DETAILED ACTION
This office action follows a response filed on July 29, 2026. Claim 1 was amended. Claims 1-7 are pending.
Claim Rejections - 35 USC § 102
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)(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 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Terauchi et al. (WO 2020/0149193; relying on US 12,617,940 for translation).
Example 10 of Table 3 of Terauchi et al. discloses a curable composition comprising 2-decyltetradecyl methacrylate, propylene glycol dimethacrylate, 9-octadecenoic acid dispersant, initiator, and 20 wt % of grade 1 zinc oxide having a D50 particle size of 0.6 µm, and 50 wt % of calcined zinc oxide having a D50 particle size of 10 µm, based on a total weight of filler. The composition is cured upon heat treatment at 75 ºC for 40 min.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Terauchi et al. (US 12,617,940 for translation; relying on foreign priority date of January 15, 2019).
The patent is an English equivalent of Terauchi et al. (WO 2020/0149193), the discussion of which from the preceding paragraph is incorporated here.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Terauchi et al. (US 2024/0052077; relying on foreign priority date of December 1, 2020).
Example 1 of Terauchi et al. discloses a curable Liquid A comprising lauryl methacrylate, propylene glycol dimethacrylate, 9-octadecenoic acid dispersant, initiator, and 31.61 wt % of grade 1 zinc oxide having a D50 particle size of 0.6 µm, and 58.7 wt % of calcined zinc oxide having a D50 particle size of 10 µm, based on a total weight of filler. The composition is cured upon standing at 25 ºC for 24 min.
Example 4 discloses a curable Liquid A comprising lauryl methacrylate, propylene glycol dimethacrylate, 9-octadecenoic acid dispersant, initiator, and 18.06 wt % of grade 1 zinc oxide having a D50 particle size of 0.6 µm, and 27.09 wt % of calcined zinc oxide having a D50 particle size of 10 µm, based on a total weight of filler.
Response to Arguments
The rejections of claims 1-7 under 35 U.S.C. 102(a)(1) as being anticipated by Terauchi et al. (WO 2020/0149193) and equivalent Terauchi et al. (US 12,617,940), set forth in paragraphs 2 and 3 of the previous office action dated May 5, 2026, have been overcome by amendment. New rejections based on amended claims are presented in paragraphs 2 and 3, supra.
Applicant traverses the rejection of claims 1-7 under 35 U.S.C. 102(a)(1) as being anticipated by Terauchi et al. (US 2024/0052077), set forth in paragraph 4 of the previous office action. Applicant submits that reference does not teach the composition of instant claims comprising three heat conductive fillers A, B, and C. Applicant’s arguments have been considered fully, but they are not persuasive.
Present claim 1, parsed to essential features, is drawn to a curable composition comprising a heat conductive filler (A) including at least one selected from the group consisting of heat conductive filler A and heat conductive filler B, and including a heat conductive filler C. One need only select one of the heat conductive filler of the Markush group containing heat conductive filler A and heat conductive filler B. Thus, permissible combinations of heat conductive filler are:
(i) heat conductive filler A and heat conductive filler C
(ii) heat conductive filler B and heat conductive filler C
(iii) heat conductive filler A, heat conductive filler B, and heat conductive filler C
Terauchi et al. teaches the combination of heat conductive filler (i) and therefore, claims are anticipated by prior art. Based on these considerations, the rejection has been maintained.
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 Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones, can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/RIP A LEE/
Primary Examiner, Art Unit 1762
September 18, 2026
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