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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The abstract of the disclosure is objected to because the abstract should be limited to a single paragraph. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Response to Amendment
Amended claims filed 12/29/23 were examined. While claims were filed on 3/22/24, said claims appear to be a duplicate of the original claims filed on 12/29/23.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiba et al. (US 2019/0002694).
Regarding claim 1: Akiba et al. (US ‘694) discloses thermally conductive silicone compositions [abstract] comprising 10-2750 parts by mass of component (C) [0059-0062]. Akiba et al. (US ‘694) discloses Example 8 [Ex. 8; 0119-0124; Table 1, Ex. 8] contains 95 parts by mass A-1 (dimethylpolysiloxane, both terminals blocked with dimethylvinylsilyl group; kinetic viscosity 600 mm2/s at 25 oC [0097]), 5 parts by mass A-2 (organohydrogenpolysiloxane; 16 SiH per molecule; ~2.4 SiH/vinyl [0098]), 950 parts by mass B-1 (silver powder having a tap density of 6.6 g/cm3, a specific surface area of 0.28 m2/g, and an aspect ratio of 8 [0100]), 60 parts by mass C-4 (silver powder having an average particle size of 11 µm, a tap density of 5.2 g/cm3, a specific surface area of 0.2 m2/g, and an aspect ratio of 1.1 [0110]), and 6.73 parts by mass D-1 (platinum catalyst [0112]) [Ex. 8; 0119-0124; Table 1, Ex. 8].
Akiba et al. (US ‘694) does not disclose Ex. 8 containing 500 to 3,000 parts by mass C-4. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05]. Additionally, while Ex. 8 does not contain 500 to 2,750 parts by C-4, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have prepared a composition containing 500 to 2,750 parts by C-4, as Akiba et al. (US ‘694) discloses 10-2750 parts by mass of component (C) [0059-0062]. See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) [MPEP 2144.05].
Akiba et al. (US ‘694) does not specifically disclose Ex. 8 containing 100 parts mass of A-1. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed 100 parts by mass A-1, as 100 parts by mass is close enough to 95 parts by mass.
Regarding claim 2: Akiba et al. (US ‘694) discloses a mass ratio of component (B) to component (C) of 3-150 [0067].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05].
Regarding claim 3: Akiba et al. (US ‘694) discloses curing Ex. 8 [Ex. 8; 0093-0094; 0119-0124].
Regarding claim 4: Akiba et al. (US ‘694) discloses a semiconductor device [0086], wherein the cured thermally conductive composition is interposed between a heat-generating electronic part and a heat dissipator [0086-0088];
Regarding claim 5: Akiba et al. (US ‘694) discloses a method of producing a semiconductor device [0086], wherein the thermally conductive composition is interposed between a heat-generating electronic part and a heat dissipator, and heated to 80 oC or higher at a pressure of 0.01MPa or higher [0086-0088; 0092-0093].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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