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 with traverse of Group I, claims 1-8 in the reply filed on 11 June 2026 is acknowledged. The traversal is on the ground(s) that the references are not analogous art. This is not found persuasive because both are directed to plasticizers for use with urethane type polymers. Given the known utility of recited plasticizers, there is reasonable expectation of success for use in compositions of similar chemistry.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention. Applicant timely traversed the restriction (election) requirement in the reply filed on 11 June 2026.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-5, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/236440 A1 (“Grunder”) in view of US 4,282,344 (“Caruso”).
As to claims 1 and 2, Grunder teaches a thermally conductive composition (abstract). Grunder teaches a first part that includes a carbamate containing compound (abstract) that may be a prepolymer (para. 050), prepared by reacting an isocyanate containing compound with a phenol compound to form the carbamate groups, thus suggesting an isocyanate prepolymer whether the isocyanate groups are blocked with a phenol compound (paras. 050, 056). Specifically, Grunder exemplifies a polyisocyanate functional prepolymer that is reacted with cardanol, an alkenylphenol (p. 22, table 1).
Grunder teaches a second component that is a carbamate reactive material (abstract), preferably a polyamine (abstract), and specifically exemplifies polyetheramines (p. 23, exemplifying three different polyetheramines).
Grunder teaches the composition contains thermally conductive filler (para. 025). Grunder teaches the composition includes 75 weight percent or more of thermally conductive filler (para. 08), and the examples of Grunder are all within the recited range (tables 11-14).
Grunder teaches the composition may cure at temperatures between 0 and 50 degrees C, preferably between 10 and 23 degrees C (para. 021), which substantially overlaps the recited range, and thus composiions capable of curing in the recited range are an obvious modification suggested by Grunder.
Grunder teaches that the composition may include plasticizer (para. 069), but does not disclose the recited types. Caruso teaches curable polyurethane prepolymer, and teaches the use of plasticizers therewith that are compatible and prevent exudation in a cured product, including tetraethylene glycol bis (2-ethylhexanoate) (2:24-45). The use of such plasticizer for a curable isiocyanate prepolymer system is an obvious modification for its compatibility and lack of exudation.
As to claim 3, Grunder in view of Caruso does not discuss compatibility with rubber as recited. However, Grunder in view of Caruso suggests the recited composition, which would be expected to have the same characteristics.
As to claim 4, Grunder teaches catalysts (para. 066), including the recited types, specifically exemplifying carboxylate salts (dibutyltin dilaurate), tertiary amines (tris-2,4,6-dimethylaminomethylphenol), and diazabicyclo compounds (p. 24).
As to claim 5, Grunder in view of Caruso in combination suggest the use of tetraethylene glycol bis (2-ethylhexanoate) (2:24-45); while the characteristics of this compound are recited, these characteristics are deemed to be met as acknowledged by applicant’s specification, table 1.
As to claim 7, Grunder teaches aluminum hydroxide (ATH) filler that is a bimodal distribution of particles being less than around 10 micrometers, and larger particles having an average size greater than 50 micrometers (p. 22).
As to claim 8, while not exemplifying the recited combination of prepolymer and amine composition, the examples of Grunder teach numerous examples of prepolymer composition having a press-in force below 150 N, and polyetheramine compositions having press in force below 150 N (see tables). The press-in force (paras. 091-092) is sufficiently similar to the squeeze force such that it is reasonable to presume such compositions meet the recitation; as such, a person of ordinary skill in the art would find it obvious to use prepolymer and polyetheramine compositions having the recited squeeze force, depending on the desired force.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/236440 A1 (“Grunder”) in view of US 4,282,344 (“Caruso”) as applied to claim 1, further in view of WO 2020/176437 A1 (“Kong”).
As to claim 6, Grunder in view of Caruso does not disclose the Shore OO hardness of the cured material. However, Kong teaches similar thermal interface material which, albeit based on isocyanate cured with polyol rather than polyamines, and teaches that such a curable thermal interface material preferably has a hardness of less than 90 (para. 0067), and given the similarity in end uses, it would be obvious to a person of ordinary skill in the art to modify such a composition to have Shore OO hardness in a range of 90 or less, which substantially overlaps the recited range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie 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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/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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