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 .
Election/Restrictions
2. Applicant's election with traverse of Group I (claims 1-16 and 18; “a thermally conductive silicone composition” and “a cured product”) in the reply filed on 06/08/2026 is acknowledged. The applicants argue at pages 2 and 3 of their Remarks filed 06/08/2026 that it would not be a serious burden to perform a complete search and examination on all of the claims as originally filed especially since non-elected Group III contains only claim 19 and depends directly from claim 1, and thus, searching Group I will be likely reveal references relevant to the article features of claim 19.
However, this argument is not persuasive at this time. Restriction for examination is proper since all the inventions listed are independent or distinct for the reasons provided in the previous Office action mailed 04/24/2026, and there would be a serious search and/or examination burden if restriction was not required because the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries). For instance, as indicated in the previous Office action mailed 04/24/2026, the inventions of Group I are classified in C08G77/12 and C08L83/04, whereas the inventions of other non-elected Groups II and III are classified in different search areas including C08K9/06 and H01W40/251. Accordingly, the requirement is still deemed proper and is therefore made FINAL.
3. Claims 17 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 06/08/2026.
Claim Objections
4. Claims 5, 15-16, and 18 are objected to because of the following informalities:
As to Claims 5 and 16: The applicants are advised to add the phrase “the group consisting of” after the claimed phrase “selected from” to be consistent with Markush group language as set forth in MPEP section 2173.05 (h).
As to Claim 15: The applicants are advised to replace the claimed phrase “less than 40%” with the new phrase “less than 40% by weight” as supported at paragraph [0101] of applicants’ published application, i.e., US PG PUB 2024/0076496.
As to Claim 18: The applicants are advised to replace the claimed phrase “of the thermally conductive silicone composition” with the new phrase “comprising the thermally conductive silicone composition”.
Appropriate corrections are required.
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.
5. Claims 1-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Xing et al. (WO 2020/2066261; utilized US 2022/0025181 as its Equivalent) in view of Fujisawa et al. (US 2017/0355804).
It is noted that Xing et al. (WO 2020/206626) is used for date purposes only, and all paragraph numbers cited below refer to its Equivalent, namely US 2022/0025181.
As to Claims 1-14, 16, and 18: Xing et al. disclose a thermally conductive silicone potting composition (Paragraph [0006]) comprising a vinyl organopolysiloxane (corresponding to the claimed at least one alkenyl group-containing organopolysiloxane (A)) (Paragraph [0044]), a hydride organopolysiloxane containing at least two hydrogen bonds bonded to silicon atom each molecule (corresponding to the claimed at least one organohydrogenpolysiloxane having at least two hydrogen atoms directly bonded to a silicon atom in the molecule (B)) (Paragraphs [0063]-[0064]), alumina particles having an average particle diameter which is greater than or equal to 0.1 µm and less than 3 µm (Paragraph [0082]), alumina particles having an average particle diameter which is greater than or equal to 3 and less than 15 µm (Paragraph [0084]), a silane coupling agent (Paragraph [0106]), and a platinum based curing catalyst (Paragraphs [0102]-[0103]). Xing et al. also disclose that the vinyl organopolysiloxane (component (A)) is used in an amount of 1-20 wt.% (Paragraph [0062]), the hydride organopolysiloxane (component (B)) is present in an amount of 1-20 wt.% (Paragraph [0080]), which is inclusive of 0.5-20 wt.% of component (B) recited in claim 10, the silane coupling agent is present in an amount of 0.001-5 wt% (Paragraph [0110]), which is inclusive of 0.1-5% by weight of component (D) recited in claim 13, and the platinum curing catalyst is present in an amount of 1-1000 ppm (Paragraph [0105]). Xing et al. also disclose the vinyl organopolysiloxane (component (A)) is represented by the general formula (1):
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wherein R1 is a vinyl group (CH2=CH), and R2, R3, R4, R5, and R6 are selected as a substituted or unsubstituted monovalent hydrocarbon group including a methyl, an ethyl group, and a phenyl group, M represents a number ranging from larger than 0 and less than 1, D, T, Q each independent represents a number ranging from 0-1, provided that the sum of M, D, T and Q is 1 (Paragraphs [0046], [0048]-[0055]), and the hydride organopolysiloxane is presented by the following formula (2):
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wherein R7, R8, R9, R10, R11, and R12 each independently designates a substituted or unsubstituted monovalent hydrocarbon group, with the proviso that each molecule comprises at least 2 hydrogen atoms directly bonded to silicon; and M’, D’, T’, and Q’ each represents a number ranging from 0 to less than 1, provided that M’+D’+T’+Q’ is 1 (Paragraphs [0066] and [0067]). Moreover, Xing et al. further disclose that the composition further comprises additives including a pigment, a flame retardant and dye (Paragraph [0111]) as required by present claim 16. Additionally, Xing et al. disclose that the thermally conductive silicone potting composition is used to prepare a cured product (Paragraphs [0002], [0031], and [0153]) as required by present claim 18.
While Xing et al. disclose employing 4-65 wt% of alumina particles having an average particle diameter which is greater than or equal to 0.1 µm and less than 3 µm (Paragraphs [0082] and [0090]), which overlaps with the claimed less than 62 wt% of component (C1), and 3-45 wt% of alumina particles having an average particle diameter which is greater than or equal to 3 and less than 15 µm (which overlaps with the claimed less than 80% by weight of component (C2)) in the thermally conductive silicone composition (Paragraphs [0084] and [0095]),they do not specify them as being silane-surface treated as required by the claims of the present application.
Nevertheless, Fujisawa et al. disclose the use of 10-2000 parts by weight of alumina particles fillers having different average particle sizes that are surface treated with an organopolysiloxane or silane coupling agent (corresponding to the claimed silane-surface treated alumina particles) for the purposes of providing curable organopolysiloxane based composition with desired mechanical strength (Paragraphs [0157]-[0162]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ optimum or workable amounts of the silane-surface treated alumina particles, inclusive of those claimed, as taught by Fujisawa et al., in the thermally conductive composition of Xing et al., with a reasonable expectation of successfully imparting desired mechanical strength.
As to Claim 15: Xing et al. do not specifically mention additional thermally conductive filler other than the alumina particles mentioned above in an amount of less than 40% as required by the claim. However, Fujisawa et al. disclose employing any known inorganic fillers including heat conductive fillers, such as metal nitride powder, in an amount of 10-2000 parts by weight (which overlaps with the claimed less than 40%), for the purposes of providing thermally conductive compositions with high heat conductivity (Paragraphs [0157]-[0162]). Thus, it would have been obvious to one of ordinary skill in the art to add the claimed amount of any known thermally conductive fillers including metal nitride powder taught by Fujisawa et al. in the thermally conductive composition of Xing et al., with a reasonable expectation of successfully providing the same with desired heat conductivity.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
6. Claims 1-16 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 13-20 of U.S. Patent No. 12,202,975 (hereinafter referred to as “the patent”) in view of Fujisawa et al. (US 2017/0355804).
The claims of the patent and the present application are directed to thermally conductive silicone compositions. The claims of the patent also recite vinyl organopolysiloxane (corresponding to the presently claimed at least one alkenyl group-containing organopolysiloxane (A)), a hydride organopolysiloxane containing at least two hydrogen bonds bonded to silicon atom each molecule (corresponding to the presently claimed at least one organohydrogenpolysiloxane having at least two hydrogen atoms directly bonded to a silicon atom in the molecule (B)), alumina particles having an average particle diameter which is greater than or equal to 0.1 µm and less than 3 µm, alumina particles having an average particle diameter which is greater than or equal to 3 and less than 15 µm, a silane coupling agent and a platinum based curing catalyst. The claims of the patent also recite that the vinyl organopolysiloxane (component (A)) is used in an amount of 1-20 wt.%, the hydride organopolysiloxane (component (B)) is present in an amount of 1-20 wt.%, which is inclusive of 0.5-20 wt.% of component (B) recited in present claim 10, the silane coupling agent is present in an amount of 0.001-5 wt%, which is inclusive of 0.1-5% by weight of component (D) recited in present claim 13, and the platinum curing catalyst is present in an amount of 1-1000 ppm. The claims of the patent further recite that the vinyl organopolysiloxane (component (A)) is represented by the general formula (1):
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wherein R1 is a vinyl group (CH2=CH), and R2, R3, R4, R5, and R6 are selected as a substituted or unsubstituted monovalent hydrocarbon group including a methyl, an ethyl group, and a phenyl group, M represents a number ranging from larger than 0 and less than 1, D, T, Q each independent represents a number ranging from 0-1, provided that the sum of M, D, T and Q is 1 and the hydride organopolysiloxane is presented by the following formula (2):
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wherein R7, R8, R9, R10, R11, and R12 each independently designates a substituted or unsubstituted monovalent hydrocarbon group, with the proviso that each molecule comprises at least 2 hydrogen atoms directly bonded to silicon; and M’, D’, T’, and Q’ each represents a number ranging from 0 to less than 1, provided that M’+D’+T’+Q’ is 1.
While the claims of the patent recite employing 4-65 wt% of alumina particles having an average particle diameter which is greater than or equal to 0.1 µm and less than 3 µm, which overlaps with the presently claimed less than 62 wt% of component (C1), and 3-45 wt% of alumina particles having an average particle diameter which is greater than or equal to 3 and less than 15 µm (which overlaps with the presently claimed less than 80% by weight of component (C2)) in the thermally conductive silicone, they do not specify them as being silane-surface treated as required by the claims of the present application.
Nevertheless, Fujisawa et al. disclose the use of 10-2000 parts by weight of alumina particles fillers having different average particle sizes that are surface treated with an organopolysiloxane or silane coupling agent (corresponding to the claimed silane-surface treated alumina particles) for the purposes of providing curable organopolysiloxane based composition and cured product with desired mechanical strength (Paragraphs [0157]-[0162]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ optimum or workable amounts of the silane-surface treated alumina particles, inclusive of those presently claimed, as taught by Fujisawa et al., in the thermally conductive composition of the patent claims., with a reasonable expectation of successfully imparting desired mechanical strength for cured products.
As to present Claim 15: The claims of the patent do not specifically mention additional thermally conductive filler other than the alumina particles mentioned above in an amount of less than 40% as required by the present claim. However, Fujisawa et al. disclose employing any known inorganic fillers including heat conductive fillers, such as metal nitride powder, in an amount of 10-2000 parts by weight (which overlaps with the claimed less than 40%), for the purposes of providing thermally conductive compositions with high heat conductivity (Paragraphs [0157]-[0162]). Thus, it would have been obvious to one of ordinary skill in the art to add the claimed amount of any known thermally conductive fillers including metal nitride powder taught by Fujisawa et al. in the thermally conductive composition of the patent claims, with a reasonable expectation of successfully providing the same with desired heat conductivity.
As to present Claim 16: The claims of the patent do not specifically mention the addition of an additive, including the presently claimed heat resistant additive or adhesion imparting agent. Nevertheless, Fujisawa et al. disclose the use of additives including adhesion imparting agent and heat resistance imparting agent in the curable organopolysiloxane composition for the purposes of imparting desired adhesion and heat-resistant properties (Paragraph [0156]). Thus, it would have been obvious to one of ordinary skill in the art to add the additives including adhesion imparting agent and heat resistance imparting agent as suggested by Fujisawa et al. in the composition of the patent claims for the purposes of imparting desired adhesion and heat-resistant properties
Correspondence
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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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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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 03/01/2024.
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