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 .
Status of Application
Claims 1-21 are pending and presented for examination.
Response to Arguments
Initially, the Examiner notes that Applicant’s amendments have overcome the previous 35 U.S.C. 112(b) rejections. However, the amendment to claim 10, has necessitated a new 35 U.S.C. 112(b) rejection as presented below.
Applicant's arguments filed 8/19/2026, with respect to the prior art rejections, have been fully considered but they are not persuasive. Applicant argues that the claims are not obvious over the prior art of record. Applicant argues that Mennecke only teaches use of a bimodal distribution and is silent on the selection of any particular size of particle. Applicant further argues that nowhere is it evidence from Mennecke that the particle size is a result-effective variable. Applicant argues that the prior art does not teach that the alumina has both a specific surface area and an average particle diameter.
However, the Examiner maintains the rejections. With respect to the particle size, the Examiner contends that Mennecke makes clear that adjusting particle size is a result-effective variable as it alters the packing of the particles and ultimately the heat conductivity (see Mennecke at page 18, lines 4-11). Therefore, the Examiner maintains that it would have been obvious to optimize the particle size of each particle and the particle size distribution to arrive at the claimed particle size. Additionally, as noted in Applicant’s specification, the “total specific surface area” means the specific surface area of the total alumina filler. Therefore, it does not necessarily require the portion of particles that are less than 1 micron to be within the claimed surface area range. For example, the majority of the particles could be within the claimed surface area and have a particle size larger than 1 microns while a relatively minor portion of particles less than 1 micron have a different surface area where when totaled up the total specific surface area is within the claimed range. Mennecke provides examples with the particles having a total specific surface area as claimed, and the Examiner contends it would have been obvious to maintain this range even while incorporating particles having a size of less than 1 microns.
With respect to the rejections over Swaroop, the Applicant argues that there is no motivation to combine the teachings of Swaroop with Mennecke because Mennecke teaches away from silicone-based thermal interface materials. However, the Examiner disagrees and notes that the Examiner has not suggested modifying Mennecke by the inclusion of the silicone material. Rather, the Examiner is simply modifying Mennecke by selection of the specific filler disclosed by Swaroop. Therefore, the rejections of record are maintained.
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.
1. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation greater than 50 g/min, and the claim also recites greater than 150 g/minute or greater than 300 g/minute which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
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.
2. Claim(s) 1, 2, 4 and 6-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mennecke et al. (WO 2020/165288) as evidenced by Advanced Materials (“Martoxid TM-3310” datasheet).
I. Regarding claims 1, 2, 4 and 6-9, Mennecke teaches a thermally conductive composition (abstract) comprising: a condensation curable silyl terminated polyether resin (abstract, page 8, lines 22-23 and page 9, lines 14-16) and a particulate unmodified alpha crystal structure alumina filler (claims 1, 4 and Table 1) which has a surface area of approximately 2.2 m2/g (see Advanced Materials Typical Analysis for Martoxid TM-3310). Mennecke teaches the resin present in 0.6-5 wt% (claims 1 and 2 and note that overlapping ranges are prima facie evidence of obviousness) and 70-95 wt% of the filler (claim 1). Mennecke also teaches the composition including 4-10 wt% of a plasticizer (claim 13) which can be tris-(2-ethylhexyl)-phosphate (Table 1) which has a viscosity of 13-15 cP, less than 0.1 wt% organo-metal catalyst and less than 0.5 wt% water (see Tables 2 and 3 and note that the curing catalyst listed is DBU and not a organo-metal catalyst). Additionally, Mennecke teaches the composition having a thermal conductivity of at least 2 W/mK (page 30. lines 18-20). Mennecke fails to teach the inclusion of a portion of the alumina filler having a particle size of less than 1 microns and comprising 0.1-1 wt% of the composition.
However, Mennecke teaches that it is preferable for the filler to include different particle sizes, such as a bimodal distribution of particles sizes with one large particle size and one small particle size (page 18, lines 4-11). Mennecke fails to explicitly teach the use of small particles of less than 1 micron in an amount as claimed. However, Mennecke makes clear that particle size and the use of a calibrated bimodal distribution is a result-effective variable allowing for improvement of heat conductivity and compounding (see Mennecke at page 18, lines 7-11). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range for selection of the size and amount of small particle alumina to optimize packing and heat conduction through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
II. Regarding claim 10, Mennecke makes obvious the composition as claimed (see above). Further, Mennecke teaches that it is desirable for the composition to have a low viscosity (page 30, lines 22-23). Mennecke fails to teach the components all having an extrusion rate as claimed. However, the extrusion rate is a function of viscosity. Furthermore, Mennecke makes clear that viscosity is a result-effective variable and it is desirable to have a low viscosity (see above). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range for extrusion rate through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
III. Regarding claim 11, Mennecke makes obvious the thermally conductive composition (see above). Further, Mennecke teaches a cured product of the composition (page 30, lines 14-16). Therefore, Mennecke also makes obvious claim 11.
IV. Regarding claim 12, Mennecke makes obvious an essentially identical cured composition to that claimed (see above). Therefore, given an identical product to that claimed, inherently the product will have identical properties to the claimed product. Thus, inherently Mennecke’s cured product will have a cured Shore hardness in the range as claimed.
V. Regarding claim 13, Mennecke makes obvious the thermally conductive composition (see above). Further, Mennecke teaches that the composition can be coupled to a battery to provide a battery system (page 30, lines 31-32). Therefore, Mennecke also makes obvious claim 13.
3. Claim(s) 3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mennecke as evidenced by Advanced Materials as applied to claim 1 above, and further in view of Swaroop et al. (U.S. PGPUB No. 2009/0068441).
Regarding claims 3 and 5, Mennecke as evidenced by Swaroop make obvious claim 1 (see above), but fail to teach the alumina is fumed alumina having a surface area of 4-150 m2/g.
However, Swaroop teaches a similar thermally conductive composition comprising a filler dispersed in a polymer (abstract). Swaroop teaches the filler can be fumed alumina (0016) and has a specific surface area of 30 m2/g to 100 m2/g (0016). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mennecke’s process by having the alumina be fumed alumina with a specific surface area as claimed. One would have been motivated to make this modification as Swaroop teaches that the selection of this type of synthetic alumina provides greater control over particle size and morphology (0016) to yield improved thermal conductivities (0017).
4. Claim(s) 14-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mennecke in view of Swaroop.
I. Regarding claims 14 and 15, Mennecke teaches a thermal interface material (see above) including the silyl-modified resin in an amount as claimed (see above) and an unmodified alumina filler in the amount as claimed (see above) which will yield a cured material having a conductivity and hardness as claimed (see above). Mennecke fails to explicitly teach a portion of the alumina having a particle size of 5-1000 nm in an amount of 0.1-10 wt% and having a specific surface area between 4 and 150 m2/g.
First, Mennecke teaches that it is preferable for the filler to include different particle sizes, such as a bimodal distribution of particles sizes with one large particle size and one small particle size (page 18, lines 4-11). Mennecke fails to explicitly teach the use of small particles of between 5 nm and 1000 nm in an amount as claimed. However, Mennecke makes clear that particle size and the use of a calibrated bimodal distribution is a result-effective variable allowing for improvement of heat conductivity and compounding (see Mennecke at page 18, lines 7-11). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range for selection of the size and amount of small particle alumina to optimize packing and heat conduction through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Second, Swaroop teaches a similar thermally conductive composition comprising a filler dispersed in a polymer (abstract). Swaroop teaches the filler is alumina and has a particle size of less than 1 micron (abstract) and a specific surface area of 30 m2/g to 100 m2/g (0016). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mennecke’s process by having the alumina with a particle size between 5-1000 nm have a specific surface area between 30 and 100 as disclosed by Swaroop. One would have been motivated to make this modification as Swaroop teaches that this surface area improves thermal conductivity (0017).
II. Regarding claims 16-21, Mennecke makes obvious the curable composition having a condensation curable silane-terminated polyether resin (see above), particulate alumina as a filler having a surface area greater than at least 1 m2/g in an amount as claimed (see above) and the composition providing a cured thermal conductivity of at least 1 W/mK and hardness as claimed (see above), containing no organo-metal catalyst (see above), and less than 0.5 wt% water (see above). Mennecke also teaches providing the composition as a two-part curable composition where the first part includes the filler in an amount of 85-95 wt% and the second part includes the condensation curable resin and another portion of the filler in an amount of 80-93 wt% (claims 12 and 13). Mennecke fails to teach a first portion of the alumina filler in an amount of 0.1-10 wt% having a particles size of between 5 nm and 1000 nm, a second portion with a size of 1-100 microns in an amount as claimed, and a specific surface area of between 4 and 150 m2/g for the first portion.
First, Mennecke teaches that it is preferable for the filler to include different particle sizes, such as a bimodal distribution of particles sizes with one large particle size and one small particle size (page 18, lines 4-11). Mennecke fails to explicitly teach the use of small particles of between 5 nm and 1000 nm in an amount as claimed and large particles of 1-100 microns in an amount as claimed. However, Mennecke makes clear that particle size and the use of a calibrated bimodal distribution is a result-effective variable allowing for improvement of heat conductivity and compounding (see Mennecke at page 18, lines 7-11). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range for selection of the size and amount of small and large particle alumina to optimize packing and heat conduction through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Second, Swaroop teaches a similar thermally conductive composition comprising a filler dispersed in a polymer (abstract). Swaroop teaches the filler is alumina and has a particle size of less than 1 micron (abstract) and a specific surface area of 30 m2/g to 100 m2/g (0016). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mennecke’s process by having the alumina with a particle size between 5-1000 nm have a specific surface area between 30 and 100 as disclosed by Swaroop. One would have been motivated to make this modification as Swaroop teaches that this surface area improves thermal conductivity (0017).
Conclusion
Claims 1-21 are pending.
Claims 1-21 are rejected.
THIS ACTION IS MADE FINAL. 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 ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
September 6, 2026Primary Examiner, Art Unit 1717
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