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 .
This action is responsive to Applicant's amendments/remarks filed 07/14/2026.
Claims 1-13 are currently pending and under examination.
The rejections as stated in the Non-final Rejection filed 04/21/2026 are all withdrawn in view of the above amendments.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
1. Claims 1-3, 5, 6, 8, 9, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Akiba (US 2019/0002694 A1, hereinafter Akiba) in view of Arai (JP 2014216089 A, hereinafter Arai).
Regarding claim 1, Akiba teaches (claim 1) a thermally conductive silicone composition comprising:
component (A) an organopolysiloxane;
component (B) a silver powder having a tap density of 3.0 to 10.0 g/cm3 ([0050]), having an average particle size of 1.0 to 30 μm ([0055]), which overlap with the claimed ranges of “3.0 to 10.0 g/cm3” and “1 to 20 µm”, and reads on the claimed component (A-1);
component (C) a thermally conductive filler other than the component (B), having an average particle size of 5 to 100 μm ([0060]) and a thermal conductivity of 10 to 2,000 W/m°C ([0061]), which overlaps with the claimed range of “1 to 10 µm”, and reads on the claimed component (A-2);
component (D) a catalyst that can be a platinum-based catalyst ([0024]), which reads on the claimed component (D).
Akiba teaches that the whole of component (A) can be the combination of component (E) an organopolysiloxane that has at least two silicon atom-bonded alkenyl groups in one molecule, and component (F) an organohydrogenpolysiloxane that has at least two silicon atom-bonded hydrogen atoms in one molecule ([0040]). The component (E) of Akiba reads on the claimed component (B). The component (F) of Akiba reads on the claimed component (C).
Akiba also teaches that component (B) the silver powder can be in an amount of 300 to 5,000 parts by mass per 100 parts by mass of the component (A) ([0058]); component (C) the thermally conductive filler can be in an amount of 10 to 2,750 parts by mass per 100 parts by mass of the component (A) ([0062]); component (D) the platinum-based catalyst is in an amount at which the platinum metal in the component (D) will be in an amount of 0.1 to 2,000 ppm in mass unit with respect to the component (A) ([0072]).
Thus, the total amount of component (B) the silver powder and component (C) the thermally conductive filler can be in a range of 76% to 99% by mass based on 100% by mass of the thermally conductive silicone composition of Akiba, which overlaps with the claimed range of “70 to 98% by mass”.
Akiba does not teach that component (B) the silver powder is a flake silver powder.
However, Arai teaches a conductive paste composition comprising component (A) conductive powder, and component (B) thermosetting polymer (claims 1 and 4).
Arai teaches that component (A) the conductive powder contains component (A1) flake powder and component (A2) spherical powder ([0022]), component (A) the conductive powder is preferably a silver powder ([0031], claim 5). Arai specifically teaches that component (A1) is flake silver powder, component (A2) is spherical silver powder ([0031]).
Arai also teaches that component (A1) the flake powder has an average particle size of 2 to 20 μm, and a tap density of 3 to 7 g/cm3 ([0033]), which fall within the ranges of “1.0 to 30 μm” and “3.0 to 10.0 g/cm3” of component (B) the silver powder of Akiba, and also fall within the claimed ranges of “1 to 20 µm” and “3.0 to 10.0 g/cm3” of the claimed component (A-1).
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 flake silver powder having an average particle size of 2 to 20 μm and a tap density of 3 to 7 g/cm3 as taught by Arai as component (B) the silver powder having an average particle size of 1.0 to 30 μm and a tap density of 3.0 to 10.0 g/cm3 in Akiba, in order to make a thermally conductive composition with a reasonable expectation of success.
Akiba further teaches that component (C) the thermally conductive filler can be silver powder, and the silver powder has a thermal conductivity of 400 W/m°C ([0110], Working example 8).
Akiba does not teach that component (C) the thermally conductive filler is an aggregated silver powder having a tap density of 1.0 to 3.0 g/cm3.
However, Arai teaches that component (A2) is spherical silver powder ([0031]), component (A2) the spherical powder has an average particle size of 0.1 to 10 μm and a tap density of 1.5 to 5 g/cm3 ([0039]), which overlaps with the range of “5 to 100 μm” of component (C) the thermally conductive filler of Akiba, and also overlap with the claimed ranges of “1 to 10 μm” and “1.0 to 3.0 g/cm3” of the claimed component (A-2).
Arai also teaches that component (A2) the spherical powder has a degree of aggregation D50/DSEM in a range of 2 to 15 ([0039]), the degree of aggregation D50/DSEM of the spherical silver powder is calculated and evaluated by dividing the average particle size D50 obtained by laser diffraction by the average particle size DSEM of primary particles obtained from image observation using a scanning electron microscope ([0077], [0072]). Thus, component (A2) the spherical silver powder of Arai is an aggregated silver powder.
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 silver powder having an average particle size of 0.1 to 10 μm, a tap density of 1.5 to 5 g/cm3, and a degree of aggregation D50/DSEM of 2 to 15 as taught by Arai as the thermally conductive filler having an average particle size of 5 to 100 μm which can be a silver powder in Akiba, in order to make a thermally conductive 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 claim 2, Akiba teaches that component (B) the silver powder (the claimed component (A-1)) can be in an amount of 300 to 5,000 parts by mass per 100 parts by mass of the component (A) ([0058]); component (C) the thermally conductive filler (the claimed component (A-2)) can be in an amount of 10 to 2,750 parts by mass per 100 parts by mass of the component (A) ([0062]).
Thus, in Akiba, the mass ratio of component (B)/component (C) can be about 0.1 to 1.8, which overlaps with the claimed range of “0.3 to 1.0”.
Regarding claims 3 and 6, Akiba teaches that the thermally conductive silicone composition further comprises a hydrolyzable group-containing organopolysiloxane, and the hydrolyzable group-containing organopolysiloxane has a trialkoxysilyl group in the molecule ([0046], [0047]).
Regarding claims 5, 8, 9, and 11, Akiba teaches that component (D) a platinum-based catalyst cures the composition ([0072]); a cured product is obtained by curing the thermally conductive silicone composition ([0085]), and has good heat dissipation effect ([0018]), which reads on the claimed heat dissipation material comprising a cured product of the thermally conductive polysiloxane composition.
Regarding claim 13, Arai teaches that component (A2) is spherical silver powder ([0031]), component (A2) the spherical powder has an average particle size D50 of 0.1 to 10 μm and a degree of aggregation D50/DSEM in a range of 2 to 15 ([0039]).
Arai also teaches that the degree of aggregation D50/DSEM of the spherical silver powder is calculated and evaluated by dividing the average particle size D50 of the spherical silver powder by the average particle size DSEM of primary particles ([0077]), the average particle size DSEM of primary particles is calculated and evaluated by averaging the particle sizes of individual particles from image observation using a scanning electron microscope ([0072]).
Thus, in component (A2) the spherical silver powder of Arai, an average particle size of primary particles can be in a range of about 0.7 to 5 μm, which falls within the claimed range of “0.1 to 5.0 μm”. Component (A2) the spherical silver powder of Arai reads on the claimed aggregated silver powder comprising silver particles formed from two or more primary particles which have suffered aggregation.
2. Claims 4, 7, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Akiba (US 2019/0002694 A1) in view of Arai (JP 2014216089 A) as applied to claims 1-3, 5, 6, 8, 9, 11, and 13 above, and further in view of Hirakawa (WO 2018/139506 A1, see US 2021/0130615 A1, hereinafter Hirakawa).
The disclosure of Akiba in view of Arai is relied upon as set forth above.
Regarding claims 4 and 7, Akiba teaches that the thermally conductive silicone composition further comprises a hydrolyzable group-containing organopolysiloxane ([0046]), wherein the hydrolyzable group-containing organopolysiloxane is capable of hydrophobizing the surface of a powder/filler in order to assist in highly filling the silicone composition with the powder/filler ([0047]).
Akiba does not teach that the hydrolyzable group-containing organopolysiloxane is the claimed component (E) a compound represented by the general formula (1).
However, Hirakawa teaches (claim 1) a thermally conductive polysiloxane composition comprising:
component (A) a thermally conductive filler;
component (B) a siloxane compound having an alkoxysilyl group and a linear siloxane structure;
component (C) a polyorganosiloxane having at least two alkenyl groups bonded to silicon atoms per molecule;
component (D1) a linear polyorganohydrogensiloxane;
component (D2) a polyorganohydrogensiloxane;
component (E) a platinum catalyst.
Hirakawa also teaches ([0030]-[0042]) that component (B) the siloxane compound is represented by the following general formula (1):
PNG
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232
642
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wherein,
R1 is a group having an alkoxysilyl group having 1 to 4 carbon atoms,
R2 is a monovalent hydrocarbon group having 6 to 18 carbon atoms or a linear organosiloxy group represented by the following general formula (2):
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media_image2.png
181
710
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wherein,
R4 is each independently a monovalent hydrocarbon group having 1 to 12 carbon atoms,
Y is a group selected from the group consisting of a methyl group, a vinyl group, and R1, and
d is an integer of 2 to 500;
X is each independently a divalent hydrocarbon group having 2 to 10 carbon atoms,
a and b are each independently an integer of 1 or more,
c is an integer of 0 or more,
a+b+c is an integer of 4 or more, and
R3 is each independently a monovalent hydrocarbon group having 1 to 6 carbon atoms or a hydrogen atom.
Component (B) the siloxane compound of Hirakawa reads on the claimed component (E).
Hirakawa also teaches that component (B) the siloxane compound works as a surface treating agent of component (A) the thermally conductive filler in order to fill the thermally conductive filler at a higher filling ratio ([0075], [0103]).
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 siloxane compound having an alkoxysilyl group and a linear siloxane structure, and represented by the general formula (1) as taught by Hirakawa as the hydrolyzable group-containing organopolysiloxane in Akiba, in order to surface treat the powder/filler, thereby increasing the amount of the powder/filler in the 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 10 and 12, Akiba teaches that component (D) a platinum-based catalyst cures the composition ([0072]); a cured product is obtained by curing the thermally conductive silicone composition ([0085]), and has good heat dissipation effect ([0018]), which reads on the claimed heat dissipation material comprising a cured product of the thermally conductive polysiloxane composition.
Response to Arguments
1. Applicant's arguments with respect to the prior rejections have been considered but are moot, because the arguments do not apply to all of the references being used in the current rejection. The current rejection utilizes a new reference, Arai (JP 2014216089 A), in addition to the previous references, Akiba (US 2019/0002694 A1) and Hirakawa (WO 2018/139506 A1, see US 2021/0130615 A1), under a new ground(s) of rejection which renders obvious the instant claims.
As stated above, claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Akiba (US 2019/0002694 A1) in view of Arai (JP 2014216089 A).
2. Applicant argues that one goal of the present application "is to provide a thermally conductive polysiloxane composition which is advantageous not only in that the composition has a low viscosity so that excellent working properties can be achieved, but also in that the composition has high thermal conductivity, and a heat dissipation material using the composition"; the Examples in the present application demonstrate that this goal is achieved with unexpected results (p. 8).
In response, Applicant’s argument is not persuasive.
Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest prior art. See In re De Blawe, 222 USPQ 191 (FED. Cir. 1984), and In re Fenn, 208 USPQ 470 (CCPA 1981). See MPEP § 716.02(e).
Examples 1-2 and Comparative Examples 1-3 in the instant specification (instant Table 1) are no probative value in the determining patentability of claims since they do not involve a comparison of Applicant's invention with the closest applied prior art. Examples 1-2 and Comparative Examples 1-3 in the instant specification (instant Table 1) are limited to compositions comprising both a flake silver powder and an aggregated silver powder (Examples 1-2) compared to comparative examples comprising either a flake silver powder or an aggregated silver powder (Comparative Examples 1-3). The teaching of the combination of Akiba and Arai constitutes closer prior art than Applicant's comparative examples (Comparative Examples 1-3), because the teaching of the combination of Akiba and Arai provides substantially the same thermally conductive silicone composition comprising a flake silver powder and an aggregated silver powder.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
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