DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on August 5, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to recite the amount of mineral particles being from 75 pbw and the polymer composition being free of fillers having an intrinsic thermal conductivity of less than 50 W/m-K. These limitations were not previously presented. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
3. Claims 1-10, 12-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Thus, the amended claim 1 recites a limitation of “the polymer composition being free of fillers having an intrinsic thermal conductivity of less than 50 W/m-K”. Instant specification does not provide support for this negative limitation. Instant specification is silent with respect to the presence of filler having an intrinsic thermal conductivity of less than 50 W/m.K and is silent with respect to the polymer composition being free of fillers having an intrinsic thermal conductivity of less than 50 W/m-K.
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.
4. Claims 1-3, 5-10, 12-14 are rejected under 35 U.S.C. 103 as obvious over Kim (US 2018/0212208, Kim’208).
5. Kim’208 discloses a polymer composition comprising:
A) 100 pbw, or used in amount of 15-60%wt ([0013], as to instant claim 5), of a polyarylene sulfide, specifically linear polyarylene sulfide and specifically polyphenylene sulfide ([0020], [0025], as to instant claims 6-7);
B) 5-50 pbw, or used in amount of about 1-20%wt ([0013]), of a thermally conductive particulate material having intrinsic conductivity of 50 W/m.K or more ([0028]), and
C) about 70 pbw, or used in amount of about 30%wt, of an inorganic particulate material, ([0013], as to instant claims 1, 8),
Wherein the composition is having an in-plane thermal conductivity of 1.5-10 W/m.K ([0012], as to instant claims 1 and 3).
6. Thus, the amount of the inorganic particulate material component C) is cited as being about 70 pbw ([0013], which range by using said term “about” includes values of higher than 70 pbw. It is the Examiner’s position that the values of “higher than 70 pbw” and “75 pbw” as required by instant claim 1 are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
7. It is noted that Kim’208 is silent with respect to the composition comprising fillers having an intrinsic thermal conductivity of less than 50 W/m-K (as to instant claim 1).
8. The inorganic particles of component C) include clay minerals such as montmorillonite, vermiculite, mica, silicates and have particle size of 5-60 micron ([0031, as to instant claim 10), including specifically talc ([0031], as to instant claim 9).
9. As to instant claim 14, the composition is used for making one or more components of the external walls, interior walls, cover of a battery module for electric vehicles, wherein plurality of negative and positive electrodes are in contact with interior walls 28 (Figure 3, [0046]-[0048]).
10. Though Kim’208 does not explicitly recite some other properties as claimed in instant invention, including cross-plane conductivity, V-0 rating, a dielectric constant and dissipation factor of the composition measured according to the claimed conditions, since the composition of Kim’208 is essentially the same as that claimed in instant invention, and is having in-plane conductivity of as high as 10 W/m.K, therefore, the composition of Kim’208 will intrinsically and necessarily comprise, or would be reasonably expected to comprise said not cited properties having the values that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well. The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed compositions , if not taught, may be very well met by the compositions of Kim’208, since the compositions of Kim’208 are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
11. Further, though Kim’208 does not explicitly and with sufficient specificity, such as by way of a single example, show the composition comprising polyphenylene sulfide in combination with more than 70 phr of mineral fillers including talc, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of the polyphenylene sulfide with more than 70 phr of mineral fillers including talc as well, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Further, since the thermally conductive particulate material of the component B) is cited as having intrinsic conductivity of about 50 W/m.K ([0028] of Kim’208), therefore, it would have been obvious to a one of ordinary skill in the art to choose and use the thermally conductive particles of the component B) having intrinsic thermal conductivity of 50 W/m.K and less than 100 W/m.K, and make the composition free from thermally conductive particles having the intrinsic conductivity of less than 50 W/m.K, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
12. Claims 1-10, 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2018/0212208, Kim’208) in view of Kim (US 2019/0256703, Kim’703).
13. The discussion with respect to Kim (US 2018/0212208, Kim’208) set forth in paragraphs 4-11 above, is incorporated here by reference.
14. Though Kim’208 does not explicitly teach the cross-plane thermal conductivity and melt viscosity of the composition,
Kim’703 discloses a thermally conductive composition comprising:
A’) polyarylene sulfide including linear polyarylene sulfide ([0014], [0018]);
B’) mineral particles including montmorillonite, vermiculite, mica ([0031]), wherein such composition comprises in-plane thermal conductivity of about 3.5 W/m.K, through-plane conductivity of about 2 W/m.K ([0008]) and melt viscosity of 10-600 Pa.s (0.1-6 kP, ISO 11443:2005) ([0049], as to instant claim 4), wherein Kim’703 explicitly teaches that the compositions having such low viscosity can readily flow into cavity of a mold for making shaped articles including parts of electric vehicles ([0049]-[0051]).
15. Since both Kim’703 and Kim’208 are related to thermally conductive compositions comprising polyarylene sulfide matrix and mineral particles distributed in said matrix, having in-plane thermal conductivity of more than 3 W/m.K, and thereby belong to the same field of endeavor, wherein Kim’703 explicitly teaches such compositions having low melt viscosity of 6 kP or less to allow good flow of the composition into a mold, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kim’208 and Kim’703, and to prepare the composition of Kim’208 having melt viscosity of 6 kP or less, so to allow good flow of said composition into the mold, as taught by Kim’703 as well, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
16. Since the composition of Kim’208 in view of Kim’703 is substantially the same as that claimed in instant invention, and is having in-plane conductivity of 1.5-10 W/m.K, i.e. as high as 10 W/m.K, therefore, the composition of Kim’208 in view of Kim’703 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including cross-plane conductivity, V-0 rating, a dielectric constant and a dissipation factor, having the values that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since, as demonstrated by examples of instant invention, cross-plane thermal conductivity values of such compositions are slightly less, but still close to the values of in-plane thermal conductivity (see Table on page 47 of instant specification) and the in-plane thermal conductivity of the composition of Kim’208 in view of Kim’703 is as high as 10 W/m.K. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
17. Claims 1-10, 12-14 are rejected under 35 U.S.C. 103 as obvious over Kim (US 2020/0304694, Kim’694).
18. Kim’694 discloses a polymer composition comprising:
A) about 20%wt to about 70%wt ([0017], as to instant claim 5) of a polymer matrix containing an aromatic polymer, including polyarylene sulfides and specifically linear polyphenylene sulfide ([0022]-[0023], as to instant claims 6-7);
B) 20-100 pbw per 100 pbw of the polymer matrix of a mineral filler comprising mineral fibers and mineral particles ([0037]); the mineral fibers constitute 1-40%wt of the entire composition and the mineral particles constitute 2-50%wt (as to instant claim 8) of the entire composition ([0037]); and wherein the mineral particles comprise talc ([0038], as to instant claim 9); the mineral particles are having an average diameter of 5-100 micron ([0039], as to instant claim 10).
19. Given the composition of Kim’694 comprises 49%wt of the polyarylene sulfide, 1%wt of mineral fibers and 50%wt of mineral particles, therefore, the amount of said mineral particles will be 102 pbw per 100 pbw of the polyarylene sulfide matrix (as to instant claim 1).
20. The ranges in the composition of Kim’694 are overlapping with the corresponding ranges as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
21. It is noted that Kim’694 is silent with respect to the composition comprising fillers having an intrinsic thermal conductivity of less than 50 W/m-K (as to instant claim 1).
22. As to instant claim 4, the composition comprises a melt viscosity of about 30 to 400 Pa.s ([0072]).
As to instant claim 14, the composition is employed in any part of a camera module, electronic devices ([0077]-[0078]).
23. Though Kim’694 does not explicitly recite some other properties as claimed in instant invention, including in-plane thermal conductivity, a cross-plane thermal conductivity, cross-plane conductivity, V-0 rating, a dielectric constant and dissipation factor of the composition measured according to the claimed conditions, since the composition of Kim’694 is essentially the same as that claimed in instant invention, therefore, the composition of Kim’694 will intrinsically and necessarily comprise, or would be reasonably expected to comprise said not cited properties having the values that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
24. Further, though Kim’694 does not explicitly and with sufficient specificity, such as by way of a single example, show the composition comprising polyphenylene sulfide in combination with 75 phr or more of mineral fillers including talc, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of the polyphenylene sulfide with 75 phr or more of mineral fillers including talc as well, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
25. Claims 1-10, 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2020/0304694, Kim’694) in view of Kim (US 2019/0256703, Kim’703).
26. The discussion with respect to Kim (US 2020/0304694, Kim’694) set forth in paragraphs 17-24 above, is incorporated here by reference.
27. Though Kim’694 does not explicitly teach the cross-plane thermal conductivity and in-plane thermal conductivity of the composition,
Kim’703 discloses a thermally conductive composition comprising:
A’) polyarylene sulfide including linear polyarylene sulfide ([0014], [0018]);
B’) mineral particles including montmorillonite, vermiculite, mica ([0031]), wherein such composition comprises in-plane thermal conductivity of about 3.5 W/m.K, through-plane conductivity of about 2 W/m.K ([0008]) and melt viscosity of 10-600 Pa.s (0.1-6 kP, ISO 11443:2005) ([0049], as to instant claim 4), wherein Kim’703 explicitly teaches that the compositions having such low viscosity can readily flow into cavity of a mold for making shaped articles including parts of electric vehicles ([0049]-[0051]).
28. Since both Kim’703 and Kim’694 are related to thermally conductive compositions comprising polyarylene sulfide matrix and mineral particles distributed in said matrix, having low viscosity, and thereby belong to the same field of endeavor, wherein Kim’703 explicitly teaches such compositions having in-plane thermal conductivity of about 3.5 W/m.K, through-plane conductivity of about 2 W/m.K, therefore, it would have been reasonably expected by a one of ordinary skill in the art that such compositions of Kim’694 comprising the combination of polyarylene sulfide and mineral fillers, similarly to the compositions of Kim’703, would have in-plane thermal conductivity and a cross-plane thermal conduction having values as taught by Kim’703 as well.
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Furter, since the composition of Kim’694 in view of Kim’703 is substantially the same as that claimed in instant invention, therefore, the composition of Kim’694 in view of Kim’703 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including V-0 rating, a dielectric constant and a dissipation factor, having the values that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Response to Arguments
29. Applicant's arguments filed on August 5, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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