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 .
DETAILED ACTION
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 applicant regards as his invention.
Claims 1-9 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.
Claim 1 is rejected as being vague and indefinite when these claims recite "with the a-butyl-o-(2- trimethoxysilylethyl)polydimethylsiloxane having an adhesion percentage to the filler of from 20.0 to 50.0% by mass”, because the base for the adhesion percentage as claimed is not clear. In this office action, it is taken that the silane adhesive percentage as claimed is based on the total silane being used to treat the filler. The claims 2-9 are also rejected for depending from claim 1 thus inclusion of its indefinite features.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/
file/efs/guidance/eTD-info-I.jsp.
Claims 1-9 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5 and 8-10 of copending Application No 18/272669. Although the conflicting claims are not identical, they are not patentably distinct from each other because copending application claims a heat conductive composition comprising a polymer component (A); a surface-treated filler (B-3) obtained by surface-treating a filler with a- butyl-o-(2-trimethoxysilylethyl)polydimethylsiloxane; and a silicon-containing oxide-coated aluminum nitride (B-2). Therefore, it would have been obvious that the instantly claimed invention is unpatentable over the conflicting patent application 18/272669.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
(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.
Claims 1-6 and 8-9 are rejected under 35 U.S.C. 102(a)(1)) as being anticipated by Satoh et al (WO 2023119903, English equivalent US 2024/0101885, ‘885 hereafter is cited in this office action).
Regarding claims 1-6, ‘885 discloses a heat conducting composition comprising a polymer component being a curable silicone which is a thermosetting resin and has a viscosity satisfying present claim 6 ([0028]-[0049]); a surface-treated filler (B-3) obtained by surface-treating a metal oxide filler with α-butyl-ω-(2-trimethoxysilylethyl) polydimethylsiloxane having a weight average molecular weight of 1400 with an silane adhesion percentage to the filler of 50.0% by mass, which has D50 particle size of 1 to 20 microns; ([0098]-[0116], [0163], [0165]); and a silicon-containing oxide-coated aluminum nitride having D50 particle size being 15 to 150 micron (B 1 or/and B2, [0060]-[0097]).
Regarding claims 8 and 9, ‘885 discloses a cured product of the heat conducting composition having a thermal conductivity of 3.0 W/m-K or more ([0114]).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Horikoshi et al (US 2004/0242762, ‘762 hereafter) in view of Satoh et al (WO 2023119903, English equivalent US 2024/0101885, ‘885 hereafter is cited in this office action).
Regarding claims 1-7, ‘762 discloses a heat conducting composition comprising a polymer component being a curable silicone which is a thermosetting resin and has a viscosity satisfying present claim 6 ([0012]-[0016], [0022]-[0027]); a surface-treated filler (C) obtained by surface-treating a metal oxide filler with a hydrolysable group containing organopolysiloxane represented by following chemical formula ([0017]-[0018], hydrolysable groups in component (B) will react and being chemically connected on to the surface of alumina particle when they are mixed together as in [0056]):
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wherein R3 can be a methyl or butyl group ([0031]), b can be 0 ([0033] , R4 can be a methyl group ([0032]), m can be 5 to 200, which render a compound reads upon α-butyl-ω-(2-trimethoxysilylethyl) polydimethylsiloxane having a weight average molecular weight significantly overlaps presently claimed range (molecular weight of SiO(CH3) is 77, when m is 10, molecular weight is about 800), wherein the mean particle size of one of the fillers can be 0.1 to 3 microns and another filler can be 5 to 40 microns satisfying present claim 3 ([0039]-[0040]); and the total content of polymer component and filler contents satisfying present claim 7 (Examples 1-3). ‘762 does not set forth the surface treated filler having silane adhesion percentage as present claimed, and the other filler is a silicon-containing oxide coated alumina nitride; however, in the same filed of endeavor, ‘885 discloses a heat conducting composition comprising a polymer component ([0028]-[0049]); a surface-treated filler (B-3) obtained by surface-treating a metal oxide filler with α-butyl-ω-(2-trimethoxysilylethyl) polydimethylsiloxane having a weight average molecular weight of 1400 with an silane adhesion percentage to the filler of 50.0% by mass ([0098]-[0116], [0163], [0165]); and a silicon-containing oxide-coated aluminum nitride having D50 particle size being 15 to 50 micron (B2, [0068]-[0097]); to render a heat conducting composition having high thermal conductivity with good fluidity ([0026], [0144]). In light of these teachings, one of ordinary skill in the art would have been motived to use the surface treated filler and silicon-containing oxide-coated aluminum nitride filler as taught by ‘885, in order to render a heat conducting composition having high thermal conductivity and good fluidity for handling.
Regarding claims 8 and 9, modified 762 teaches all the limitations of claim 1, ‘885 also discloses a cured product of the heat conducting composition having a thermal conductivity of 3.0 W/m-K or more ([0114]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 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, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782