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.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 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.
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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340
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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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380
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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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100
300
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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
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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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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