DETAILED ACTION
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 1-9 and species of a composition of claims 1-2 in the reply filed on 7/2/2026 is acknowledged. Claims 6, 10-11 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/2/2026.
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.
Claim 9 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 pre-AIA the applicant regards as the invention.
Claim 9 recites “a cured product”. How does it relate to the claimed thermally conductive resin composition? For purposes of expediting prosecution, it is interpreted as the cured product of the thermally conductive resin composition.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soma et al (JPH07292048).
In setting forth this rejection a machine translation of JPH07292048 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Soma teaches a composition comprising (a) a urethane-modified (meth)acrylate having a (meth)acryloyloxy group and a urethane bond in one molecule and having a polybutylene glycol structure in the molecule, (b) a conductive filler such as furnace black, graphite, and (d) a polymerization initiator, and a monofunctional (meth)acrylate other than urethane-modified (meth)acrylate as component (f) such as polyethylene glycol mono(meth)acrylate, polypropylene glycol mono(meth)acrylate, a plasticizer and a curing accelerator [0089, 0098, 0021, 0056, 0074]. The amount of urethane acrylate is 40-90 parts by weight based on 100 parts by weight of components (a) and (f) [0054].
Soma does not expressly name a single embodiment having the claimed composition. However, each of the components of the composition is described in the reference. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have made any of the compositions suggested by the reference, including the claimed composition, thereby arriving at the presently claimed invention.
Claim 9: Soma is silent with respect to the claimed elongation of the cured product of the composition. However, the teachings from Soma have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Claims 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soma et al (JPH07292048) in view of Hayashi et al (WO2019124447).
In setting forth this rejection a machine translation of WO2019124447 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Soma teaches the limitation of claim 1, as discussed above.
Soma does not teach the amount or type of the plasticizer.
However, Hayashi discloses a curable urethane acrylate composition comprising a plasticizer and teaches the plasticizer can be polypropylene glycol [0012], the amount of the plasticizer is 40-60wt% [0038]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize polyether such as polypropylene glycol as plasticizer for the composition of Soma. Additionally, the amount of plasticizer is a result effective variable which affect properties such as softness, pliability and tackiness of the curable composition of Soma. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the amount of the plasticizer through routine experimentation to achieve the desired final properties of the product. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Allowable Subject Matter
Claims 7-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 9 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No.12,331,228. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘228 claims a composition of a urethane (meth)acrylate, a monofunctional acrylic monomer, a radical initiator, a plasticizer, a filler such as aluminum nitride.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENWEN CAI whose telephone number is (571)270-3590. The examiner can normally be reached on M-F 9am-6pm.
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 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.
/WENWEN CAI/
Primary Examiner, Art Unit 1763
Prosecution Insights