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 with traverse of restriction of groups II and III in the reply filed on 9/1/2026 is acknowledged. The traversal is on the ground(s) that Ishihara is completely silent with respect to anisotropic thermally conductive filler and only generally lists insulating inorganic filler along with other nitrides oxide and hydroxides. Okamoto presents laundry lists of conductive particles and fails to teach anisotropically conductive filler with non-anisotropically conductive fillers. Okamoto treats thermally conductive fillers as interchangeable equivalents. This is not found persuasive because: While applicants do have a point with respect to Ishihara, that is not the case with Okamoto. Okamoto lists exactly 25 compounds, which is reasonable. Then further provides preferred embodiments. Examples of boron nitrides include tradenames such as HP-40 which is a hexagonal BN which means it has structure similar to that of a graphite rendering it anisotropic. While aggregation can shift the character of BN to isotropic, Okamoto clearly says particles and not aggregates. Another hexagonal BN are PT620, AS-50, AS-10. SN-100P, SN-100S, and the like. It is well established in the art that hexagonal BN due to its graphite-like layered structure is anisotropically. Secon particle is a hydrated particle, preferred is aluminum hydroxide which can be anisotropic as well as amorphous alumina which is not anisotropic. Additionally, as it will be evidenced in the prior art that is actually applied in the rejection, the composition is known. Furthermore, instant claim 1 does not really limit the second filler to be a non-anisotropic filler. It just have to be different than the anisotropic filler.
The requirement is still deemed proper and is therefore made FINAL. Claims 1-9 are examiner, claims 10-13 are withdrawn from prosecution.
Claim Interpretation
Instant claim 1 recited three components which include binder that is cured, anisotropic thermally conductive filler and thermally conductive filler other than anisotropic filler.
Second filler is not limited with respect to its chemical identity or character as long as it is different from the first filler. Binder is defined in claim 2, as silicone resin which is polyorganosiloxane having alkenyl group in one molecule and organohydrogen polysiloxane having H directly bonded to a silicone atom in one molecule. Basically, hydrosilyl is a crosslinking agent for polyorganosiloxane. The reaction product between the two silanes does not necessarily result in a cured product that is tacky in order to meet condition of high tack as depicted in claim 1. Additionally, if polyorganosiloxane comprises alkenyl group, two other groups oxygens what is the fourth functional or non-functional group? Silicon has to have 4 bonds. Specification does not provide any guidance. It is therefore not clear if the crosslinking reaction goes to completion or if the tackiness can be achieved by utilizing another layer on top of the cured sheet. This is especially confusing because tackiness will not only depend on the ratio of polymer to crosslinker but also catalyst load, temperature and time. Additionally, since the fourth group on silicon atom was not identified, and assuming that the second group is another alkyl polyorganosiloxane do not remain tacky upon curing. Consequently, applicants failed to distinctly claim polyorganosiloxane as required by 112(2nd) paragraph. Appropriate rejection will be made.
Amounts as required by instant claim 1 in order to meet the claimed properties, the binder can be any binder utilized in any amount, anisotropic conductive filler and second filler can be anything also utilized in any amount to meet the claimed properties. Consequently, the claims are not commensurate with the scope of the instant invention, because these properties are attributed to a very specific composition which include very specific polymer/crosslinker ratio as well as very specific amounts, particle sizes and shapes of the thermally conductive filler. Consequently, under broadest reasonable interpretation the composition utilizing any of the polymer, crosslinker and conductive filler has to be only capable of obtaining such properties.
Claim 5, in applicants arguments, these compounds are defined as non-anisotropic. These compounds due to their crystal structure are in fact anisotropic. Unless something special is done to these compounds, they will be anisotropic. If the compounds are modified to make the isotropic such treatment is not defined in the specification as originally filed.
*Note: the references below will include inventions of Denka Company from Tokyo. The only know venture between Denka and Seiksui Chemical was in manufacture of polyvinyl alcohol resin, wherein on March 19, 2020 Denka acquired Seksui Chemical’s share of the PVOH production. Consequently, any art issued to Denka with respect to conductive sheets is considered separate and unrelated to the venture mentioned above.
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 1-9 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.
Instant claim 2, recites silicone resin which is polyorganosiloxane having alkenyl group in one molecule and organohydrogen polysiloxane having H directly bonded to a silicone atom in one molecule. Basically, hydrosilyl is a crosslinking agent for polyorganosiloxane. The reaction product between the two silanes does not necessarily result in a cured product that is tacky in order to meet condition of high tack as depicted in claim 1. Additionally, if polyorganosiloxane comprises alkenyl group, two other groups oxygens what is the fourth functional or non-functional group? Silicon has to have 4 bonds. Specification does not provide any guidance. It is therefore not clear if the crosslinking reaction goes to completion or if the tackiness can be achieved by utilizing another layer on top of the cured sheet. This is especially confusing because tackiness will not only depend on the ratio of polymer to crosslinker but also catalyst load, temperature and time. Additionally, since the fourth group on silicon atom was not identified, and assuming that the second group is another alkyl polyorganosiloxane do not remain tacky upon curing. Under broadest reasonable interpretation, the examiner will assume that polyorganosiloxane has 2 alkyl group, which is consistent with [0022] of the instant invention.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 5-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wada (WO 2021/187609) (translation provided) in view of technical data sheet for LR 3303 silanes-20.
With respect to claims 1 and 2, Wada discloses composition containing silicone resin and a thermally conductive fillers. Example 7 of Wada discloses following
Silicone resin LR 3303-20A. silicone resin LR 3303-20B, hexagonal boron nitride and alumina. BN is specifically defined as anisotropic (see Figure 2 and [0029]).
Silicone resin is defined as two-component silicon resin, wherein organohydrogen is used as crosslinking agents (Hence to silanes in the examples [0027], the resin itself is organopolysiloxane. The organohydrogensiloxane contains at least one hydrogen group per silicon atom (20A) and 20B is a mixture of difunctional organosiloxanes bearing 4 vinyl groups per silicon atom. Components are utilized in 1:1 ratio as disclosed in the example the ratio of hydrogen to alkenyl 0.5. The remaining vinyl group are considered unreacted pendant groups (not complete crosslinking) wherein the vinyl group will be responsible for rendering the sheet tacky. This is well known in the art. As such the extent of tackiness depends on the ratio of hydrogen to vinyl groups and since the ratio of Wada falls squarely in the middle of applicant’s range, the tack force, when subject to the same test as in the instant invention will be inherent. Furthermore, Wang expect the tackiness since his inventive sheet has to adhere to the substrates [0018]
With respect to the bleed out of the binder resin, Wada is avoiding it by removing all unreacted lower molecular weight silanes [0052] because their content contributes to formation of siloxane gas which will negatively impact the product. Consequently, after free silane is removed, bleed out of the binder is considered 0 g and will meet the results required by instant claim 1.
With respect to claim 3, the content of the silicone resin is 10-40 mass% [0097]. Since examples utilized disclose each component in grams calculating vol. % of the polymer using V = m/density for each component then volume % of polymer is equal to =( V of polymer/total volume)x 100.
Density of silicone resin is 0.98 g/cm3, density of BN is 2.2 g/cm3 [0039]. Since density of alumina is not reported by Wada, examiner will use examples of only BN and silane to calculate the vol. 5 of the polymer. For 30 grams of resin and 70 grams of BN the volume % of resin is 30. For 25 g of resin and 85g of BN gives resin content of 39, however addition of alumina which is heavier filler and higher density will decrease the vol. % of polymer. For 15 g of polymer and 85 g of BN the vol % of silane will be 28%. Consequently, as evidenced from the content of the examples, the vol. % of polymer will be approximately between 28-39%.
With respect to claim 5, second filler of Wang is alumina. Others are optional, however claim 4 of Want further discloses aluminum nitride, and aluminum hydroxide.
With respect to claim 6, the cross-sectional shape of the thermal conductive filler material is expressed as D [0023] and boron nitride is a hexagonal boron nitride which is in form of a flake or platelet [0029, 0168] which has an aspect ratio [0025]. See Figures 3a and 3b.
With respect to claim 7, thermal conductivity of the sheet of Wang exceeds 10W/mK [0028, 0090].
With respect to claims 8 and 9, the claims are viewed as product by process because the thermally conductive sheet is subject to compression, which is a process step. Consequently, the sheet of Wang has to be capable of being compressed when subject to the same process as the thermally conductive sheet of the instant invention.
Claims 1, 3-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kudoh (JP 2018-165241) wherein EP 3 848 960 is used as translation as evidenced in Wada.
With respect to claim 1, Kudoh discloses heat conductive sheet which comprises polymeric matrix and an anisotropic material oriented in a thickness direction (Abstract) and a thermally conductive filler other than the anisotropic filler (first filler) [0058].
The polymer utilized in the conductive sheet is two part polymer which comprises alkenyl group containing organopolysiloxane and hydrogen organopolysiloxane [0020, 0024]. The surface of the thermally conductive sheet comprises wax-like substance with very low melting point which softens and becomes tacky to prevent falling of the anisotropic material from the end surfaces [0125].
With respect to the tack force, the tack force is a property of the softening layer and not the thermally conductive layer as such the softening layer only has to be capable of achieving such tack force. This is especially important if one does not want to lose anisotropic material.
With respect to bleed amount of polymeric biner, Kudoh does not teach any bleeding consequently the bleed amount is considered as zero.
With respect to claim 3, the content of the polymer matrix is 20-50 vol. % [0028].
With respect to claim 4, the content of anisotropic material is 3-35 vol. % [0031].
With respect to claim 5, anisotropic material can be flaky boron nitride [0043] and additional fillers includes compounds like alumina, magnesia, zinc oxide and aluminum nitride with alumina being exemplified [0064].
With respect to claim 6, as was disclosed in rejection of claim 1, the BN is oriented in a thickness direction.
With respect to claim 7, while Kudoh does not explicitly disclose the thermal conductivity, such is an inherent property because the thermal conductivity is highly dependent on the type and amount of the thermally conductive polymer and fillers. As was disclosed in claims 3-5, the type of the polymer, the type of the fillers and their content is within an instantly claimed range. Consequently, the same thermal conductivity is expected. This is further evidenced in Wada, which has the same content of polymers and fillers including thermal conductivity of the sheet.
With respect to claim 8, the change in thermal resistance is a result of a process which is compression under a specific load, wherein claimed sheet has to be only capable of obtaining claimed values. However, Kudoh discloses rate in thermal resistivity chang (in %) to be less than 10 (see examples 1-12).
With respect to claim 9, the claim does not limit the composition but the results of the test, specifically, compression ratio. Consequently, the composition of Kudoh is capable of providing such results when subject to the same testing conditions, especially when the compression can be as high as 40%.
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshikawa (JP 2013-016647).
With respect to claim 1, Yoshikawa discloses thermally conductive sheet comprising binder, graphite and h-BN, wherein h-BN is in the shape of a flake. Yoshikawa does not teach bleeding consequently bleeding content is considered as zero or negligible and a tack force of 50gf (p. 14).
With respect to claim 6, boron nitrite is a flaky particle as disclosed in rejection of claim 1 that is oriented in thickness direction (p. 17, example 4).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over by Wada (WO 2021/187609) (translation provided) in view of evidence in technical data sheet for LR 3303 silanes-20 as well as alumina density chapter.
Discussion of Wada from paragraph 1 of this office action is incorporated here by reference. While Wada teaches the density of the boron nitride and silane binder, the density of alumina is taught and therefore the volume content of BN cannot be fully calculated.
To calculate the volume content of each component densities are required. Consequently, the examiner will rely on evidentiary reference which discusses density of alumina which including both true and theoretical density. According to evidence theoretical density of alumina is 3.95 g/cm3 across commercial purity grades and true density is typically within 0.5 % pf theoretical value. Consequently, examiner will rely on alumina of highest purity (3.95), because purity is important aspect in thermally conductive products.
Calculating volume of the BN in examples that comprise both BN and alumina, the vol. 5 of BN is in a range of 20-49%.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art that the content of the BN will be within the claimed.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kudoh (JP 2018-165241) wherein EP 3 848 960 is used as translation in view of Yamagata (WO 2019/049707) and as evidenced by Wada.
Discussion of Kudoh from paragraph 2 of this office action is incorporated here as a reference. Specifically, Kudoh discloses thermally conductive sheet, which comprises flake shape boron nitride, alumna and a binder. The preferred binder is organopolysiloxane and curing agent is hydrogen organopolysiloxane. However, Kudoh does not disclose any details regarding the binder and its curing agent.
Yamagata discloses similar composition, where the silicon resin is organopolysiloxane LR 3303=-20A comprising two vinyl groups (one at each end as well as within the polymeric chain) with curing agent as hydrogen organopolysiloxane LR 3303-20B comprising at least one hydrogen, or a one pack system polyorganosiloxane polymer which has two vinyl groups and one hydrogen in one molecule. Both are addition reaction type polymer [0021]. Even when the two polymers are utilized in 1:1 ratio as shown in calculations in Wada the ratio of hydrogen groups to alkenyl groups to is 0.5 especially when vinyl groups are contained within polymer chain as well. Furthermore, the ratio can be adjusted in order to provide semi-cured as taught in Kudoh in order to form laminated block [0017-0018]. This can be achieved by limiting the amount of crosslinking agent.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art to utilize lower content of crosslinking agent in order to allow sheet to be in semi-cured state to create tacky surface that will stacking of layers and afford good adhesion between the layers.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of copending Application No. 18/275,450 (‘450). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of copending application ‘450 teaches thermally conductive sheet comprising silicone binder, flaky boron nitride oriented in thickness direction with tack force of 20gf or more. Claim 5 further requires additional thermally conducted particles which are alumina, aluminum hydroxide, zinc oxide, aluminum nitride and their mixtures. Bleed out is not disclosed consequently, it is viewed at 0g. Claims 1 and 6 of ‘450 meet instant claims 1, 5, and 6.
Co-pending invention does not disclose content of the binder and BN, which under broadest reasonable interpretation is open to thermally conductive filler and binder encompassing both high and low loads of the boron nitride, thereby encompassing instant claims 3 and 4.
7. Claims 1-4 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 and 12 of copending Application No. 18/021,595 (’595). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘595 discloses a thermally conductive sheet comprising curable resin, flaky thermally conductive filler and non-flaky thermally conducive filler. The composition has compression ratio which meets instant claim 9. Content of curing agent to silicone polymer is 5:5 to 7:3 which results in ratio in a range of 0.4 to 1 (curing agent to polymer), which would result in semi-cured polymer and therefore tack.
With respect to the binder, per MPEP 804 the examiner can utilize the specification to learn the meaning of the term. Since term binder and curing agent are very broad, such look up is justified. The resin of ‘595 [0023] is the same as resin of the instant invention meeting instant claim 2.
Claim 3 of ‘595 discloses thermal conductivity to be 7w/mK which encompasses instant claim 7.
Claim 12 of ‘595 teaches flake like conductive filler is utilized in an amount of 15-35 vol. % meeting instant claim 4.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 September 29, 2026
Prosecution Insights