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 07/07/2026.
Claims 1-15 are currently pending.
Response to Amendment
The rejection of claim 5 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
However, claims 13 and 14 remain indefinite, albeit for new reasons necessitated by Applicant’s present claim amendments. See below.
Also, Applicant’s amendment to claim 1 raises new 112(d) issues in claims 2 and 3. See below.
The rejection(s) under 35 U.S.C. 103 as being unpatentable over/based-on Bhagwagar et al. (US 9,598,575 B2) optionally in view of Sekiba (US 2010/0140538 A1) are withdrawn in view of the above amendment. While Bhagwagar et al. teaches addition of stearic acid the reference does not teach addition of stearic acid salts as amended. However, the current rejection also utilizes a new secondary reference, Ide et al. (WO 2013/051600 A1), in addition to the previously relied upon prior art of record under a new ground(s) of rejection which renders obvious the instant claims as amended. See the new 103 rejections, below.
Claim Rejections - 35 USC § 112
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 13 and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
In the claim amendments filed 07/07/2027, claims 13 and 14 have been amended to depend on claim 5. Claim 5 further limits claim 1 in that the composition of claim 1 further comprises a (G) component and (H) component. This means that claim 5 requires all of components (A), (B), (C), (D), (E), (F), (G), and (H).
However, claims 13 and 14 recite limitations where the (G) and (H) components are optionally added (“mixing Component (A), Component (C), and optionally Component (G) and/or component (H) …” in claim 13 and “mixing Component (A), Component (C), Component (D), and optionally Component (G) and/or Component (H) …” in claim 14). The recitation that addition of the components are optional means that the claim and thus the methods of manufacturing the compositions do not necessarily require the components and the components need not be present. It is unclear under an indefiniteness rationale (rather than under a clear cut 112(d) rationale) how claims 13 and 14 further limit and/or include all the limitations of the parent claim. How do claims 13 and 14 further limit and/or include all the limitations of parent claim 5 when parent claim 5 expressly requires both (G) and (H) components in the composition and claims 13 and 14 appear to contrarily not necessarily require the previously required components in the methods of manufacturing the compositions?
Furthermore, there are additional steps in the claims after the unclear optionally-containing steps that only include a minimum of one of the three remaining required components (“mixing Component (D) and one or more of Components (B), (E), and (F)” in claim 13 which only requires one of Components (B), (E), and (F) and not necessarily all of the Components (B), (E), and (F) as required by the parent claim and “mixing one or more of Components (B), (E), and (F) “ in claim 14 which similarly only requires one of Components (B), (E), and (F) and not necessarily all of the Components (B), (E), and (F) as required by the parent claim). The recitation that the second mixing includes “one or more of Components (B), (E), and (F)” means that the claims and thus the methods of manufacturing the compositions do not necessarily require the components and all of the components need not be present. For example, this phrasing permits the inclusion of Component (B) without (E) or (F), the inclusion of component (E) without (B) or (F), etc. How do claims 13 and 14 further limit and/or include all the limitations of parent claim 5 when the parent claim expressly requires all of components (A), (B), (C), (D), (E), (F), (G), and (H) in the composition and claims 13 and 14 appear to contrarily not necessarily require the previously required components in the methods of manufacturing the compositions?
Appropriate correction/clarification is required.
For purposes of further examination (or else the claims would be too confusing to be examined relative to prior art), the claims are construed as (G) and (H) are indeed added/required and not optional and (B), (E), and (F) are indeed added/required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Independent claim 1 has been amended to recite the (D) component is “at least one alkali metal salt of stearic acid and/or at least one alkaline earth metal salt of stearic acid”, limiting the component to these specific salts of stearic acid.
Claim 2 depends on claim 1 and recites the component (D) “is at least one or more of (D1) a saturated fatty acid and a metal salt of a saturated fatty acid.” This wholly fails to further limit and/or include all the limitations of the parent claim. Claim 1’s (D) is more narrow than claim 2’s (D). Claim 1 does not permit a fatty acid as the (D) components, only salts. Provision of a fatty acid would be outside the scope of the parent claim. Additionally, claim 1 does not permit any fatty acid salt as the (D) component, only particular salts of stearic acid. Provision of a fatty acid salt other than a stearic acid alkali/alkaline salt is outside the scope of the parent claim.
Claim 3 depends on claim 1, too, and similarly recites the component (D) “is one or more selected from (D1-1) stearic acid, alkali metal salts of stearic acid, and alkaline earth metal salts of stearic acid. This wholly fails to further limit and/or include all the limitations of the parent claim. Claim 1’s (D) is more narrow than claim 3’s (D). Claim 1 does not permit stearic acid as the (D) components, only alkali/alkaline salts of stearic acid. Provision of stearic acid would be outside the scope of the parent claim. Additionally, the remaining (D1-1) species of claim 3 are the exact species of claim 1’s (D) species, meaning the remaining limitations do not further limit the scope of the parent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-4, 6, 8-12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Bhagwagar et al. (US 9,598,575 B2) in view of Ide et al. (WO 2013/051600 A1) and optionally Sekiba (US 2010/0140538 A1). An English language machine translation of Ide et al. is attached to the Office’s supplied copy of the reference.
As to claim 1, Bhagwagar et al. teach compositions, preparation methods, and use of thermally conductive materials comprising silicone composition curable by hydrosilylation, thermally conductive fillers, and phthalocyanine (abstract). The composition comprises (A) an organoalkylpolysiloxane having in one molecule on average at least 0.1 silicon-bonded alkenyl groups; (B) an organopolysiloxane having in one molecule on average at least 2 silicon-bonded hydrogen atoms; (C) a hydrosilylation reaction catalyst in an amount sufficient to initiate curing of the composition (A) and (B); (D) a thermally conductive filler; and (E) a stabilizing additive selected from the group consisting of metal-free and metal-containing phthalocyanine compounds (col. 2 lines 52-66). The disclosed (A) generally reads on the claimed (A), the disclosed (B) reads on the claimed (B), the disclosed (D) reads on the claimed (C), the disclosed (C) reads on the claimed (E), and the disclosed (E) reads on the claimed (F).
An exemplary (A) is a vinyl-terminated polydimethylsiloxane having a kinematic viscosity ranging from 300 to 1000 centiStokes (cSt) (col. 14 lines 44-46); as dynamic viscosity is the kinematic viscosity multiplied by density, the disclosed 300 to 1000 cSt very likely possesses a dynamic viscosity overlapping if not within the claimed range; note that centipoise (cP) is the dynamic viscosity unit obtained from centistoke (cSt) kinematic viscosity units, and 1 cP is equal to one mPa-s. The amount of component (B) relative to component (A) should be such that it is sufficient to provide a molar ratio of SiH groups in component (B) to aliphatically unsaturated organic groups in component (A) (commonly referred to as the SiH:Vi ratio) ranging from 10:1 to 0.1:1 (col. 5 lines 1-9), which is equivalent to the claimed (B) being in an amount in which silicon atom-bonded hydrogen atoms in (B) are 0.1 to 10 mols with respect to 1 mol of alkenyl groups in (A). The thermally conductive filler ranges in an amount of 30-97%, preferably 50-95%, by volume of the composition (col. 7 lines 16-19), which overlaps and encompasses the claimed percent by volume of total solids of the composition range. The hydrosilylation catalyst is provided in a catalytic amount thereof (col. 6 lines 12+). The phthalocyanine may be either metal-free or metal-containing (Id.), is provided as a stabilizing additive and/or pigment (col. 8 lines 55-67), and is preferably either 29H,31H-phthalocyanine or 9H, 31H-phthalocyaninato (2-)-N29, N30, N31, N32 copper (col. 9 lines 1-61); the disclosed phthalocyanine (E) reads on the claimed heat resistance imparting agent (F) because it has substantially the same structure (if not is the same exact chemical compound) as that disclosed (and later claimed) by Applicant (see, e.g., [0039] of the spec. and claim 4 of the instant claims); Applicant’s recitation the component (F) is a heat resistance imparting agent is merely an intended use of the component that makes no structural difference between the claimed component/invention and the prior art component/composition.
Bhagwagar et al. further teach the composition may contain additional optional components that impart further functionalities to the composition and cured material thereof (col. 2 line 66 to col. 3 line 2). While stearic acid is listed as one suitable additive (col. 11 lines 13-16), Bhagwagar et al. fail to teach the additional components include an alkali metal salt of stearic acid and/or an alkaline earth metal salt of stearic acid.
However, Ide et al. is similarly drawn to a curable composition comprising (A) a silicide that has a molecular weight less than 1000 that contains at least two carbon-carbon double bonds, which are reactive with an SiH group, in each molecule, (B) a compound that contains at least two SiH groups in each molecule, (C) a hydrosilylation catalyst, (D) a silicone compound that has a molecular weight of 1000 or more and contains at least one carbon-carbon double bond, which is reactive with an SiH group, in each molecule, and (E) an inorganic filler (abstract). Note that like Bhagwagar et al., Ide et al. teach the (E) filler component is a majority of the composition by the disclosed percentages (p.16). The curable resin composition further desirably comprises a metal soap component (G) of a long-chain fatty acid such as lithium stearate, sodium stearate, and potassium stearate, i.e., alkali metal salts of stearic acid, and magnesium stearate, calcium stearate, and barium stearate, i.e., alkaline earth metal salts of stearic acid (p.19). Hydroxystearate salts are also disclosed in the same portion (Id.). The composition comprises the metal soap in an amount of 0.01-5 parts by weight per 100 parts, i.e., 0.01-5 wt.%, of the composition in order to improve moldability and mold releasability of the curable resin composition (Id. at p.19 and to the top of p.20).
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide an alkali metal and/or alkaline earth metal stearic acid salt as taught by Ide et al. as an additional component in Bhagwagar et al.’s composition in order to obtain a curable resin composition with an improved moldability and mold releasability with a reasonable expectation of success.
The combination of references meets the claimed limitations under a prima facie case of obviousness. The disclosed 300 to 1000 cSt of Bhagwagar et al.’s disclosed alkenyl-containing organopolysiloxane (A) very likely possesses a dynamic viscosity overlapping if not within the claimed range; note that centipoise (cP) is the dynamic viscosity unit obtained from centistoke (cSt) kinematic viscosity units, and 1 cP is equal to one mPa-s (Id.). Bhagwagar et al.’s thermally conductive filler ranges in an amount of 30-97%, preferably 50-95%, by volume of the composition (Id.), which overlaps and encompasses the claimed percent by volume of total solids of the composition range. The disclosed concentration of Ide et al.’s metal soap (G) (0.01-5 parts by weight per 100 parts, i.e., 0.01-5 wt.%, of the composition, that contains 70 wt.% thermally conductive filler (E), Id.) provided to and/or taken together with Bhagwagar et al.’s own concentration of thermally conductive filler (D) reads on the claimed fatty acid ranging from 0.02-2.00 parts by mass per 100 parts by mass of thermally conductive filler (C).
In the event the cited teachings to Bhagwagar et al.’s (A) organoalkylpolysiloxane having in one molecule on average at least 0.1 silicon-bonded alkenyl groups fails to meet or even fail to encompass the claimed dynamic viscosity of 10-100,000 mPa-s at 25°C, Sekiba is optionally relied upon to meet the claimed dynamic viscosity under a prima facie case of obviousness. Sekiba similarly teach a silicone elastomer composition comprising: (A) an organopolysiloxane having in one molecule on average at least 0.1 silicon-bonded alkenyl groups, (B) an organopolysiloxane having in one molecule on average at least 2 silicon-bonded hydrogen atoms, (C) a platinum group metal catalyst, and (D) a thermally conductive filler (abstract). Sekiba teaches the (A) an organopolysiloxane having in one molecule on average at least 0.1 silicon-bonded alkenyl group should have a viscosity ranging from 50 to 1,000,000 mPa-s, preferably 1,000 to 100,000 mPa-s, at 25°C in order to improve the physical properties of the composition and not impair physical properties or handling of the composition (para. 0021).
Thus, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide Bhagwagar et al.’s (A) organoalkylpolysiloxane having in one molecule on average at least 0.1 silicon-bonded alkenyl groups with a viscosity overlapping if not within the claimed dynamic viscosity range in view of the teachings of Sekiba in order to in order to improve the physical properties of the composition and not impair physical properties or handling of the composition with a reasonable expectation of success.
Regarding the remaining limitation that the stearic acid salt component (D) is added to the composition after heating and mixing components (A) and (C) (the organopolysiloxane and thermally conductive filler, respectively), this is a product-by-process limitation. Product-by-process limitations are not limited to the recited steps except to the extent they suggest structure of the finally obtained product/composition. Here, the product-by-process limitation to the order of mixing is extended little patentable weight as the final product implied by the steps is merely a composition comprising components (A) to (F). As the above combination of references teach and meet a composition comprising the recited components (A) to (F), the combination of references fully meets and reads on the claimed product-by-process limitation. See MPEP 2113. In any event, as will be explained later regarding actual process claims 13 and 14, selection of any order of mixing ingredients is prima facie obvious.
As to claims 2 and 3, the above combination of references teach and meet the presence/provision of alkali metal and/or alkaline earth metal salts of stearic acid, which is a saturated fatty acid.
As to claim 4, Bhagwagar et al. teach the presence of a phthalocyanine compound that reads on the claimed (F) and (F1) (Id.).
As to claim 6, Bhagwagar et al. teach the thermal conductivity of the cured product obtained by the curing the composition is 0.2 to 7 W/mK (col. 13 lines 43-45), which overlaps the claimed range.
As to claims 8-12, Bhagwagar et al. teach the composition may be interposed along a thermal path between a heat source and heat dissipator and is cured to obtain a thermal interface material (col. 13 line 42 to col. 14 line 30), which reads on the claimed thermally conductive member and heat dissipating structure thereof comprising the curable composition or a cured product thereof. The heat sources are heat dissipating (i.e., heat generating or heat emitting) components and it disclosed various electronic components and electronic components are such heat sources (Id.); sources include light emitting diodes, semiconductors, transistors, and integrated circuits (Id.), which are well-known in the art to commonly mounted on circuit boards.
As to claim 15, Bhagwagar et al. teach the heat dissipating structure (thermal interface material) is made by applying the composition to a heat dissipating component (applied to the heat source or heat dissipator) and then cured at a temperature sufficient to cure the composition (col. 13 lines 48-61). The working examples employ a curing temperature of 125°C (col. 14 line 66 to col. 15 line 2), which is within the claimed temperature range of less than 130°C. As described above, the heat sources are heat dissipating (i.e., heat generating or heat emitting) components and it disclosed various electronic components and electronic components are such heat sources (Id.); sources include light emitting diodes, semiconductors, transistors, and integrated circuits (Id.), which are well-known in the art to commonly mounted on circuit boards.
Claim 5, 7, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Bhagwagar et al. (US 9,598,575 B2) in view of Ide et al. (WO 2013/051600 A1) and Sekiba (US 2010/0140538 A1).
The disclosure of Bhagwagar et al. in view of Ide et al. and optionally Sekiba is relied upon as set forth above. The only difference between this rejection heading and the prior heating is that Sekiba is no longer optional. Note that, for purposes of this rejection/combination of references, Bhagwagar et al., Ide et al., and Sekiba are already properly combined under a prima facie case of obviousness (at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide Bhagwagar et al.’s (A) organoalkylpolysiloxane having in one molecule on average at least 0.1 silicon-bonded alkenyl groups with a viscosity overlapping if not within the claimed dynamic viscosity range in view of the teachings of Sekiba in order to in order to improve the physical properties of the composition and not impair physical properties or handling of the composition with a reasonable expectation of success).
As to claim 5, Bhagwagar et al. teach, in addition to comprising a fatty acid for treating a metal-based filler, the filler treating agent (H) may also comprise an alkoxysilane having a hydrocarbon/alkyl group of 1-50 carbon atoms, preferably 6-18 carbon atoms (col. 10 lines 50-59). See also the exemplary/preferred alkoxysilanes that clearly contain alkyl groups having 6 or more carbon atoms (col. 10 line 60+).
Bhagwagar et al. fail to teach the composition further comprises a compound represented by component (G1) or (G2).
However, Sekiba teaches their curable organopolysiloxane composition further comprises an organosiloxane component (E) of the formula:
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55
462
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where, inter alia, R1 is a hydrocarbon group with an unsaturated aliphatic bond and R4 is:
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38
184
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See para. 0031-0039 and the exemplary compounds thereof at para. 0041. In view of the identifies of the formula’s variables and examples thereof (Id.), the disclosed (E) encompasses and meets the claimed (G2). They possess an alkenyl group on one end and a hydrolyzable silyl group on another end. Regarding the claimed viscosity of this component, the claimed dynamic viscosity of 10 to 10,000 mPa-s at 25°C would flow naturally from the formula and exemplary compounds thereof as the formula overlaps the scope of the recited formula and exemplary compounds fall within the scope of the recited formula. Sekiba teaches the (E) is provided in an amount of 0.005-10 parts by weight, preferably 0.01-5 parts by weight, per hundred parts by weight of their filler (D) in order to balance moldability, prevention of precipitation/separation, and physical properties of the composition (para. 0042). As Sekiba teaches their filler (D) is provided in amount of 25-4,500 parts by weight per hundred parts of their an organopolysiloxane having in one molecule on average at least 0.1 silicon-bonded alkenyl group (A), the amount of (E) is effectively 0.00125-450 parts by weight per hundred parts (A), which overlaps the claimed range.
Sekiba further teaches their curable organopolysiloxane composition further comprises a silane compound (F) of the formula R5eSi(OR6)4-e, which is an alkoxysilane, where R5 is a monovalent hydrocarbon group such as hexyl, decyl, etc. (an alkyl group with 6 or more carbon atoms) and R6 is an alkyl group (para. 0043). This compound reads on the claimed alkoxysilane (H). Sekiba teaches the (F) is provided in an amount of 0.005-10 parts by weight, preferably 0.01-5 parts by weight, per hundred parts by weight of their filler (D) in order to balance formability, prevention of precipitation/separation, and physical strength of the composition (para. 0045). As Sekiba teaches their filler (D) is provided in amount of 25-4,500 parts by weight per hundred parts of their an organopolysiloxane having in one molecule on average at least 0.1 silicon-bonded alkenyl group (A), the amount of (F) is effectively 0.00125-450 parts by weight per hundred parts (A), which overlaps the claimed range.
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the organosiloxane component (E) (meeting the claimed siloxane G2) and alkoxysilane (F) (meeting the claimed alkoxysilane H) as taught by Sekiba to the thermally conductive curable silicone composition of Bhagwagar et al. in order to provide and balance moldability, prevention of precipitation/separation, physical properties, and physical strength of the composition with a reasonable expectation of success.
As to claim 7, the combination of references meet the claimed limitations. Bhagwagar et al. teach the amount of the thermally conductive overlaps the claimed range of volume percentage of the total composition (Id.), the amount of the (E) taught/provided by Sekiba overlaps the claimed amount of (G) relative to 100 parts by weight (A) (Id.), the amount of (F) taught/provided by Sekiba overlaps the claimed amount of (H) relative to 100 parts by weight (A) (Id.), and Bhagwagar et al. teach the thermal conductivity of the cured product obtained by the curing the composition is up to 7 W/mK which overlaps/meet/touches the claimed range (Id.).
As to claims 13 and 14, Bhagwagar et al. teach the composition may be prepared by combining all ingredients by any convenient means such as mixing at ambient or elevated temperature (col. 13 lines 1-4). Bhagwagar et al. further teach the composition may also be prepared by mixing some components into a first mixture, separately mixing other components into a second mixture, and then mixing the two parts immediately before curing (col. 13 lines 5-8).
While these teachings of Bhagwagar et al. (and Bhagwagar et al. in view of Ide et al. and Sekiba) do not explicitly meet the claimed stepwise mixing of some components followed by heating and mixing followed by mixing the remaining components (e.g., mixing A, C, G, and H, heating/mixing, then mixing B, D, E, & F for claim 13 and mixing A, C, D, G, & H, heating/mixing, then mixing B, E, & F for claim 14), the cited teachings of the reference (and the totality of the combined teachings of the references) nevertheless render obvious the claimed stepwise mixing steps and intermediate heating steps as Bhagwagar et al. specifically teaches and motivates mixing some components in a first part, mixing other components in a second part, and combining the two parts later, with heating (an elevated temperature) applied during any of the mixings, in order to obtain the curable composition with a reasonable expectation of success. Selection of what components are in the first part and what components are in the second part is obvious to a person of ordinary skill in the art as motivated by the reference, and the mixing may very obviously include heating (an elevated temperature). In any event, it is well established under U.S. patent law selection of any order of mixing ingredients as is the case, here, is prima facie obvious. See In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) and In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946).
Response to Arguments
Applicant's arguments filed 07/07/2026 have been fully considered but they are not persuasive.
Applicant argues Bhagwagar et al. (US 9,598,575 B2) and Sekiba (US 2010/0140538 A1) do not teach or suggest the claimed component (D) (at least one alkali metal salt of stearic acid and/or at least one alkaline earth metal salt of stearic acid) as amended. Applicant also argues Bhagwagar et al.’s fatty acids are for a different purpose or effect than that of Applicant’s claimed composition (e.g., for allegedly treating a filler rather than contributing to properties of the cured material as in the claimed invention). Applicant further argues the claimed alkali metal salts of stearic acid and/or oleic acid as incorporated to suppress an increase in hardness following high-temperature aging and Bhagwagar does not recognize or suggest components employed for such a purpose.
In response, Applicant’s arguments 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 secondary reference, Ide et al. (WO 2013/051600 A1), in addition to the prior Bhagwagar et al. primary reference and optional Sekiba secondary reference under a new ground(s) of rejection which renders obvious the instant claims as amended. See the new 103 rejections, above.
In response to Applicant's argument that the prior art does not teach addition of a claimed component for the same purpose as that in the presently claimed invention, 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). Note that the prior art of record (Ide et al.) teach addition of stearic acid salts as a metal salt for improving moldability of the curable composition (Id.). Furthermore, the art nevertheless teaches provision of the same components as claimed and it is not a requirement of a prima facie case of obviousness prior art must teach a component is provided for the same intended purpose as disclosed by Applicant.
Additionally, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., alkali metal salts of oleic acid) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant further argues the claimed sequence of addition recited in claim 1 (i.e., stearic acid salt component (D) is added to the composition after heating and mixing organopolysiloxane component (A) and thermally conductive filler component (C)) affects the manner in which the component (D) functions within the composition.
In response, this argument is not persuasive because the limitation that the stearic acid salt component (D) is added to the composition after heating and mixing components (A) and (C) (the organopolysiloxane and thermally conductive filler, respectively), this is a product-by-process limitation. Product-by-process limitations are not limited to the recited steps except to the extent they suggest structure of the finally obtained product/composition. Here, the product-by-process limitation to the order of mixing is extended little patentable weight as the final product implied by the steps is merely a composition comprising components (A) to (F). As the above combination of references teach and meet a composition comprising the recited components (A) to (F), the combination of references fully meets and reads on the claimed product-by-process limitation. See MPEP 2113. In any event, selection of any order of mixing ingredients is prima facie obvious.
Applicant further argues the combination of Bhagwagar et al. and Sekiba reflects an analysis derived only from Applicant’s disclosure.
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant further argues the claimed alkali metal salt of stearic acid and/or alkaline earth metal salt of stearic acid (D) provided in an amount ranging from 0.05 to 2.00 parts by mass relative to 100 parts by mass of thermally conductive filler (C) is critical and possesses unexpected results.
In response, the claims are not deemed patentable over the reference of record since they are not commensurate in scope with the probative value of data in the examples. The claims encompass a number of distinct stearic acid salts and their mixtures with a broad alkenyl group-containing organopolysiloxane further limited only by a very broad viscosity, a broad organohydrogenpolysiloxane further limited only by a broad molar ratio with the alkenyl group-containing organopolysiloxane, 70-90 vol.% of a broad thermally conductive filler, a catalyst in any amount, and a very broad heat resistance imparting agent in any amount whereas the comparative showing merely demonstrate a very narrow subset of these features. There is also no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested compositions. See In re Clemens, 206 USPQ 289 (CCPA 1980), In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), and In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972).
Prior Art Cited But Not Applied
The following prior art is made of record and not relied upon but is considered pertinent to Applicant's disclosure and/or to support the above references of record:
Washio et al. (JP H07-330927 A) teach a composition excellent in electrical insulating properties comprising organopolysiloxane, a boron nitride powder, a stearic acid compound, and a cure catalyst (abstract). The stearic acid compound acid is an additive component for preventing moisture absorption and conduction of the insulating heat dissipation sheet on a high humidity day (para. 0013). Preferable and exemplary stearic acid compounds are stearic acid itself, lead stearate, zinc stearate, and calcium stearate (para. 0013).
Ota et al. (WO 2019/021826 A1 utilizing US 2020/0270499 A1 as an English language equivalent thereof, both Y references on Form PCT 210) teach a multicomponent curable thermally conductive silicone gel composition which has a high thermal conductivity, excellent gap-filling ability and repairability, and superior storage stability (abstract). In addition to typical components such as an alkenyl group-containing organopolysiloxane, organohydrogenpolysiloxane, catalyst for hydrosilylation reaction, and thermally conductive filler (abstract), Ota et al. teach the addition of a component (F) organopolysiloxane having a hydrolyzable silyl group at one end of the molecular chain for improving the fluidity, gap filling properties, and thixotropic properties of the composition (para. 0102-0114). Ota et al. teach the component (F) may be either one of the following formulae (which meet/overlap the scope of the instantly claimed G1 and G2 components; note, see the identifies of the variables and R groups disclosed in the reference, Id.):
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Ota et al. also serve as evidence phthalocyanine compounds such as copper phthalocyanines, especially 29H, 31H-phthalocyaninato (2-)-N29, N30, N31, N32 copper (the same preferred phthalocyanine in the Bhagwagar 103 reference of record, Id.), function as heat resistance imparting agents in curable organopolysiloxane compositions (para. 0125).
The remaining references listed on Forms 892, 1449, and PCT 210 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above.
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.
Correspondence
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
July 17, 2026
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