CTNF 18/578,070 CTNF 85179 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. DETAILED ACTION This Office action is based on the 18/578070 application originally filed January 10, 2024. Amended claims 1-7, filed January 10, 2024, are pending and have been fully considered. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 1-4, 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujisawa et al. (WO 2018/043270 A1) hereinafter cited under US 2020/0347229 “Fujisawa” in view of Yamamoto et al. (US 2011/0274935) hereinafter “Yamamoto” and Rhodes et al. (WO 2014/018814 A1) hereinafter “Rhodes” . Regarding Claims 1-4, 6 and 7 Fujisawa discloses in the abstract, a curable organopolysiloxane composition which has a particularly excellent effect of improving initial adhesiveness in small amounts and a thin layer with respect to various base materials, in addition to being able to achieve particularly excellent adhesive durability and high adhesive strength after curing. The curable organopolysiloxane composition comprises: (A) an organopolysiloxane having at least two alkenyl groups per one molecule; (B) a trialcoxysilyl containing siloxane having one silicon atom-bonded hydrogen atom and at least one trialcoxysilyl group per one molecule; (C) a chain or cyclic organopolysiloxane having at least two silicon atom-bonded hydrogen atoms per one molecule; (D) a chain organopolysiloxane having at least three silicon atom-bonded hydrogen atoms per one molecule; (E) a catalyst for a hydrosilylation reaction ; (F) a catalyst for a condensation reaction; and (G) an adhesion promoter . Component (A) of the presently claimed invention: Fujisawa discloses in paragraph 0058, component (A) is an organopolysiloxane having at least two alkenyl groups per one molecule and serving as the main agent. This component (A) is preferably an organopolysiloxane having at least two alkenyl groups per one molecule and not having the below mentioned alkoxysilyl containing group in a molecule, with component (A) preferably added to the composition without being reacted with component (B) in advance. Fujisawa discloses in paragraph 0059, the viscosity of component (A) at 25°C is, for example, preferably within the range of 20 to 1,000,000 mPa/s , particularly preferably within the range of 100 to 100,000 mPa/s. This is because, if the viscosity at 25°C is less than the lower limit of the abovementioned range, the physical properties of the obtained cured product, particularly flexibility and elongation, may significantly decrease; in contrast, if it exceeds the upper limit of the abovementioned range, the viscosity of the obtained composition may increase, significantly deteriorating the handleability. Component (B) of the presently claimed invention: Fujisawa discloses in paragraph 0077, the composition characteristically uses two crosslinking agents in combination. Component (C) is a chain or cyclic organopolysiloxane having two silicon atom-bonded hydrogen atoms per one molecule (with the crosslinking reaction points limited to two), and mainly reacts with component (A) as a chain length extender to form a long chain molecular structure including a long polysiloxane in a cured product. Such a long chain molecular structure imparts flexibility and trackability to the cured product and is expected to improve adhesion strength and adherence in itself when adhered to resin, etc. Fujisawa discloses in paragraph 0083, Component (D) serves as the main crosslinking agent of the composition of the present invention and is a chain organopolysiloxane having at least three silicon atom-bonded hydrogen atoms per one molecule . Component (D) has a large number of crosslinking reaction points and accordingly forms a dense three-dimensional crosslinking structure with component (A) in the curing reaction of the composition according to the present invention, achieving the strength of a cured product and firm adhesiveness (adhesive durability) with base materials. It is to be noted, Fujisawa discloses the claimed an organopolysiloxane having at least two silicon atom-bonded hydrogen atoms per molecule but fails to teach the claimed amount to provide 0.5 to 5 moles of silicon atom-bonded hydrogen atoms per 1 mole of alkenyl groups. Yamamoto discloses in paragraph 0017, a silicone composition which can be coated onto a surface of a substrate such as paper or plastic film to form a non-tacky coating tenaciously adherent to the substrate surface. Another object is to provide a release paper or release film having a cured coating of the composition formed on a substrate, and a method for preparing the release paper or film. Yamamoto discloses in paragraph 0023, (C) 0.1 to 20 parts by weight of an organohydrogenpolysiloxane containing at least three silicon-bonded hydrogen atoms in a molecule. Yamamoto further discloses in paragraph 0086, the organohydrogenpolysiloxane as component (C) is blended in such amounts that the moles of SiH group is 1 to 10 times the total moles of alkenyl group in component (A). Generally speaking, an appropriate amount of component (C) blended is 0.1 to 20 parts by weight per 100 parts by weight of component (A). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add the effective amount of silicon atom-bonded hydrogen atoms per 1 mole of alkenyl groups of Yamamoto to the organopolysiloxane having at least two silicon atom-bonded hydrogen atoms per molecule of Fujisawa. The motivation to do so is to if the moles of SiH group in component (C) is less than the lower limit relative to the total moles of alkenyl group in component (A), the composition may not fully cure and if the moles of SiH group in component (C) is more than the upper limit, no further increase in the desired effect is observed and the peeling force may become heavy. Component (C) of the presently claimed invention: Fujisawa discloses in paragraph 0092, the composition includes an adhesion promoter (G) in addition to said components (A) to (F). Component (G), independently or as only two kinds, improves the adhesiveness of the silicone rubber cured product obtained by curing the present composition; suitably, when one or two or more selected from the following four kinds of components are used in combination, they impart excellent initial adhesiveness to an uncleaned aluminum die cast and resin material; wherein, even during use under harsh environments, the adhesive durability and adhesive strength are further improved, while the reliability/durability of electric/electronic parts can be maintained for extended periods of time. Fujisawa discloses in paragraph 0109, component (g2) is suitably a disilaalkane compound represented by the below mentioned general formula: PNG media_image1.png 218 785 media_image1.png Greyscale (wherein R C is a substituted or unsubstituted alkylene group having a carbon number of 2 to 20, R D is each independently an alkyl group or alkoxyalkyl group, R E is each independently a monovalent hydrocarbon group, and b is each independently 0 or 1.) Such component (g2) is commercially available as reagents or products in various compounds and can be synthesized using a well-known method such as a Grignard reaction and hydrosilylation reaction. For example, component (g2) can be synthesized via a well-known method by the hydrosilylation reaction between diene and trialkoxysilane or organodialkoxysilane. Fujisawa discloses in paragraph 0111, in the formula, R E is a monovalent hydrocarbon group including: an alkyl group such as a methyl group, ethyl group, and propyl group; an alkenyl group such as a vinyl group or allyl group; and an aryl group such as a phenyl group, with a lower alkyl group preferable. R D is an alkyl group such as a methyl group, ethyl group, and propyl group, or an alkoxyalkyl group such as a methoxyethyl group, preferably having a carbon number of 4 or less. R C is a substituted or unsubstituted alkylene group, with a linear or branched alkylene group used without limitation, and may be a mixture thereof. In terms of improving adhesiveness, a linear and/or branched alkylene group having a carbon number of 2 to 20 is preferable, with a linear and/or branched alkylene having a carbon number of 5 to 10, particularly hexylene having a carbon number of 6, preferable. The unsubstituted alkylene group may be a butylene group, pentylene group, hexylene group, heptylene group, octylene group, nonylene group, decylene group, or a branched structure thereof, with the hydrogen atom capable of being substituted with a methyl group, ethyl group, propyl group, butyl group, cyclopentyl group, cyclohexyl group, vinyl group, allyl group, 3,3,3-trifluoropropyl group, or 3-chloropropyl group. It is to be noted, Fujisawa discloses the claimed adhesion promoter but fails to teach the claimed amount of adhesion promoter. However, it is known in the art to add an adhesion promoter in a silicone composition in an effective amount, as taught by Yamamoto. Yamamoto discloses in paragraph 0018, a specific adhesion promoter is added to a conventional release paper or film-forming silicone composition, a cured coating which is tenaciously adherent to a substrate can be formed from the composition. The adhesion promoter is a compound which contains per molecule at least one substituent group having a functional group capable of radical reaction upon exposure to heat and/or UV, and at least one substituent group having a group capable of reaction with alkenyl and/or SiH group, is free of inhibitors S and P against platinum addition reaction, and is dissolvable or dispersible in the composition in a stable manner. As opposed to the prior art techniques of improving adhesion at more or less sacrifice of release properties, the addition of the adhesion promoter can improve adhesion without substantial impact on release properties. Yamamoto further discloses in paragraph 0022, (B) 0.1 to 10 parts by weight of an adhesion promoter which is (B1) an organopolysiloxane containing at least two silicon-bonded alkenyl-containing substituent groups in a molecule, having an alkenyl content of 0.3 to 2.0 mol/100 g, and having a structure that two siloxane units in which the alkenyl-containing substituent group is bonded to silicon atom are linked directly or via up to 3 intervening siloxane units in which said substituent group is not bonded to silicon atom, the organopolysiloxane having a viscosity of less than 0.04 Pa-s at 25° C., and/or (B2) a compound containing in a molecule at least one substituent group of 2 to 10 carbon atoms having a carbon-carbon unsaturated bond (double or triple bond) as functionality, and at least one substituent group having a group capable of addition reaction and/or condensation reaction with the alkenyl group in component (A) and/or a silicon-bonded hydrogen atom in component (C). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add the effective amount of adhesion promoter of Yamamoto to the in a silicone composition of Fujisawa. The motivation to do so is to use an effective amount of thermally conductive filler in in order to improve adhesion without substantial impact on release properties. Component (D) and (E) of the presently claimed invention: Fujisawa discloses in paragraph 0119, the curable organopolysiloxane composition preferably further contains an inorganic filler (H). This inorganic filler is preferably one or more selected from a reinforcing filler , a thermally conductive filler , and a conductive filler, particularly when the composition is used in the application of a protectant or adhesive. Fujisawa discloses in paragraph 0120, the reinforcing filler is a component which imparts mechanical strength to a silicone rubber cured product obtained by curing the present composition and improving the performance as a protectant or adhesive. Exemplary reinforcing fillers may include, for example, inorganic fillers such as fumed silica fine powder, precipitated silica fine powder, burned silica fine powder, fumed titanium dioxide fine powder, quartz fine powder, calcium carbonate fine powder, diatomaceous earth fine powder, aluminum oxide fine powder, aluminum hydroxide fine powder, zinc oxide fine powder, and zinc carbonate fine powder, with these inorganic fillers capable of containing inorganic fillers surface treated with treatment agents including organoalkoxysilanes such as a methyltrimethoxysilane , organohalosilanes such as a trimethylchlorosilane, organosilazanes such as a hexamethyldisilazane, and siloxane oligomers such as a dimethylsiloxane oligomer blocked by an α,ω-silanol group, a methylphenylsiloxane oligomer blocked by an α,ω-silanol group, and a methylvinylsiloxane oligomer blocked by an α,ω-silanol group. In particular, by treating the surface of component (H) in advance with an organopolysiloxane of a low degree of polymerization having a silanol group at both terminals of a molecular chain (suitably, a dimethylpolysiloxane blocked by an α,ω-silanol group not having reactive functional groups other than this terminal silanol group in molecules), excellent initial adhesiveness, adhesive durability, and adhesive strength at room temperature can be achieved, with further sufficient usable time (storage period, handling operation time, and pot life) capable of being ensured. Fujisawa discloses in paragraph 0122, while not limited thereto, the content of the reinforcing filler is preferably within the range of 0.1 to 200 parts by mass with respect to 100 parts by mass of the organopolysiloxane. Fujisawa discloses in paragraph 0123, the thermally conductive filler or the conductive filler is a component which imparts thermal conductivity or electric conductivity to the silicone rubber cured product obtained by curing as desired, with examples thereof including: metal fine powder such as gold, silver, nickel, and copper; fine powder obtained by depositing or plating metals such as gold, silver, nickel, or copper on the surface of fine powder such as ceramics, glass, quartz, or organic resin; a metal compound such as aluminum oxide, aluminum nitride, or zinc oxide, as well as mixtures of two or more thereof. Silver powder, aluminum powder, aluminum oxide powder, zinc oxide powder, aluminum nitride powder, or graphite is particularly suitable. Moreover, if electric insulation is required in the present composition, metal oxide based powder or metal nitride based powder is preferable, with aluminum oxide powder, zinc oxide powder, or aluminum nitride powder particularly preferable. Fujisawa discloses in paragraph 0124, the average particle diameter of such a thermally conductive filler or conductive filler, as the median diameter, is preferably within the range of 1 to 100 μm. It is to be noted, Fujisawa discloses the thermally conductive filler but fails to teach the claimed amount of thermally conductive filler. However, it is known in the art to add an thermally conductive filler in a silicone composition in an effective amount, as taught by Rhodes. Rhodes discloses in paragraph 0001, self-adhering curable silicone adhesive compositions and a process for making self-adhering curable silicone adhesive compositions, and products formed by curing the self-adhering curable silicone compositions. More particularly, this invention relates to hydrosilylation-curable compositions that provide low temperature adhesion, while maintaining good shelf-stability. Rhodes further discloses in paragraph 00733, (F) The Filler. Optional component (F) is a reinforcing and extending inorganic filler. Examples of the aforementioned inorganic fillers (F) are the following: glass fiber, mineral fiber, alumina fiber, ceramic fiber that contains alumina and silica as components, boron fiber, zirconia fiber, silicon carbide fiber, metal fiber, or other fibrous filler; fused silica, crystalline silica, precipitated silica, fumed silica, baked silica, zinc oxide, baked clay, carbon black, glass beads, alumina, talc, calcium carbonate, clay, aluminum hydroxide, magnesium hydroxide, barium sulfate, titanium dioxide, aluminum nitride, boron nitride, silicon carbide, aluminum oxide, magnesium oxide, titanium oxide, beryllium oxide, kaolin, mica, zirconium, or other powdered fillers. These fillers can be used in combinations of two or more. Alternatively the filler (F) is a spherical silica with an average particle size in the range of 0.1 to 40 μιη. Rhodes discloses in paragraph 00744, the filler is a thermally conductive filler that is used for imparting conductivity to the composition. This may be, e.g., an aluminum powder, copper powder, nickel powder, or another metal powder; an alumina powder, magnesium oxide powder, beryllium oxide powder, chromium oxide powder, titanium oxide powder, or a similar metal oxide powder; boron nitride powder, aluminum nitride powder, or similar nitride powder; boron carbide powder, titanium carbide powder, silicon carbide powder, or similar metal carbide powder; metal oxide powder used for imparting conductivity to surfaces by coating them with a metal-containing substance; or mixtures of two or more of the above. The particles of the thermally conductive filler may have spherical, round, needlelike, disk-like, rod-like, or irregular shape. When it is required that the composition or a cross- linked body of the composition possess electrical, insulating properties, it is preferable to use metal oxide-type powder, metal nitride-type powder, or a metal carbonate-type powder, especially alumina powder. There are no special restrictions with regard to an average particle size of the thermally conductive filler, but it is recommended that the average size of the particles be within the range of 0.1 to 100 microns, and preferably 0.1 to 50 microns. Moreover, it is recommended that in the mixture of constitutes the former constitutes 30 to 90% by weight. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add the effective amount of thermally conductive filler of Rhodes to the in a silicone composition of Fujisawa. The motivation to do so is to use an effective amount of thermally conductive filler in order to impart conductivity to a silicone based composition. Component (F) of the presently claimed invention: Fujisawa discloses in paragraph 0088, the curable organopolysiloxane composition includes, in addition to said components (A) to (D), two different curing catalysts: ( E) the catalyst amount of a catalyst for a hydrosilylation reaction ; and (F) the catalyst amount of a catalyst for a condensation reaction. The technical effects are achieved such that when such two catalysts are used in combination with said each component, they are easily cured by warming at from room temperature to 50°C, and have excellent adhesiveness to various base materials. Fujisawa discloses in paragraph 0089, component (E) is the catalyst amount of a catalyst for a hydrosilylation reaction and serves as a component for promoting the hydrosilylation reaction and curing the composition. Exemplary such components may include platinum based catalysts such as platinum black, platinum-supporting activated carbon, platinum-supporting silica fine powder, chloroplatinic acid, alcohol solutions of chloroplatinic acid, olefin complexes of platinum, and vinylsiloxane complexes of platinum; palladium based catalysts such as tetrakis(triphenylphosphine)palladium; and rhodium based catalysts. In particular, component (C) is preferably a catalyst for a platinum based hydrosilylation reaction. The amount used is a catalyst amount , can be appropriately selected in accordance with the desired curing conditions, and is generally within the range of approximately 1 to 1000 ppm with respect to the organopolysiloxane. In addition, in terms of improving the handleability as well as the pot life of the composition, a platinum containing hydrosilylation reaction catalyst in fine particles dispersed and encapsulated with thermoplastic resin may be used. Note that as a catalyst for promoting a hydrosilylation reaction, a nonplatinum based metal catalyst such as iron, ruthenium, and iron/cobalt may be used . 07-21-aia AIA Claim (s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujisawa et al. (WO 2018/043270 A1) hereinafter cited under US 2020/0347229 “Fujisawa” in view of Yamamoto et al. (US 2011/0274935) hereinafter “Yamamoto” and Rhodes et al. (WO 2014/018814 A1) hereinafter “Rhodes” and further in view of Yamazaki (WO 2020/138409 A1) hereinafter cited under US 2022/0064447 . Regarding Claim 5 Yamamoto modified by Yamamoto and Rhodes discloses the claimed thermal conductive silicone composition but fails to further define the claimed retardant of claim 5 of the present invention. However, it is known in the art to add a retardant to a silicone composition, as taught by Yamazaki. Yamazaki discloses in the abstract, a curable granular silicone composition which has hot-melt properties, is particularly superior in flexibility and toughness at high temperatures from room temperature to about 150°C in cured products such as overmolding, and provides a cured product that does not easily warp or become damaged even when integrally molded with an aluminum lead frame or the like. A curable granular silicone composition comprising: (A) organopolysiloxane resin microparticles having a curing reactive functional group; (B) a functional inorganic filler; and (C) a curing agent. The composition provides, upon curing, a cured material having a storage modulus at 25°C and 150° C. of less than 2,000 MPa and less than 100 MPa, respectively, and a peak value of tan δ represented by the storage modulus/loss modulus (G′/G″), is 0.40 or more. Yamazaki discloses in paragraph 0154, the composition may also contain hot-melt microparticles, curing retardants and adhesion-granting agents other than component (A) as other optional components, as long as the purpose of the present invention is not impaired. Yamazaki discloses in paragraph 0159, examples of the curing retardant include: alkyne alcohols such as 2-methyl-3-butyne-2-ol, 3,5-dimethyl-1-hexyne-3-ol, 2-phenyl-3-butyne-2-ol, and 1-ethynyl-1-cychlohexanol; enyne compounds such as 3-methyl-3-pentene-1-yne, and 3,5-dimethyl-3-hexene-1-yne; alkenyl group-containing low molecular weight siloxanes such as tetramethyltetravinylcyclotetrasiloxane and tetramethyltetrahexenylcyclotetrasiloxane; and alkynyloxysilanes such as methyl tris(1,1-dimethyl propynyloxy)silane and vinyl tris(1,1-dimethyl propynyloxy)silane. The content of the curing retardant is not limited, but is preferably within the range of 10 to 10,000 ppm in terms of mass units , with regard to the composition. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add the curing retardant of Yamazaki to the in a silicone composition of Fujisawa. The motivation to do so is to use curing retardants to aid in curing a silicone based composition. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM. 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, Prem Singh can be reached at 571-272-6381. 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. /Latosha Hines/Primary Examiner, Art Unit 1771 Application/Control Number: 18/578,070 Page 2 Art Unit: 1771 Application/Control Number: 18/578,070 Page 3 Art Unit: 1771 Application/Control Number: 18/578,070 Page 4 Art Unit: 1771 Application/Control Number: 18/578,070 Page 5 Art Unit: 1771 Application/Control Number: 18/578,070 Page 6 Art Unit: 1771 Application/Control Number: 18/578,070 Page 7 Art Unit: 1771 Application/Control Number: 18/578,070 Page 8 Art Unit: 1771 Application/Control Number: 18/578,070 Page 9 Art Unit: 1771 Application/Control Number: 18/578,070 Page 10 Art Unit: 1771 Application/Control Number: 18/578,070 Page 11 Art Unit: 1771 Application/Control Number: 18/578,070 Page 12 Art Unit: 1771 Application/Control Number: 18/578,070 Page 13 Art Unit: 1771 Application/Control Number: 18/578,070 Page 14 Art Unit: 1771 Application/Control Number: 18/578,070 Page 15 Art Unit: 1771 Application/Control Number: 18/578,070 Page 16 Art Unit: 1771
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