Prosecution Insights
Last updated: April 19, 2026
Application No. 18/286,263

TWO-PART CURABLE COMPOSITION

Non-Final OA §102§103§112
Filed
Oct 10, 2023
Examiner
CAI, JIAJIA JANIE
Art Unit
1761
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Karthikeyan Sengotaiyan
OA Round
1 (Non-Final)
25%
Grant Probability
At Risk
1-2
OA Rounds
3y 6m
To Grant
41%
With Interview

Examiner Intelligence

Grants only 25% of cases
25%
Career Allow Rate
10 granted / 40 resolved
-40.0% vs TC avg
Strong +16% interview lift
Without
With
+15.6%
Interview Lift
resolved cases with interview
Typical timeline
3y 6m
Avg Prosecution
47 currently pending
Career history
87
Total Applications
across all art units

Statute-Specific Performance

§101
2.0%
-38.0% vs TC avg
§103
54.0%
+14.0% vs TC avg
§102
10.4%
-29.6% vs TC avg
§112
20.3%
-19.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 40 resolved cases

Office Action

§102 §103 §112
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. Claims 1-20 are currently pending and under examination. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b ) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the appl icant regards as his invention. Claim 17 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 17 recites “ the thermally conductive filler comprises at least one an inorganic filler , a boron nitride, an aluminum oxide, an aluminum nitride, graphite, a silicon carbide, a carbon nanotube, a graphene nanoplatelet, and combinations or mixtures thereof ”. It is unclear if the limitation “ an inorganic filler ” in claim 17 is the inorganic filler such as a boron nitride, an aluminum oxide, an aluminum nitride, graphite, a silicon carbide, a carbon nanotube, and a graphene nanoplatelet recited in claim 17, or is another different type of inorganic filler which is not recited in claim 17. For the purpose of the compact prosecution, this limitation is interpreted as “ the thermally conductive filler comprises at least one inorganic filler selected from the group consisting of a boron nitride, an aluminum oxide, an aluminum nitride, graphite, a silicon carbide, a carbon nanotube, a graphene nanoplatelet, and combinations or mixtures thereof ”. Appropriate correction is required. Claim Interpretation The independent claim recites a system comprising " a first-part " and " a second-part ", each with a set of components . While Applicant recites two sub-compositions as two parts constituting the full composition, for purposes of claim interpretation the two parts are extended little patentable weight because the entirety of the composition ultimately comprises both parts as one, single composition. In other words, claim 1's composition is interpreted as a composition comprising a maleic anhydride adducted polybutadiene component , a hydroxyl terminated polybutadiene component , a catalytic component for catalyzing the cure reaction , a diluent component including a non-reactive diluent component , a wetting agent component , and a filler component , wherein the filler component comprises a thermally conductive filler , which is merely the total sum of the first part and the second part. Claim 19's composition is interpreted as a composition comprising at least one maleinized polybutadiene component ; at least one hydroxyl terminated polybutadiene or hydroxyl terminated polybutadiene, polyester polyol, polyether polyol, component ; a catalytic component for catalyzing the cure reaction ; a diluent component including a non-reactive diluent component ; one or more wetting agent component s; and a filler component , wherein the filler component comprises a thermally conductive filler , which is merely the total sum of the first part and the second part. The first part and the second part while comprised in a single composition are not patentably discrete from one another in said single composition. 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. 1. Claims 1 , 3, 4, and 1 5 -20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kropp (US 2022/0006137 A1, hereinafter Kropp). Regarding claim 1 , the term “which cures to form a thermally conductive cured product” is an intended use and does not add structural difference, thus the intended use is extended little patentable weight. See MPEP § 2112.02. Kropp teaches a curable composition , and the curable composition cures to form a cured product ([0062], claim 20) , and the cured product is thermally conductive ([0003]). Kropp teaches (claim 1, [0003]) the curable composition comprising : a polyol component comprising one or more polyols , wherein the hydroxyl groups of the polyols are terminally situated ([0029]), the polyol component is h ydroxyl t erminated p olybutadiene (Table 1); a functional butadiene component , wherein the functional butadiene component is the compound of the following general structural formula: where “ a ” is 30 to 150, and “ n ” is 1 to 30 ([0037]), which reads on the claimed maleic anhydride adducted polybutadiene component ; a thermally conductive filler , which reads on the claimed thermally conductive filler ; a catalyst, wherein the catalyst act s to accelerate the cure of the curable composition ([0050]), which reads on the claimed catalytic component for catalyzing the cure reaction ; a diluent, wherein the diluent includes a non-reactive diluent ([0040]); a dispersant, wherein the dispersant acts to stabilize the filler particles in order to prevent the filler particles from being aggregate d ([0047]). The instant invention discloses that the wetting agent stabilize s dispersions of fillers against flocculation (instant US Pub. [0084]). Thus, the dispersant of Kropp reads on the claimed wetting agent. Kropp also teaches that the curable composition can be provided as a two-part composition, in which a first part includes the polyol component and a second part includes the functional butadiene component ; t he other components (e.g., fillers, catalysts , diluent s, dispersants) can be included in one or both of the first and second parts ([0058]). Regarding claims 3 and 4 , Kropp teaches that the curable composition cures at room temperature of less than 10 minutes ([0069]), and can have a rapid cure of less than 5 minutes ([0084]), which fall within the claimed ranges of “ less than approximately 60 minutes ” and “ less than approximately 10 minutes ”. Regarding claim 1 5 , Kropp teaches that the thermally conductive filler has an average particle size of 70 µm or 10 µm (Table 1), which both fall within the claimed range of “ from approximately 10 to approximately 500 micrometers ”. Regarding claim 1 6 , Kropp teaches that t he curable composition f urther compris es a resin capable of reacting with the acid of an acid/ester formed when the alcohol (of the polyols) reacts with the functional butadiene component (e.g., a maleic anhydride group) (claim 9, [0041]). This resin of Kropp reads on the claimed curable resin . Kropp also teaches that t he curable composition comprises spherical alumina ([0045]), and the spherical alumina has an average particle size of 70 µm (Table 1), which reads on the claimed filler compris ing thermally conductive, smooth, spherical particles having an average diameter of less than approximately 500 microns . Regarding claim 17 , Kropp teaches that the curable composition comprises one or more thermally conductive fillers , and the examples of the thermally conductive fillers include aluminum oxide , boron nitride, silicon carbide, and graphite ([0043]). Regarding claim 18 , Kropp teaches that the curable composition cures to form a cured product ([0062], claim 20) , and the cured product is thermally conductive ([0003]). Regarding claim 19 , the term s “which cures to form a thermally conductive cured product” and “ for the bonding of a heat generating component to a substrate ” are an intended use and do not add structural difference, thus the intended use is extended little patentable weight. See MPEP § 2112.02. Kropp teaches a curable composition, and the curable composition cures to form a cured product ([0062], claim 20) , and the cured product is thermally conductive ([0003]). Kropp also teaches applying a first layer of the curable composition to a first base plate, attaching a plurality of battery cells to the first layer to connect the battery cells to the first base plate, then curing the curable composition (Fig. 1, [0078]-[0079], claim 26), which reads on the claimed bonding of a heat generating component to a substrate . The battery cells of Kropp reads on the claimed heat generating component . The first base plate of Kropp reads on the claimed substrate. Kropp teaches (claim 1, [0003]) the curable composition comprising: a polyol component comprising one or more polyols, wherein the hydroxyl groups of the polyols are terminally situated ([0029]), the polyol component is hydroxyl terminated polybutadiene (Table 1); a functional butadiene component, wherein the functional butadiene component is the compound of the following general structural formula: where “a” is 30 to 150, and “n” is 1 to 30 ([0037]), which reads on the claimed maleinized polybutadiene component; a thermally conductive filler, which reads on the claimed thermally conductive filler ; a catalyst, wherein the catalyst acts to accelerate the cure of the curable composition ([0050]), which reads on the claimed catalytic component for catalyzing the cure reaction; a diluent, wherein the diluent includes a non-reactive diluent ([0040]); a dispersant, wherein the dispersant acts to stabilize the filler particles in order to prevent the filler particles from being aggregated ([0047]). The instant invention discloses that the wetting agent stabilizes dispersions of fillers against flocculation (instant US Pub. [0084]). Thus, the dispersant of Kropp reads on the claimed wetting agent. Kropp also teaches that the curable composition can be provided as a two-part composition, in which a first part includes the polyol component and a second part includes the functional butadiene component; the other components (e.g., fillers, catalysts, diluents, dispersants) can be included in one or both of the first and second parts ([0058]). Regarding claim 20 , Kropp teaches that the curable composition cures to form a cured product ([0062], claim 20) , and the cured product is thermally conductive ([0003]). 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. 2 . Claims 2 , 5-10, and 13-1 4 are rejected under 35 U.S.C. 103 as being unpatentable over Kropp ( US 2022 / 0006137 A1 , hereinafter Kropp) as applied to claim s 1, 3, 4, and 1 5 -20 above . The disclosure of Kropp is relied upon as set forth above. Regarding claim s 2 , 7, 8, and 10 , Kropp teaches that the curable composition can be provided as a two-part composition, in which a first part includes the polyol component and a second part includes the functional butadiene component; the other components (e.g., fillers, catalysts, diluents, dispersants) can be included in both of the first and second parts ([0058]). Kropp also teaches that the polyol component is in an amount of between 0.1 and 20 wt. % based on the total weight of the curable composition , and the functional butadiene component is in an amount of between 3 and 20 wt. % based on the total weight of the curable composition ([0060]). Kropp does not teach that the weight ratio of the first part to the second part is approximately 1:1 by weight . However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the curable composition into a two-part composition, in which a first part includes the polyol component and a second part includes the functional butadiene component , and the other components included in both of the first and second parts as taught by Kropp in equal amounts (i.e. the weight ratio of the first part to the second part being about 1:1), in order to obtain a thermally conductive cured product with a reasonable expectation of success, because the curable composition can be provided as a two-part composition, in which a first part includes the polyol component and a second part includes the functional butadiene component , the polyol component and the functional butadiene component have similar amounts (i.e. the polyol component in an amount of between 0.1 and 20 wt.% , the functional butadiene component in an amount of between 3 and 20 wt.% based on the total weight of the curable composition ), and the other components (e.g., fillers, catalysts, diluents, dispersants) can be included in both of the first and second parts as recognized by Kropp. Kropp teaches that the functional butadiene component is in an amount of between 3 and 20 wt.% based on the total weight of the curable composition ([0060]). T hus , the functional butadiene component ( the claimed maleic anhydride adducted polybutadiene component ) of Kropp can be in an amount of between 6 and 4 0 wt.% based on the total weight of the second part , which overlaps with the claimed range of “ from approximately 10 percent to approximately 20 percent by weight ”. Kropp teaches that the polyol component is in an amount of between 0.1 and 20 wt. % based on the total weight of the curable composition ([0060]). Thus, the polyol component (the hydroxyl terminated polybutadiene ) of Kropp can be in an amount of between 0. 2 and 4 0 wt. % based on the total weight of the first part , which overlaps with the claimed range of “ from approximately 10 percent to approximately 20 percent by weight ”. Kropp also teaches that the dispersant is in an amount of between 0.1 and 10 wt.% based on the total weight of the curable composition ([0047]) , and the other components such as a dispersant can be included in both of the first and second parts ([0058]). T hus , the dispersant (the claimed wetting agent) of Kropp can be in an amount of between 0.1 and 10 wt.% based on each of the first part or the second part , which overlaps with the claimed range of “f rom approximately 0.1 percent to approximately 5.0 percent by weight ”. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. Regarding claims 5 and 6 , Kropp teaches that the cured product of the curable composition has a thermal conductivity of from 1 to 5 W/( m · K ) ([0070]), which overlaps with the claimed ranges of “ from approximately 2.0 to approximately 5.0 watts per meter-kelvin ” and “ from approximately 2.0 to approximately 3.0 watts per meter-kelvin ”. Regarding claim 9 , Kropp teaches that the thermally conductive filler is in an amount of between 35 and 90 wt.% based on the total weight of the curable composition ([0046]), which overlaps with the claimed range of “ from approximately 40 percent to approximately 80 percent by weight of the total weight of the first- and second-parts ”. Regarding claim 13 , Kropp teaches that the catalyst can be in an amount of from about 0 to about 40 parts per hundred resin by weight, and the resin used for calculation is the polyol component (Table 2, Ex amples 1 - 5; [0108]) , which overlaps with the claimed range of “ from approximately 0.1 to approximately 5 per hundred resin by weight of the total weight of the second-part ”. Kropp also teaches that the curable composition can be cur ed without the use of catalyst , the type and the amount of the catalyst used act s to accelerate the cur ing reaction ([0072], [0108] ; Table 2, Ex. 1, 4, and 5 ). Regarding claim 1 4 , Kropp teaches that the curable composition can be provided as a two-part composition, in which a first part includes the polyol component and a second part includes the functional butadiene component ([0058]). Kropp also teaches that the viscosity of the polyol component (prior to mixing) can range from 10 to 10000 poise ([0067]), equaling to from 1 to 1000 Pa·s , the viscosity of the functional butadiene composition (prior to mixing) can range from 10 to 10000 poise ([0067]), equaling to from 1 to 1000 Pa·s , which both overlap with the claimed range of “ approximately 200 to approximately 500 pascal-second ”. 3 . Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kropp ( US 2022 / 0006137 A1 , hereinafter Kropp) as applied to claim s 1, 3, 4, and 1 5 -20 above, and further in view of Mennecke ( WO 2020 / 165288 A1 , see US 2022 / 0073738 A1 , hereinafter Mennecke ). The disclosure of Kropp is relied upon as set forth above. Regarding claim s 11 and 12 , Kropp teaches that the cured product of the curable composition has good thermal conductivity ([0003]) , and efficiently dissipate s the heat away while having good adhesion to substrates for assembly ([0008], Fig. 1) , and is used as a thermally conductive gap filler ([0001]). Kropp also teaches that the curable composition can comprise a plasticizer ([0059]), and the cured product of the curable composition has good tensile strength and good elongation at break ([0009], claim 14). Kropp does not teach that the curable composition comprises at least one of an isopropylated triphenyl phosphate, a butylated triphenyl phosphate, an isopropylated triaryl phosphate, a trischloropropyl phosphate, and combinations or mixtures thereof. However, Mennecke teaches a curable composition has good thermal conductivity and is suitable as adhesive, or gap filler for battery bonding in assembly (abstract). Mennecke also teaches that the curable composition comprises a plasticizer , and the plasticizer is in an amount of up to 10 wt.% based on the total composition (claim 1, [00015]) , which overlaps with the claimed range of “ from approximately 5 percent to approximately 20 percent by weight of the total weight of the first-part and the second- part ”. Mennecke also teaches that the examples of the plasticizer include tris(chloropropyl) phosphate, and isopropylated triphenyl phosphate ([0087]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide a plasticizer such as tris(chloropropyl) phosphate in an amount of up to 10 wt.% based on the total composition as taught by Mennecke as the plasticizer in Kropp, in order to improve the flexibility and plasticity of the resin composition thereby being used as a gap filler with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIAJIA JANIE CAI whose telephone number is 571-270-0951. The examiner can normally be reached Monday-Friday 8:30 am - 5:00 pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JIAJIA JANIE CAI/ Examiner, Art Unit 1761 /ANGELA C BROWN-PETTIGREW/ Supervisory Patent Examiner, Art Unit 1761
Read full office action

Prosecution Timeline

Oct 10, 2023
Application Filed
Mar 21, 2026
Non-Final Rejection — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
25%
Grant Probability
41%
With Interview (+15.6%)
3y 6m
Median Time to Grant
Low
PTA Risk
Based on 40 resolved cases by this examiner. Grant probability derived from career allow rate.

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