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
Applicant’s election without traverse of Group I (claims 1-16, 19, and 20) in the reply filed on 07/30/2026 is acknowledged.
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 1-16, 19, and 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claims recite “the mixture of fillers comprises a first filler fraction A having a volume median particle size d50(A) and a second filler fraction B having a volume median particle size d50 (B), wherein d50 (A) is greater than d50 (B) and d50(A) differs from d50 (B) by at least 10%,” it is unclear which filler (at least one inorganic aluminum compound and at least one inorganic magnesium compound) is d50 (A) and d50 (B). For art purposes, the examiner construes at least one inorganic aluminum compound as d50 (A) and at least one inorganic magnesium compound as d50 (B) until further clarification.
Claims 2, 4, 8, 9, 11, and 16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claims recite terms, “preferably,” “more preferably,” and “most preferably” which renders the claim to be indefinite because it is unclear to what extent the more preferred language further limits the less preferred language.
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 non-obviousness.
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 1-16, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over KUSUNOKI et al. (U.S. Publication No. 2015/0299550, hereinafter KUSUNOKI).
Regarding claims 1, 4, 6, 10, 12-14, and 19 , KUSUNOKI teaches a thermally conductive resin composition including a thermally conductive filler and a binder resin [0006] wherein the thermally conductive filler which contains a hard filler and a soft filler (Abstract; [0009-0011]).
The hard filler is selected from the group consisting of aluminum oxide, magnesium oxide, and etc. [0013] (Note: magnesium oxide reads on at least one inorganic magnesium compound as claimed) and the soft filler is selected from the group consisting of aluminum hydroxide, magnesium hydroxide, and etc. [0014] (Note: aluminum hydroxide reads on at least one inorganic aluminum compound as claimed). The particle diameter (median diameter: d50) of the fillers is from 5 to 200 µm [0044 and 0097].
The total content of the hard filler and the soft filler may be 50% by volume or more and less than 95% by volume based on the whole thermally conductive resin composition [0016]. More specifically, the volume ratio of the hard filler to the soft filler may be within the range of the following equation (I), Hard filler/soft filler= 95/5 to 50/50 [0017, 0051-0052, and 0116].
The binder reins includes a thermosetting resin and a thermoplastic resin [0063]. Examples of thermoplastic resin include polyolefin resin, polyamide resin, an elastomer resin, a polyester resin, acrylonitrile-butadiene-styrene (ABS) resin, a polycarbonate resin, and etc. [0082].
The thermally conductive resin composition is used in thermally conductive parts such as electronic parts, e.g., radiators [0001].
However, KUSUNOKI does not explicitly teach the mixture of fillers comprises a first filler fraction A having a volume median particle size d50 (A) and a second filler fraction B having a volume median particle size d50 (B), wherein d50 (A) is greater than d50 (B) and d50 (A) differs from d50 (B) by at least 10% and by at least 15% (claim 6).
Given KUSUNOKI teaches the thermally conductive resin composition comprises thermal fillers including hard filler (i.e., magnesium oxide reads on at least one inorganic magnesium compound as claimed) and the soft filler (i.e., aluminum hydroxide reads on at least one inorganic aluminum compound as claimed). The particle diameter (median diameter: d50) of the fillers is from 5 to 200 µm [0044 and 0097], it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claim 2, KUSUNOKI teaches a thermally conductive resin composition including a thermally conductive filler and a binder resin [0006] wherein the thermally conductive filler which contains a hard filler and a soft filler (Abstract; [0009-0011]). The hard filler and the soft filler may have a thermal conductivity of 2 W/m.K or more (more specifically, about 300 W/m.K or more and about 200 W/m.K or more), in order to further enhance the thermal conductivity of the cured thermally conductive resin composition (molding) [0096]. It would have been obvious to a person of ordinary skill in the art to reasonably expect the thermally conductive resin composition to have a thermal conductivity of 2 W/m.K or more because of the addition of the thermal fillers (hard and soft fillers).
With regard to the claim limitations, “wherein the thermal conductivity of the filler composition is measured in form of a standard polymer composition, “ although KUSUNOKI does not disclose the composition is measured in form of a standard polymer composition, it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983).See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed (process) and given that thermally conductive resin composition meets the requirements of the claimed composition, KUSUNOKI clearly meet the requirements of present claim.
Regarding claim 3, KUSUNOKI teaches the thermally conductive resin composition including thermally conductive filler wherein the thermally conductive filler which contains a hard filler and a soft filler (Abstract; [0009-0011]) is in the amount of 50% by volume or more and less than 95% by volume [0051]. More specifically, the ratio of the hard filler and the soft filler is in a range from 95:5 to 50:50, as shown in equation (1) [0052].
Regarding claim 5, KUSUNOKI teaches the thermally conductive resin composition including a thermally conductive filler and a binder resin [0006] wherein the thermally conductive filler which contains a hard filler and a soft filler (Abstract; [0009-0011]). The hard filler is selected from the group consisting of aluminum oxide, magnesium oxide, and etc. [0013] (Note: magnesium oxide reads on at least one inorganic magnesium compound as claimed) and the soft filler is selected from the group consisting of aluminum hydroxide, magnesium hydroxide, and etc. [0014] (Note: aluminum hydroxide reads on at least one inorganic aluminum compound as claimed). The particle diameter (median diameter: d50) of the fillers is from 5 to 200 µm [0044 and 0097].
In the Production Example 1 [0126 and 0140], the inorganic fillers were used as follows:
Magnesium oxide has a median diameter of 90 µm and 5 µm.
Aluminum hydroxide has a median diameter of 35 µm.
Regarding claims 7 and 11, KUSUNOKI teaches the thermally conductive resin composition including a thermally conductive filler and a binder resin [0006] wherein the thermally conductive filler which contains a hard filler and a soft filler (Abstract; [0009-0011]). The hard filler is selected from the group consisting of aluminum oxide, magnesium oxide, and etc. [0013] (Note: magnesium oxide reads on at least one inorganic magnesium compound as claimed) and the soft filler is selected from the group consisting of aluminum hydroxide, magnesium hydroxide, calcium carbonate, and etc. [0014, 0042, and 0113] (Note: aluminum hydroxide reads on at least one inorganic aluminum compound as claimed). The particle diameter (median diameter: d50) of the fillers is from 5 to 200 µm [0044 and 0097].
Given KUSUNOKI teaches the thermally conductive resin composition comprises thermal fillers including hard filler (i.e., magnesium oxide reads on at least one inorganic magnesium compound as claimed), soft filler includes (i.e., aluminum hydroxide reads on at least one inorganic aluminum compound as claimed) and calcium carbonate. The particle diameter (median diameter: d50) of the fillers is from 5 to 200 µm [0044 and 0097], it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claims 8 and 9, as discussed in paragraph 16 above, KUSUNOKI teaches the thermally conductive resin composition comprises hard filler selected from the group of zinc oxide [0013, 0040, and 0112] and soft filler selected from the group of calcium carbonate, talc, boron nitride, and etc. [0014, 0042, and 0113]. The thermally conductive filler which contains a hard filler and a soft filler (Abstract; [0009-0011]) is in the amount of 50% by volume or more and less than 95% by volume [0051]. More specifically, the ratio of the hard filler and the soft filler is in a range from 95:5 to 50:50, as shown in equation (1) [0052].
Regarding claim 15, KUSUNOKI teaches the thermally conductive molding obtained by molding thermally conductive resin composition comprising thermal fillers (hard filler and soft filler) [0018] (which reads on a thermally conductive moldable composition).
Regarding claim 20, KUSUNOKI teaches a thermally conductive resin composition including a thermally conductive filler and a binder resin [0006] wherein the thermally conductive filler which contains a hard filler and a soft filler (Abstract; [0009-0011]).
The hard filler is selected from the group consisting of aluminum oxide, magnesium oxide, and etc. [0013] (Note: magnesium oxide reads on at least one inorganic magnesium compound as claimed) and the soft filler is selected from the group consisting of aluminum hydroxide, magnesium hydroxide, and etc. [0014] (Note: aluminum hydroxide reads on at least one inorganic aluminum compound as claimed). The particle diameter (median diameter: d50) of the fillers is from 5 to 200 µm [0044 and 0097].
The total content of the hard filler and the soft filler may be 50% by volume or more and less than 95% by volume based on the whole thermally conductive resin composition [0016]. More specifically, the volume ratio of the hard filler to the soft filler may be within the range of the following equation (I), Hard filler/soft filler= 95/5 to 50/50 [0017, 0051-0052, and 0116].
Given KUSUNOKI teaches the total content of the hard filler and the soft filler may be 50% by volume or more and less than 95% by volume based on the whole thermally conductive resin composition [0016]. More specifically, the volume ratio of the hard filler to the soft filler may be within the range of the following equation (I), Hard filler/soft filler= 95/5 to 50/50, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Claims 1, 2, 4, 5, 6, 10, 12-15, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over TAKAHASHI (U.S. Publication No. 2005/0022966, hereinafter TAKAHASHI).
Regarding claims 1, 4, 5, 6, 10, 12-15, and 19, TAKAHASHI teaches a thermally conductive composition for a thermally conductive holder includes a silicone rubber, and a thermally conductive filler in a range of 40 to 70 percent by volume with respect to total volume of the silicone rubber and the thermally conductive filler. From 35 to 100 percent by volume of the thermally conductive filler is composed of magnesium oxide having an average particle size of 5 µm or less (Abstract; [0028-0030]). Any additional thermally conductive fillers other than magnesium oxide may be added such as aluminum hydroxide having an average particle size of 20 µm or less [0031].
The thermally conductive holder is molded to form the thermally conductive composition [0036 and 0038] (which reads on a thermally conductive moldable composition).
However, TAKAHASHI does not explicitly teach the mixture of fillers comprises a first filler fraction A having a volume median particle size d50 (A) and a second filler fraction B having a volume median particle size d50 (B), wherein d50 (A) is greater than d50 (B) and d50 (A) differs from d50 (B) by at least 10% and by at least 15% (claim 6).
Given TAKAHASHI teaches the thermally conductive composition comprises magnesium oxide having an average particle size of less than 5 µm and aluminum hydroxide having an average particle size of 20 µm, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claim 2, TAKAHASHI teaches thermal conductivity of the thermally conductive holder is 0.4 W/(m.K) or more [0034], more specifically, 30 W/(m.K) or less.
With regard to the claim limitations, “wherein the thermal conductivity of the filler composition is measured in form of a standard polymer composition, “ although TAKAHASHI does not disclose the composition is measured in form of a standard polymer composition, it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983).See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed (process) and given that thermally conductive resin composition meets the requirements of the claimed composition, TAKAHASHI clearly meet the requirements of present claim.
Pertinent Art
WO 2019/150944 (U.S. Publication No. 2020/0317979 (UMETANI) which is the English equivalent) teaches a thermally conductive composition in which a thermally conductive filler is contained in a polymer matrix (phenyl silicone),characterized in that the thermally conductive filler has an average particle size of 10 to 100 µm, the content of the thermally conductive filler in the thermally conductive composition is 70% to 90% by volume, and 30% to 80% by volume of the thermally conductive filler has a particle size of 40 µm or more. The thermally conductive filler is selected from a metal , a metal oxide, metal nitride, and a metal carbide. Examples of metal oxide include aluminum oxide, magnesium oxide, zinc oxide, iron oxide, and quartz. However, there is no specificity of the thermal conductive fillers as the least one inorganic aluminum compound and at least one inorganic magnesium compound having a volume median particle size (d50). Therefore, WO 2019/150944 fails to disclose or render obvious the present invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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, Joseph Del Sole can be reached at (571) 272-1130. 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.
DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
Prosecution Insights