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 1-7, 11-15, 19 and 20 in the reply filed on 7/30/2026 is acknowledged.
Claims 8-10 and 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/30/2026.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it is incomplete because it starts mid-sentence. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 7 and 15 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 claimed viscosity is indefinite since a method of obtaining the viscosity is not claimed.
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.
Claim(s) 1-7, 11-14 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishihara et al. (2019/0256756) in view of Hirakawa et al. (WO 2018/016566). US 2021/0147681 is an English language equivalent to WO 2018/016566 since it is a national stage entry of the international application.
Regarding claims 1, 6 and 14: Ishihara et al. teach a thermally conductive silicone composition comprising 100 parts by mass of (A) an organopolysiloxane having at least alkenyl groups each bonded to a silicon atom [0148; Table 1];
(D) a methylhydrogenpolysiloxane having at least two hydrogen atoms each bonded in an amount such that the claimed ratio is 1 [0159; 0148; Table 1];
(B) 4600 parts by mass of a thermally conductive filler comprising 49 mass% of aluminum nitride (B-1) and (B-2) with an average particle size of 60 microns and 80 microns respectively, and 25 to 45% of aluminum oxide having an average particle size of up to 5 microns [0049].
(E) a platinum group metal-based catalyst at 1.0 parts by mass [Examples; Table 1];
(F) an addition reaction control agent: 0.2 parts by mass [Examples; Table 1]; and
(C) a claimed dimethylpolysiloxane: 150 parts by mass [0159; Examples; Table 1].
Ishihara et al. fails to teach the amount of alumina (C3) having a diameter of 0.1 microns or more and less than 1 micron.
However, Hirakawa et al. teach an analogous thermally conductive polysiloxane composition, wherein 1 to 50% by mass of spherical [0043] alumina particles having an average particle diameter of 0.1 to less than 1 micron are added provide a higher filling ratio to improve the thermal conductivity of the composition [0015-0016, 0036, 0038; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 1 to 50% by mass of the alumina particles of Hirakawa et al. to the composition of Ishihara et al. to provide a higher filler ratio to improve the thermal conductivity.
The ranges taught overlap the claimed ranges. The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 2: Ishihara et al. fail to teach the claimed component (G).
However, Hirakawa et al. teach adding 1 to 10 parts by mass of the claimed organopolysiloxane (B-5) to an analogous composition improve the working properties of the composition [0078-0081; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 1 to 10 parts by weight of B-5 of Hirakawa et al. to the composition of Ishihara et al. to improve the working properties of the composition.
Regarding claims 3 and 11: It is noted that 0 mass% is within the claimed range of claim 3. Alternatively, Ishihara et al. teach the claimed amount of aluminum oxide with a particle size of 10 microns [0153; Table 1].
Regarding claims 4, 12 and 19: Ishihara et al. teach crushed aluminum nitride [0151-0152].
Regarding claims 5, 13 and 20: Ishihara et al. teach spherical or crushed aluminum oxide [0153-0154].
Regarding claims 7 and 15: Since the composition is the same as claimed, it will possess the claimed viscosity. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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