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 .
Claims 1-16 are currently pending and under examination.
Claim Rejections - 35 USC § 102
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.
1. Claims 1, 2, 5, 6, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kotani (JP 2017014302 A, hereinafter Kotani).
Regarding claim 1, the instant invention discloses that the thermally conductive filler is present unevenly, in a larger amount, in the first resin phase than in the second resin phase, and therefore, the density (filling density) of the particles of the thermally conductive filler in the first resin phase is higher than in the case where the thermally conductive filler is dispersed in both the first resin phase and the second resin phase (instant US Pub [0030]).
Kotani teaches ([0020], Fig. 1) an uncured resin composition comprising:
a first resin phase, which reads on the claimed first resin phase;
a second resin phase, which reads on the claimed second resin phase;
an inorganic filler, wherein the inorganic filler is a thermally conductive filler ([0041]), which reads on the claimed thermally conductive filler.
The uncured resin composition as taught by Kotani reads on the claimed thermally conductive resin composition.
Kotani also teaches that the first resin phase and the second resin phase are phase-separated ([0016], Fig. 1).
Kotani further teaches that the inorganic filler (the claimed thermally conductive filler) is unevenly distributed in the first resin phase (the claimed first resin phase), it is not necessary that all of the inorganic filler is disposed inside the first resin phase, and it is acceptable for a small portion of the inorganic filler to be present in the second resin phase (the claimed second resin phase) ([0023]), which reads on the claimed thermally conductive filler in the first resin phase having a density higher than a density of the thermally conductive filler in the second resin phase.
Regarding claims 2, 8, and 9, Kotani teaches that the first resin phase includes a thermosetting resin such as an epoxy resin ([0028]-[0029], [0037]), and the second resin phase includes a thermoplastic resin such as polyethersulfone ([0028], [0035], [0037]).
The court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "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). See MPEP 2112.01 I.
Therefore, the difference between solubility parameters of a first resin and a second resin being greater than or equal to 1, would be present in the identical first resin (i.e. an epoxy resin) and the identical second resin (i.e. polyethersulfone) as taught by Kotani.
Regarding claims 5 and 6, Kotani teaches that the first resin phase includes a thermosetting resin such as an epoxy resin ([0028]-[0029], [0037]), and the second resin phase includes a thermoplastic resin such as polyethersulfone ([0028], [0035], [0037]).
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.
2. Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kotani (JP 2017014302 A, hereinafter Kotani) as applied to claims 1, 2, 5, 6, 8, and 9 above.
The disclosure of Kotani is relied upon as set forth above.
Regarding claims 7 and 10, the instant invention discloses that the first resin phase which is the solid phase includes the thermosetting resin which has been thermally cured; the second resin phase which is the solid phase includes a thermoplastic resin which has been cured by a temperature drop (instant US Pub. [0037]).
Kotani teaches that the uncured resin composition comprises a first resin phase, a second resin phase, an inorganic filler, and a curing agent ([0020], Fig. 1), wherein the first resin phase includes a thermosetting resin such as an epoxy resin ([0028]-[0029], [0037]), and the second resin phase includes a thermoplastic resin such as polyethersulfone ([0028], [0035], [0037]).
Kotani also teaches that the uncured resin composition is cured to obtain an insulating resin composition ([0020]). The insulating resin composition of Kotani reads on the claimed thermally conductive resin material.
Kotani also teaches that the curing agent is used to cure the epoxy resin by heating ([0031], [0068]-[0069]). Thus, the insulating resin composition of Kotani comprises a solid phase of the first resin phase (i.e. an epoxy resin).
Kotani further teaches that the uncured resin composition is heated for 120 minutes to obtain an insulating resin composition ([0069]).
Kotani does not teach that the insulating resin composition comprises a solid phase of the second resin phase (i.e. a thermoplastic resin).
However, the court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "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). See MPEP 2112.01 I.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to expect that the insulating resin composition after curing by heat then cooled down as taught by Kotani would comprise a solid phase of the second resin phase (i.e. a thermoplastic resin such as polyethersulfone) with a reasonable expectation of success, because the property of the second resin phase which includes a thermoplastic resin such as polyethersulfone being solidified by a temperature drop as disclosed by the instant invention would be present in the same second resin phase which includes a thermoplastic resin such as polyethersulfone as taught by Kotani. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
3. Claims 3, 4, and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kotani (JP 2017014302 A, hereinafter Kotani) as applied to claims 1, 2, 5, 6, 8, and 9 above, and further in view of Yuan (US 2016/0264832 A1, hereinafter Yuan).
The disclosure of Kotani is relied upon as set forth above.
Regarding claims 3, 4, 11, 12, 14, and 15, Kotani teaches that the uncured resin composition comprises a first resin phase, a second resin phase, and an inorganic filler ([0020], Fig. 1), wherein the first resin phase includes a thermosetting resin such as an epoxy resin ([0028]-[0029], [0037]), and the second resin phase includes a thermoplastic resin such as polyethersulfone ([0028], [0035], [0037]).
The court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "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). See MPEP 2112.01 I.
Therefore, the difference between solubility parameters of a first resin and a second resin being greater than or equal to 1, would be present in the identical first resin (i.e. an epoxy resin) and the identical second resin (i.e. polyethersulfone) as taught by Kotani.
Kotani teaches that the inorganic filler is a thermally conductive filler ([0041]), the inorganic filler can be aluminum oxide ([0043]), and the inorganic filler has an average particle size of 0.1 μm to 15 μm ([0038]).
Kotani does not teach that the inorganic filler includes a polyhedral particle.
However, Yuan teaches ([0024], claim 1) a resin composition comprising aluminum oxide (A) containing molybdenum, and a resin (B), wherein the aluminum oxide (A) containing molybdenum has an average particle size of 0.1 μm to 100 μm ([0039], claim 2). Yuan also teaches that the aluminum oxide (A) containing molybdenum is used as a highly thermal conductive filler ([0022]).
Yuan further teaches that the aluminum oxide (A) containing molybdenum is a polyhedral particle ([0036], claim 3); polyhedral particles are advantageous from a viewpoint of easily incorporating the particles into the resin composition ([0036]); if the particles are polyhedral particles, when the particles come into contact with each other in the resin composition, the plane contact between particles could lead to increased thermal conductivity of resin composition as compared to that of point contact from spherical particles even if the compositions have the same filler loading ([0037]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the aluminum oxide (A) containing molybdenum having a polyhedral particle as taught by Yuan as the inorganic filler in Kotani, in order to easily incorporate the particles into the resin composition and improve thermal conductivity of the resin composition with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claims 13 and 16, the instant invention discloses that the first resin phase which is the solid phase includes the thermosetting resin which has been thermally cured; the second resin phase which is the solid phase includes a thermoplastic resin which has been cured by a temperature drop (instant US Pub. [0037]).
Kotani teaches that the uncured resin composition comprises a first resin phase, a second resin phase, an inorganic filler, and a curing agent ([0020], Fig. 1), wherein the first resin phase includes a thermosetting resin such as an epoxy resin ([0028]-[0029], [0037]), and the second resin phase includes a thermoplastic resin such as polyethersulfone ([0028], [0035], [0037]).
Kotani also teaches that the uncured resin composition is cured to obtain an insulating resin composition ([0020]). The insulating resin composition of Kotani reads on the claimed thermally conductive resin material.
Kotani also teaches that the curing agent is used to cure the epoxy resin by heating ([0031], [0068]-[0069]). Thus, the insulating resin composition of Kotani comprises a solid phase of the first resin phase (i.e. an epoxy resin).
Kotani further teaches that the uncured resin composition is heated for 120 minutes to obtain an insulating resin composition ([0069]).
Kotani does not teach that the insulating resin composition comprises a solid phase of the second resin phase (i.e. a thermoplastic resin).
However, the court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "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). See MPEP 2112.01 I.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to expect that the insulating resin composition after curing by heat then cooled down as taught by Kotani would comprise a solid phase of the second resin phase (i.e. a thermoplastic resin such as polyethersulfone) with a reasonable expectation of success, because the property of the second resin phase which includes a thermoplastic resin such as polyethersulfone being solidified by a temperature drop as disclosed by the instant invention would be present in the same second resin phase which includes a thermoplastic resin such as polyethersulfone as taught by Kotani. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIAJIA JANIE CAI whose telephone number is 571-270-0951. The examiner can normally be reached Monday-Friday 8:30 am - 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, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761