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 .
Claim Status
Claims 1-8 are pending.
Response to Arguments
Applicant's arguments filed 09/08/2026 have been fully considered but they are not persuasive.
Claim(s) 1-3 and 5 is/are rejected under 35 US.C. 102(a)(1) as being anticipated by Felder.
(p. 3) Applicants argue, “Felder entirely lacks any teaching regarding thermally conductive fillers, thermal conductivity, or heat transfer. Claim 1 of the present application explicitly recites component (B) as a thermally conductive filler, which functions to achieve high heat dissipation performance. Felder's design based on optical refractive index and trace amounts of nanoscale dispersion fundamentally cannot achieve this heat dissipation effect. Anticipation under 35 U.S.C. 102 requires the cited reference to individually and completely disclose all elements of the claim. Since the mapping of the thermally conductive filler element to Felder is clearly deficient, Felder cannot anticipate the novelty of claim 1 of present application.”
Felder discloses the use of metal oxides/hydroxides as component (A) of the composition, wherein the metal may be selected from titanium, zinc, aluminum, etc., which satisfy the thermally conductive filler limitation of claim 1 [p. 0362]. Paragraph [0021] of applicants specification recites aluminum oxide and zinc oxide as suitable thermally conductive fillers (B).
(p. 4) Applicants argue that the organopolysiloxanes of Kato and Matsumoto are not monodisperse and therefore fail to satisfy the organopolysiloxane of claim 1.
Applicants arguments regarding the general teachings of Matsumoto and Kato in [p. 0036] and [p. 0028], respectively, are not persuasive as these general teachings are directed towards a generic formula for the organopolysiloxanes. In contrast, the rejections under 35 U.S.C. 102(a)(1) or, in the alternative, under 35 U.S.C. 103 were based on the discrete structural formulas presented in the examples of Matsumoto and Kato.
The examiner maintains the rejection over Matsumoto as, according to the formula provided by Matsumoto, component (B-1) has a molecular weight 2434 Da. Component (B-1) is presented as a small molecule with a specific number of repeat units; therefore the Mn and Mw are the same, and the molecular weight distribution is 1 [p. 0068].
Alternatively, when presented as a small molecule, a specific number of repeat units suggests little to no variation of Mn to M-w, which obviously embraces a molecular weight distribution of 1. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention as filed to prepare the composition of Matsumoto with a component (B-1) having a molecular weight distribution of 1.2 or less as Matsumoto teaches the organopolysiloxanes having a discreet structure are suitable for use in the composition.
The examiner maintains the rejection over Kato as Component (C) is presented as a small molecule with a specific number of repeat units; therefore the Mn and Mw are the same, and the molecular weight distribution is 1. Alternatively, when presented as a small molecule, a specific number of repeat units suggests little to no variation of Mn to M-w, which obviously embraces a molecular weight distribution of 1. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention as filed to prepare the composition of Kato with a component (C) having a molecular weight distribution of 1.2 or less as Kato teaches the organopolysiloxanes having a discreet structure are suitable for use in the composition.
(p. 5) Applicants argue that, “regarding the Examiner's assertion that Felder discloses a polyorganosiloxane having a monomodal chain distribution and an Mw/Mn < 1.1 in paragraph [0253] making the claimed distribution obvious, this rejection completely ignores the fundamental differences in the technical fields of the two cases.”
The examiner did not make an obviousness rejection over Felder. It is unclear what applicants are referring to. Additionally, the technical field is not relevant in this case since none is present/required in the claims. The claims are merely “A silicon reason composition”.
(p. 5) Applicant’s argue that, “Component (A) of the present application effectively suppresses the agglomeration between fillers and improves the dispersion state by adsorbing onto or coating the filler surface, thereby ensuring the overall fluidity of the composition. The present application discovered that restricting the molecular weight distribution of the single-end alkoxysiloxane to an extremely narrow range of 1.20 or less unexpectedly yields excellent dispersion stabilization and fluidity maintenance. This critical data and unexpected effect are explicitly documented in the specification of the present application. For example, the criticality may be ascertained by comparing Example 3 and Comparative Example 6 of the present application. Specifically, Example 3, using component (A-3) with Mn=6,200 and Mw/Mn=1.06, results in a composition viscosity of only 18.8 Pa-s. In contrast, Comparative Example 6, using component (A'-6) with a lower Mn=4,700 but a broader Mw/Mn=1.46, results in a composition viscosity that significantly spikes to 20.5 Pa-s.”
In response to applicant's argument that a narrow molecular weight distribution allows the composition to maintain fluidity, Matsumoto, for instance, teaches the heat-conductive silicone grease composition remains flexible, easy to re-work and anti-sagging, does not need refrigeration or freezing for storage, does not need heating upon application, avoids any undesired viscosity buildup, is easy to manufacture, allows for heavy loading of filler, and offers high heat transfer [p. 0007]. Although Matsumoto does not attribute the avoidance of undesired viscosity buildup, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, any unexpected results proposed or presented are not relevant with respect to an anticipation rejection.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Felder (US 2018/0208718 A1).
Felder discloses a composition of nano crystalline metal oxides (A) or hydroxides and polyorganosiloxanes (B), and a process to disperse or crystallize these particles [p. 0012]. Felder exemplifies an asymmetric substituted polyorganosiloxane (B) [example 1]:
n-C4H9-Si(Me)2-O-[(Me)2SiO]8-Si(Me)2-C2H4-Si(OMe)3
Felder discloses the polyorganosiloxane (B) has a monomodal chain distribution of Mw/Mn<1.1 [p. 0253]. The polysiloxane (B) has a number average and weight average molecular weight of approximately 931 Da, which is less than 7000 Da, and therefore anticipates the claimed range of instant claims 2 and 3.
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.
Claim(s) 1-4 and 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Matsumoto (US 2011/0248211 A1).
Matsumoto exemplifies compositions comprising component (B-1) and (B-2) [example 1, table 2].
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In example 1 of Matsumoto, (B-1) is present at 8 parts by mass relative to 100 parts by mass of the heat conductive filler (C-2) [table 1, table 2, p. 0070-0073]. Example 1 of Matsumoto further comprises component (A-1), a PDMS capped with trimethoxysilyl groups at both terminals [p. 0064]. In example 1, (A-1) is present at 0.9 parts by mass relative to 100 parts by mass of the heat conductive filler (C-2) [table 2]. According to the provided formula, component (B-1) has a molecular weight 2434 Da. Component (B-1) is presented as a small molecule with a specific number of repeat units; therefore the Mn and Mw are the same, and the molecular weight distribution is 1.
Alternatively, when presented as a small molecule, a specific number of repeat units suggests little to no variation of Mn to M-w, which obviously embraces a molecular weight distribution of 1. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention as filed to prepare the composition of Matsumoto with a component (B-1) having a molecular weight distribution of 1.2 or less as Matsumoto teaches the organopolysiloxanes having a discreet structure are suitable for use in the composition.
Claim(s) 1-2 and 5-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kato (US 2013/0137613 A1).
Kato exemplifies a composition comprising component (C) represented by the following formula [application example 1]:
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.
In the composition exemplified by Kato, component (C) is present at 2.4 parts by weight with respect to 100 parts of heat conductive filler; and additional organopolysiloxane components are present at 7.75 parts by weight with respect to 100 parts of heat conductive filler [application example 1]. According to the provided formula, component (C) has a molecular weight of 7702 Da. Component (C) is presented as a small molecule with a specific number of repeat units; therefore the Mn and Mw are the same, and the molecular weight distribution is 1. Alternatively, when presented as a small molecule, a specific number of repeat units suggests little to no variation of Mn to M-w, which obviously embraces a molecular weight distribution of 1. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention as filed to prepare the composition of Kato with a component (C) having a molecular weight distribution of 1.2 or less as Kato teaches the organopolysiloxanes having a discreet structure are suitable for use in the composition.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato (US 2013/0137613 A1).
Kato teaches component (C) can be represented by the following compound [p. 0029]:
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The general teaching of Kato is that m of component (C) is more preferably 10 to 200 [p. 0028]. Therefore, the general teachings of Kato obviously embrace embodiments wherein component (C) has a number-average molecular weight of 2,000-7,000 Da. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Kato with component (C), wherein component (C) has a number-average molecular weight of 2,000-7,000 Da, as Kato teaches embodiments of component (C) in this molecular weight range are suitable for preparing the composition. In the case where the claimed ranges "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).
Conclusion
THIS ACTION IS MADE FINAL. 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 HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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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) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOLLEY GRACE HESTER/ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766
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