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 .
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.
Claim(s) 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2013042638 (WO ‘638) in view of WO 2020/095902 citing US 20210371660 (US ‘660) as an English language equivalent.
As to Claim 1, WO ’638 discloses a thermally conductive moisture curable resin (pg. 1 line 12) which is comprised of a polymer containing silyl groups (pg. 2, line 25), a compound having only one silyl group and a viscosity of 100-1000 mPas (same in cP) (pg. 3, lines 50-55) and a heat conductive filler (pg. 3, lines 40-50). The composition contains moisture absorbents for purposes of introducing water (pg. 4, lines 20-25) and a catalyst (pg. 4, lines 30-40). The composition can be liquid i.e. components are soluble and two-part (pg. 5, line 46).
WO ‘638 fails, however, to disclose a heat conductive filler with graphite of particle size 15 to 150 micron blended with non-graphite particles with particle sizes less than 10 micron and the physical properties as required by Claim 15.
As to the difference, WO ‘638 discloses heat conductive fillers such as graphite, non-graphite materials and mixtures (pg. 3, lines 34-40). US ‘660, in the related art of heat conductive compositions (Abstract), discloses mixtures of heat conductive fillers similar to those of WO ‘638 and notes that mixtures of the differing particles sizes of the fillers improves particle packing structure and heat conductivity. Particle size diameters suggested including 0.1 to 5 micron and 6 to 60 micron (para. 0063).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the thermal filler particle sizes and resulting physical properties of WO ‘638 through routine experimentation for best results in view of the teachings of US ‘660. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955). As to the physical properties, it would have been obvious to one of ordinary skill in the art to understand the prior art compositions to have properties similar to those of the instant claims in view of the similarity of the materials used and the utilities served.
As to Claim 16, the polymer containing silyl groups include alkoxysilane groups (pg. 2, lines 35-40).
As to Claim 17, the ratio of the resin to the diluent equivalent is 70:30 to 1:99 (pg. 4, line 11) which the Examiner construes as meeting the claimed limitation.
As to Claim 18, the thermally conductive filler is present from 1.5 to 300 times the organic component of composition (pg. 3, lines 40-50) which the Examiner construes as meeting the claimed limitation.
As to Claims 19-20, WO ‘638 discloses catalysts and moisture absorbents which the Examiner construes as a scavenger (pg. 4, lines 15-20).
Allowable Subject Matter
Claims 1-14 are allowed.
Specifically, none of the prior art discloses the claimed composition wherein the specific weight ratios of graphite to non-graphite particles are specified nor would it be obvious to arrive at the claimed limitation in view of the prior art of record.
Conclusion
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/J.P.T/Examiner, Art Unit 1762
/jt/ 9/15/2026
/MARK KOPEC/ Primary Examiner, Art Unit 1762
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