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 .
Election/Restrictions
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/31/2026.
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.
Claim(s) 1, 5-7, 12-13, 17-19 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US20030043541A1, hereinafter ‘Yuasa’.
Regarding Claim 1, Yuasa discloses a composite comprising:
a plurality of silica nanoparticles; and a plurality of first nanoparticles, the plurality of silica nanoparticles comprising about 70 wt % to 98 wt % of the composite, the plurality of first nanoparticles comprising about 2 wt % to 30 wt % of the composite ([0200]: a thermal insulator composite includes 85.5% dry silica having an average primary particulate diameter of 7 nm mixed with 4.5 wt % carbon black having an average particulate diameter of 42 nm – the 85.5% silica particles may be considered to comprise a first and second fraction of silica particles, considered the silica nanoparticles and first nanoparticles as claimed, or the carbon black particles may be considered the first nanoparticles).
Regarding Claim 5, Yuasa discloses the plurality of first nanoparticles are nanoparticles from a group carbon, alumina, titania, magnesia, zirconia, silicon nitride, iron oxide, and an oxide ore ([0200]: the first nanoparticles comprise carbon black).
Regarding Claim 6, Yuasa discloses the composite has a density of about 5 lbs/cubic feet to 40 lbs/cubic feet ([0201]: the formed body has a formed density of 180 kg/m3, or about 11.2 lb/ft3).
Regarding Claim 7, Yuasa discloses the composite has a thermal conductivity of about 0.009 W/m·K to 0.026 W/m·K ([0201]: the formed body has a coefficient of thermal conductivity of 0.02 W/mK).
Regarding Claim 12, Yuasa discloses a plurality of second nanoparticles, wherein the plurality of second nanoparticles comprise about 1 wt % to 10 wt % of the composite, and wherein the plurality of second nanoparticles are a different composition than the plurality of first nanoparticles ([0200]: in the described composition, 80.5% of the silica particles are considered the silica nanoparticles, the carbon black particles are considered the first nanoparticles, and the remaining 5% of silica nanoparticles are considered the second nanoparticles).
Regarding Claim 13, Yuasa discloses the plurality of first nanoparticles are nanoparticles from a group carbon, alumina, titania, magnesia, zirconia, silicon nitride, iron oxide, and an oxide ore ([0200]: the first nanoparticles comprise carbon black).
Regarding Claim 17, Yuasa discloses a structure comprising:
a layer of material; and a composite disposed on the layer of material ([0219]-[0220]: the composite is inserted into an enveloping member, wherein the composite is disposed on a layer of said member), the composite comprising:
a plurality of silica nanoparticles; and a plurality of first nanoparticles, the plurality of silica nanoparticles comprising about 70 wt % to 98 wt % of the composite, the plurality of first nanoparticles comprising about 2 wt % to 30 wt % of the composite ([0216]: a thermal insulator composite includes 85.5% dry silica having an average primary particulate diameter of 7 nm mixed with 9.5 wt % carbon black having an average particulate diameter of 42 nm).
Regarding Claim 18, Yuasa discloses the layer of material is a layer of material from a group a metal foil, polydimethylsiloxane (PDMS), glass fiber reinforced cellulosic felt, glass fiber, and coated or uncoated polymer bonded glass fiber matt ([0220]: the enveloping member comprises a layer of aluminum foil).
Regarding Claim 19, Yuasa discloses the layer of material is coated with a low emissivity material (as discussed above, the enveloping member comprises a layer of aluminum foil; the instant invention defines aluminum as being low emissivity at [0038] of the published specification).
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US20140059971A1, hereinafter ‘Jelle’.
Regarding Claim 1, Jelle discloses a plurality of silica nanoparticles; and a plurality of first nanoparticles, the plurality of silica nanoparticles comprising about 70 wt % to 98 wt % of the composite, the plurality of first nanoparticles comprising about 2 wt % to 30 wt % of the composite ([0032]-[0033]: Jelle discloses hollow silica nanoparticles – of these nanoparticles, 80% of them may be considered the plurality of silica nanoparticles as claimed, and the remaining 20% may be considered the first nanoparticles as claimed).
Regarding Claims 2 and 3, Jelle discloses hollow silica nanoparticles, considered as meeting the claimed first nanoparticles ([0032]-[0033]).
Claim(s) 1, 4, 14 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US20140171578A1, hereinafter ‘Meyer’.
Regarding Claim 1, Meyer discloses a plurality of silica nanoparticles; and a plurality of first nanoparticles, the plurality of silica nanoparticles comprising about 70 wt % to 98 wt % of the composite, the plurality of first nanoparticles comprising about 2 wt % to 30 wt % of the composite ([0029]: Meyer discloses Aerosil 300 silica particles having a particle size of 7 nm – of these nanoparticles, 80% of them may be considered the plurality of silica nanoparticles as claimed, and the remaining 20% may be considered the first nanoparticles as claimed).
Regarding Claims 4 and 14, Meyer discloses each silica nanoparticle of the plurality of silica nanoparticles has a morphology that is spherical to branched to randomly shaped and has a surface area of about 10 m2/g to 800 m2/g, and wherein each first nanoparticle of the plurality of first nanoparticles has a morphology that is spherical to branched to randomly shaped and has a surface area of about 10 m2/g to 800 m2/g ([0029]: the fumed silica particles of Aerosil 300 are considered having a morphology that is spherical to branched to randomly shaped; further, the particles are disclosed as having a specific surface area of 300 m2/g).
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.
Claim(s) 8-11, 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20030043541A1, hereinafter ‘Yuasa’, in view of US6284365B1, hereinafter ‘Hirose’.
Regarding Claims 8, while Yuasa discloses a composite for use in thermal insulation in electronics ([0001]), Yuasa does not disclose at least a portion of the silica nanoparticles of the plurality of silica nanoparticles are covalently bonded to one or more silane molecules having the claimed structure.
Hirose discloses a composite having utility in a wide range of fields including protecting film for an electrical component (Col 33, lines 53-61). A person of ordinary skill in the art would have recognized Hirose as analogous the claimed invention, as both references are drawn to the same field of endeavor, composites for protective use in electronics - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Hirose discloses treatment of a number of substrates, including fine fumed silica AEROSIL 130, with organic silanes to improve their properties (Col 20, lines 30-50). Among the listed suitable organic silanes used for such treatment disclosed by Hirose includes bis(chloromethyl)dichlorosilane, (ClCh2)2SiCl2, a silane molecule having the structure required by the instant claim (Col 8, line 33). Hirose discloses that using such materials is suitable for controlling the physical properties of the surface and interface of a solid article such as wettability, adhesive property, surface energy and the like, for improving dispersibility, chemical resistance and the like, for preventing adhesion of a contaminant, for preventing electrostatic charge, for imparting functions such as electrical conductivity, photoconductivity, thermal conductivity and the like (Col 3, lines 39-46).
Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize an organic silane such as bis(chloromethyl)dichlorosilane for treatment of some or all of the particles in the composite of Yuasa. Such a treatment would allow for the control of physical properties of the surface and interface of the particles, thereby controlling the performance of said particles when used in an electronic device according to Yuasa.
Regarding Claim 9, Yuasa as modified above makes obvious the halogen is chlorine, as discussed above.
Regarding Claim 10-11, Yuasa as modified above makes obvious at least a portion of the first nanoparticles of the plurality of first nanoparticles are covalently bonded to one or more silane molecules having the claimed structure (as discussed above, Hirose suggests modification of the silica nanoparticles with bis(chloromethyl)dichlorosilane – this includes the 80.5% silica particles, which are considered the silica nanoparticles as claimed, and the 5.0% silica particles, considered the first nanoparticles).
Regarding Claims 15-16, Yuasa as modified above makes obvious at least a portion of the second nanoparticles of the plurality of second nanoparticles are covalently bonded to one or more silane molecules having the claimed structure (as set forth in the rejection of Claim 12 under Yuasa above, 80.5% of the silica particles are considered the silica nanoparticles, the carbon black particles are considered the first nanoparticles, and the remaining 5% of silica nanoparticles are considered the second nanoparticles; therefore, in modifying Yuasa according to Hirose, the second fraction of silica particles, considered the second nanoparticles, are modified with bis(chloromethyl)dichlorosilane).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOGAN LACLAIR whose telephone number is (571)272-1815. The examiner can normally be reached M-F, 9:30-5:30 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LOGAN LACLAIR
Examiner
Art Unit 1736
/L.E.L./ Examiner, Art Unit 1736
/ANTHONY J ZIMMER/ Supervisory Patent Examiner, Art Unit 1736
