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 .
Claim Interpretation
The Examiner has presumed for the purpose of evaluating claim 9 that the methacrylate “monomer” is actually a macromonomer, or oligomer, since there are no known small molecule monomers for which the dynamic viscosity would be in excess of 10,000 cp. Certainly, none of the specific small molecule acrylic monomers outlined in paragraph [0031] of the Specification have a dynamic viscosity equal to that 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.
Claims 1-8, and 10-18 are rejected under 35 U.S.C. 103 as being unpatentable over Tojo et al., EP 2824156 in view of Sun et al., WO 2020/119756 and Ren et al., CN 114163705.
Tojo is directed to a thermally-conductive PSA sheet comprising 55 mass percent or more of thermoconductive fillers featuring first and second particle size distributions (abstract and [0016]). The sheet is derived from the polymerization of a monomer mixture [0020] that includes an alkyl (meth)acrylate, a polar monomer of which nitrogen-containing monomers constitute one favored class [0024-0025,0032], and a polyfunctional monomer [0034] correlated with the claimed crosslinking component (C). Examples 1-8, the makeup of which is summarized beginning at page 9, all contain the same combination of monomer materials and a photoinitiator, differing primarily in the distributions of first- and second particles. The monomer mixture, it is noted, contains only 7 wt.% of the nitrogen-containing monomer NVP but, on the other hand, [0033] states that the polar group-containing monomer may be furnished in quantities as high as 30 wt.% and suggest that one is able to tailor the holding force of the adhesive by varying the amounts of this component.
The aforementioned Examples not only use the same monomer mixture throughout, but also a bimodal distribution of aluminum hydroxide as the thermoconductive filler. This material does not possess a thermal conductivity matching that required of claimed component (E) but, at the same time, the prior art compositions are not confined to this single type of a filler. Indeed, whereas metal oxide compounds like aluminum hydroxide are favored [0052] because they simultaneously convey said thermoconductivity, but also flame retardance, there are contemplated in [0049] various other conductive particle varieties that do conform with the thermal conductivity requirements of component (E) and the skilled artisan would appreciate that these can be combined with flame retardants (to the extent that they are not themselves) if that property is considered essential. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Quantities of the filler are expressed in terms of a weight fraction but it is easy enough to confirm that the composition of Example 1 contains about 42% by volume of the filler where the densities of the various monomers and that of aluminum hydroxide are documented. Example 2 contains 340 total parts of the filler combination translating to about 58 vol% of the filler.
The last aspect of the claimed invention not addressed by Tojo is the presence of a defoamer. Sun, which is also directed to the formulation of a highly-filled, thermoconductive polymer compositions advocates for the incorporation of a defoaming agent as one means of ridding the filled polymer of bubbles that are present. Sun is not forthcoming as to the source of the bubbles but the background discussion of Ren, and in particular [0005], makes clear that the vigorous conditions needed for blending large quantities of a filler material into a polymer inevitably introduces pockets of gas, or bubbles, into the polymer host. Given the small thermal conductivity of air, the presence of bubbles deleteriously affects the overall thermal conductivity of the composition thus motivating one of ordinary skill to remove them whether by the application of vacuum (the other means mentioned by Tojo) or by the incorporation of a defoamer.
As for claims 2, 3, and 12, [0122] mentions the incorporation of 3.4 parts of a dispersant that ostensibly is not reactive with any of the 100 total parts of monomers from which the polymer component of the PSA is derived.
Regarding claim 4, the introduction of a tackifier is contemplated in [0086].
Concerning claim 5, paragraph [0019] of the Specification indicates that N-vinylpyrrolidone has an e value of -1.62.
As for claims 6 and 7, the polyfunctional monomer of the examples equated with the claimed crosslinker is dipentaerythritol hexaacrylate. Regarding claim 8, the Examiner has presumed that all of the monomers expressly identified in [0031] of the Specification are ones that yield homopolymers of comparable gel fraction as these are ostensibly embodiments of the compound referenced in [0028].
As for claim 11, the compositions summarized in Table 1 all have a thermal conductivity higher than that claimed. As before, it is acknowledged that these all contain a filler not conforming with the limitation of component (E) recited in claim 1 but, of course, where fillers possessing even higher thermal conductivity replace aluminum hydroxide, and in comparable amounts, the resulting composition would exhibit thermal conductivity higher than those of Examples 1 to 8. As for claim 13, the amount of photoinitiator used in the examples is admittedly less than what claim 13 calls for but, on the other hand, [0079] allows that as much as 5 parts of a photoinitiator can be used.
Concerning claims 14-16, application of the thermally-conductive PSA composition to a base sheet followed by the provision of a cover film is taught in [0097-0103]. The possible 3means of application disclosed in [0101] overlaps that in claim 18. Regarding claim 16, lip coating is understood by one of ordinary skill to be a slot dye coating variant used to coat portions of a substrate but not the entirety of the substrate surface.
Allowable Subject Matter
Claim 9 is 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.
All of the crosslinkers/polyfunctional monomers disclosed by Tojo are small molecules and there didn’t appear to be any justification offered in the prior art to replace any of these with one that is polymeric/having a viscosity consistent with that stipulated in claim 9.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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October 5, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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