of the reactive components are selected to provide the desired properties for similar applications. Therefore, a person of ordinary skill in the art would have been motivated to modify Leibfried’s organosilicon within the parameters of Rios to achieve these recognized properties.
With regard to claim 2, Leibfried teaches that the lowest molecular weight elastomeric polymers, such as liquid polybutadiene (col 14, line 47), which reads on the claimed polybutadiene.
With regard to claim 3, Leibfried teaches that fillers and pigments such as vermiculite, mica, wollastonite, calcium carbonate, sand, silica, fumed silica, fused silica, ceramic beads, hollow glass, glass spheres, glass beads, ground glass, waste glass and other mineral fillers serve as examples of fillers that can be incorporated into the composition (col 15, lines 24-38). These fillers encompass the characteristics of the claimed filler materials.
With regard to claim 4, Leibfried teaches that fillers can be present in amount up to approximately 95 wt.% when glass fibers are not used. For instance, spherical particles of fused silica as reinforcing fillers can be included up to 95 wt.%, and thermally conductive ceramic fillers can also be utilized up to approximately 90 wt.% (col 15, lines 35-45). This teaching reads on the limitation that the filler is not less than 50 mass% of the composition.
With regard to claim 6, while Leibfried does not explicitly teach a filler treating agent. Leibfried’s composition contains 0 wt.% of filler treating agent. This would read on the claimed limitation of not more than 1 mass% as zero falls within range.
With regard to claim 8, Leibfried, Rios, and Hamada do not explicitly teach that the cured product is disposed between a battery and a heat sink in an electric vehicle. However, Leibfried does teach the utilization of the cured product for coating or encapsulation for electronic components and devices to remove heat from electronic devices, such as circuit boards (col 2, lines 26-31 and col 15, line 44-45).
Hamada teaches that the thermally conductive sheet can be disposed between a heat generator and a heat dissipator inside an electronic device to facilitate heat dissipation from the heat generator to the heat dissipator utilizing such characteristics (para [0097]). A “heat generator” is the source that produces thermal energy during operation, such as a battery, while a “heat dissipator” is the component that absorbs and rejects heat away from the source, such as a heat sink. Furthermore, an “electronic device” is the thermal interface material that conducts heat from the generator to the dissipator, such as an electric vehicle. Because battery, heat sink, and electric vehicle are merely specific limitations of the exemplary embodiments of these broader terms, the disclosure of Hamada is structurally and functionally analogous to a composition disposed between a battery and a heat sink in an electric vehicle.
With regard to the specific placement, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to apply Leibfried’s composition in a battery-to-heat-sink configuration. Hamada would guide one of ordinary skill in the art to dispose of the cured composition between a heat generator and a heat dissipator (para [0097]). Therefore, the person having ordinary skill in the art would expect that such use constitutes a predictable application of known materials for their intended purpose of thermal management and insulation in electronic devices. The combination merely involves substituting one known application environment for another closely related one, yielding no unexpected results.
With regard to claims 9-13, Leibfried and Hamada do not explicitly teach the linear polysiloxane of the claimed limitation.
In the same field of endeavor, Rios exemplifies hydrogen-containing organopolysiloxane trimethylsiloxy-endblocked methylhydrogensiloxane-methylphenylsiloxane copolymers; dimethylhydrogensiloxy-endblocked methylphenylpolysiloxanes; dimethylhydrogensiloxy-endblocked dimethylsiloxane-methylphenylsiloxane copolymers; trimethylsiloxy-endblocked methylhydrogensiloxane-methylphenylsiloxane copolymers (para [0037]), which read on the claimed group limitation.
Furthermore, Rios teaches that the amount of the hydrogen-containing organopolysiloxane may be selected according to the desired curing characteristics and physical properties, including the softness of the resulting cured elastomer (para [0039]). Rios specifically teaches adjusting the relative amount of silicon-bonded hydrogen groups to alkenyl groups to obtain an under-crosslinked polymer having the desired softness and looseness associated with a cured gel (para [0041]).
With regard to the hydrogen-containing organopolysiloxane, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the organosilicon of Leibfried. Specifically, modifying the hydrogen-containing organosilicon to trimethylsiloxy-endblocked methylhydrogensiloxane-methylphenylsiloxane copolymers; dimethylhydrogensiloxy-endblocked methylphenylpolysiloxanes; dimethylhydrogensiloxy-endblocked dimethylsiloxane-methylphenylsiloxane copolymers; trimethylsiloxy-endblocked methylhydrogensiloxane-methylphenylsiloxane copolymers (para [0037]) established by Rios. Rios would guide one having ordinary skill in the art to employ the hydrogen-containing siloxanes structures having the requisite silicon-bonded hydrogen functionality, shore OO hardness, and cured properties (paras. [0039 and 0041]). As Leibfried can be provided with two or more hydrogen atoms bound to silicon. Therefore, a person of ordinary skill in the art would have been motivated to modify Leibfried’s organosilicon to Rios’s hydrogen-containing silicones to achieve the recognized properties.
Claims 5 are rejected under 35 U.S.C. 103 as being unpatentable over Leibfried (US-5,451,637-A) in view of Hamada (US-20200227337-A1) and Rios (US-20090162596-A1) as applied to claims 1-4, 6, and 7-13 above, and further in view of Nguyen (US-5852092-A).
The teachings of Leibfried, Hamada, and Rios are discussed above.
With regard to claim 5, Leibfried, Hamada, and Rios does not explicitly teach a filler treating agent. However, Leibfried teaches that additional component may be incorporated into the composition that are not specified (col 14, lines 52-53).
In the same field of endeavor, Nguyen teaches an organosilicon-containing composition with enhanced adhesive properties comprising 10 to 80 wt.% of an organic compound (e.g. liquid polybutadiene) and approximately 20 to 90 wt.% of boron nitride or silver (i.e., filler) (Abstract). Nguyen further teaches that the resin system may be utilized as an adhesion in electronic applications (col 1, lines 22-25).
Furthermore, Nguyen teaches the utilization of vinyl silane, such as A172 from OSI Specialties, may be added to enhance the adhesion (col 2, lines 48-50). Nguyen further teaches that silver flake may be coated with vinyl silanes to improve adhesion and toughness (col 5, lines 1-2), which satisfies the role as a filler treating agent.
With regard to the filler treating agent, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the composition of Leibfried. Specifically, incorporating vinyl silane as established in Nguyen. Leibfried would guide one having ordinary skill in the art to employ further components. Nguyen would guide one having ordinary skill in the art to employ vinyl silane to enhance the adhesion and toughness to the filler and composition. The references collectively teach liquid polybutadiene, organosilicon, and fillers for electronic applications. Therefore, a person of ordinary skill in the art would have been motivated to modify Leibfried’s organosilicon within the parameters of Rios to achieve these recognized properties.
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 Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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