DETAILED ACTION
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 .
Response to Amendment
The amendment and response filed on July 16, 2026 has been entered. Claims 1-36 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-18 and 22-36) in the reply filed on July 16, 2026 is acknowledged. Claims 19-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group.
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.
Claims 16-18 and 36 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 16, line 1, the term “the cured thermally conductive silicone rubber composition” lacks antecedent basis.
In claim 18, lines 1 and 2, the terms “the innermost electrically conductive liquid silicone rubber layer and the outer or outermost electrically conductive liquid silicone rubber layer” lack antecedent basis.
In claim 36, line 1, the term “the cured composition” lacks antecedent basis.
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 22-26, 29, 35, and 36 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Naik et al. (US Pub 2019/0092993).
Regarding claim 22, Naik discloses a thermally conductive silicone rubber composition comprising a silicone rubber, a first thermally conductive filler, and a second thermally conductive filler (claims 1 and 4).
Regarding claims 23 and 24, Naik discloses a two-part liquid silicone mixture comprising a cure catalyst (Examples 1 and 2).
Regarding claim 25, Naik discloses that the first and second thermally conductive fillers can be selected from aluminum oxide, alumina, aluminum nitride, and boron nitride (claims 4 and 11).
Regarding claim 26, Naik discloses that the first thermally conductive filler can be aluminum oxide (claim 11).
Regarding claim 29, Naik discloses that the second thermally conductive filler can be boron nitride (claim 11).
Regarding claim 35, Naik discloses that the composition can further comprises additional fillers or additives (claims 1 and 4, [0140], [00189], [0191]).
Regarding claim 36, Naik discloses that the composition exhibits a thermal conductivity of 2 to 14 W/m·K [0036].
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.
Claims 27, 28, and 30-34 are rejected under 35 U.S.C. 103 as being unpatentable over Naik et al. (US Pub 2019/0092993).
Regarding claims 27 and 30, Naik discloses first and second particle size ranges that overlap with the claimed ranges ([0133], [0137]). Naik discloses that the particle size can be measured on a D90 basis [0138]. As set forth in MPEP 2144.05, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claims 28, Naik does not specifically disclose an example of a first filler having a morphology selected from platelets and flakes. However, Naik does disclose that the fillers can have a morphology chosen from spherical, platelet, agglomerates, spherical agglomerates and graphitic [0063]. It would have been obvious to one of ordinary skill in the art to have prepared the composition of Naik wherein the morphology of the first thermally conductive filler is a platelet, as specifically suggested in Naik.
Regarding claim 31, Naik discloses that the second thermally conductive filler can be platelet boron nitride (claim 15).
Regarding claims 32-34, Naik discloses conductive filler weight %, ratio of first conductive filler to second conductive filler, and silicone rubber weight % ranges that overlap with the presently claimed ranges. As set forth in MPEP 2144.05, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Berger et al. (US Pat. No. 5,801,332) in view of Naik et al. (US Pub 2019/0092993).
Regarding claims 1 and 2, Berger discloses a shaped, stretched, and cured cold shrink splice article comprising an electrically conductive silicone layer and a thermally conductive silicone layer (col. 4, lines 1-4; col. 5, lines 26-29; col. 6, 39-40). As detailed above, Naik disclosed the claimed thermally conductive silicone rubber layer. Naik further discloses the thermally conductive silicone rubber layer can be used in articles having multiple layers, such as being disposed between two layers [0196]. It would have been obvious to one of ordinary skill in the art to have prepared the cold shrink splice article of Berger, wherein the thermally conductive silicone rubber layer of Naik is used, motivated by the desire to obtain a cold shrink splice article that exhibits high thermal conductivity and enhanced elasticity, elongation, and hardness properties (Naik [0001]).
Regarding claims 3 and 4, Naik discloses a two-part liquid silicone mixture comprising a cure catalyst (Examples 1 and 2).
Regarding claim 5, Naik discloses that the first and second thermally conductive fillers can be selected from aluminum oxide, alumina, aluminum nitride, and boron nitride (claims 4 and 11).
Regarding claim 6, Naik discloses that the first thermally conductive filler can be aluminum oxide (claim 11).
Regarding claims 7 and 10, Naik discloses first and second particle size ranges that overlap with the claimed ranges ([0133], [0137]). Naik discloses that the particle size can be measured on a D90 basis [0138]. As set forth in MPEP 2144.05, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claims 8, Naik does not specifically disclose an example of a first filler having a morphology selected from platelets and flakes. However, Naik does disclose that the fillers can have a morphology chosen from spherical, platelet, agglomerates, spherical agglomerates and graphitic [0063]. It would have been obvious to one of ordinary skill in the art to have prepared the composition of Naik wherein the morphology of the first thermally conductive filler is a platelet, as specifically suggested in Naik.
Regarding claim 9, Naik discloses that the second thermally conductive filler can be boron nitride (claim 11).
Regarding claim 11, Naik discloses that the second thermally conductive filler can be platelet boron nitride (claim 15).
Regarding claims 12-14, Naik discloses conductive filler weight %, ratio of first conductive filler to second conductive filler, and silicone rubber weight % ranges that overlap with the presently claimed ranges. As set forth in MPEP 2144.05, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 15, Naik discloses that the composition can further comprises additional fillers or additives (claims 1 and 4, [0140], [00189], [0191]).
Regarding claim 16, Naik discloses that the composition exhibits a thermal conductivity of 2 to 14 W/m·K [0036].
Regarding claim 17, Berger as modified by Naik would result in the claimed electronically conductive silicone rubber layer/thermally conductive silicone rubber layer/ electronically conductive silicone rubber layer structure (Berger: col. 5, lines 26-29; Naik: [0196]).
Regarding claim 18, Berger discloses a volume resistivity of the electrically conductive layers that overlaps with the claimed ranges (col. 6, lines 6-19). As set forth in MPEP 2144.05, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub 2023/0374235 and JP 2000-063670 disclose silicone rubbers containing thermally conductive fillers
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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