Prosecution Insights
Last updated: April 19, 2026
Application No. 18/579,081

THERMALLY CONDUCTIVE SHEET PRODUCT AND METHOD FOR PRODUCING SAME

Non-Final OA §103
Filed
Jan 12, 2024
Examiner
AHMED, SHEEBA
Art Unit
1787
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Shin-Etsu Chemical Co. Ltd.
OA Round
1 (Non-Final)
80%
Grant Probability
Favorable
1-2
OA Rounds
3y 1m
To Grant
95%
With Interview

Examiner Intelligence

Grants 80% — above average
80%
Career Allow Rate
890 granted / 1105 resolved
+15.5% vs TC avg
Moderate +14% lift
Without
With
+14.2%
Interview Lift
resolved cases with interview
Typical timeline
3y 1m
Avg Prosecution
37 currently pending
Career history
1142
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
34.5%
-5.5% vs TC avg
§102
33.7%
-6.3% vs TC avg
§112
20.3%
-19.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1105 resolved cases

Office Action

§103
DETAILED ACTION Notice of Pre-AIA or AIA Status 1. 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 2. Applicant’s election without traverse of Group I, claims 1-23, in the reply filed on October 24, 2025 is acknowledged. Claims 1-15 are pending of which claim 24 and 25 are withdrawn and claims 1-23 are now under consideration. 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. 3. Claims 1-7, 11, 12, 14-18, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Asaine (US 2008/0254247 A1) in view of Hirohisa et al. (JP2014061617A). Asaine discloses a silicone rubber composition (equivalent to the cured product of a thermally conductive fluorine-containing curable composition) comprising (a) an organopolysiloxane having alkenyl radicals (equivalent to component A of the claimed invention), (b) a heat conductive filler (equivalent to component D of the claimed invention), (c) an organohydrogenpolysiloxane (equivalent to component B of the claimed invention), (d) a platinum group metal compound (equivalent to component C of the claimed invention), (e) a reaction regulator, and (f) a silicone resin. A heat conductive cured product (equivalent to the thermally conductive sheet of the claimed invention) is prepared by intimately mixing components (a) to (f), applying the composition as a thin film to a substrate which has been treated to be releasable, and curing the composition. In one aspect, the heat conductive cured product is prepared by applying a composition as a thin film to a substrate which has been treated to have a silicone pressure-sensitive adhesive releasable surface, and curing the composition. The composition comprises as essential components, (a) 100 parts by weight of an organopolysiloxane having alkenyl radicals, (b) 200 to 2,000 parts by weight of a heat conductive filler, (meeting the limitation that the thermally conductive filler is present in an amount of 100 to 4,000 parts by weight), (c) an organohydrogenpolysiloxane in an amount to give a molar ratio of silicon-bonded hydrogen atoms in component (c) to alkenyl radicals in component (a) between 0.5/1 and 5.0/1, and (d) 0.1 to 1,000 ppm of platinum group element based on component (a) of a platinum group metal compound, (meeting the limitation that the platinum group metal-based catalyst is present in an amount of 0.1 to 2,000 ppm). Component (b) is a heat conductive filler and examples include metals such as non-magnetic copper and aluminum, metal oxides such as alumina, silica, magnesia, red iron oxide, beryllia, titania, and zirconia, metal nitrides such as aluminum nitride, silicon nitride, and boron nitride, synthetic diamond, and silicon carbide. The heat conductive filler has an average particle size of 0.1 to 100 microns (meeting the limitations of claims 14-18). Component (a) is an organopolysiloxane having alkenyl radicals, specifically an organopolysiloxane having at least two alkenyl radicals in the molecular chain, and preferably an organopolysiloxane whose main chain is essentially composed of recurring diorganosiloxane units. Component (c) is an organohydrogenpolysiloxane having at least two silicon-bonded hydrogen atoms (i.e., Si--H radicals) in the molecular chain and preferably at least three Si--H radicals. Component (c) is added in an amount to give 0.5 to 5.0 moles of Si--H radicals in component (c) per mole of alkenyl radicals in component (a). Preferably component (c) is added in an amount to give 0.8 to 4.0 moles and more preferably 1.0 to 3.0 moles of Si--H radicals per mole of alkenyl radicals (meeting the limitations that 0.50 to 3.0 mol per 1 mol of alkenyl groups are contained in the whole of the composition). The Examples illustrate that the heat conductive cured product can be prepared by intimately mixing the foregoing components to form a silicone rubber composition, applying the composition onto a substrate as a thin film, and heat curing the coating. The coating preferably has a thickness of 20 to 1,000 microns (meeting the limitations of claim 2) and to facilitate application of the silicone rubber composition, a solvent such as toluene may be added to the composition for viscosity adjustment. The substrate onto which the silicone rubber composition is to be applied is typically a paper sheet or PET film (equivalent to the electrically insulating films of the claimed invention and meeting the limitations of claim 3 and 4) which has been surface treated with a non-dimethylsilicone polymer to be releasable. By the surface treatment, the substrate is provided with a releasable surface so that any coating applied to the substrate surface may be subsequently peeled from the substrate surface. Examples of the non-dimethylsilicone polymer used herein include modified silicones having fluorinated substituent radicals such as perfluoroalkyl or perfluoropolyether radicals on the main chain (meeting the limitations of claim 5-7). Another film which has been treated to be releasable like the substrate film may be attached to the other surface of the heat conductive cured product remote from the substrate as a separator film, so that the resulting assembly is easy to handle during subsequent transportation and cutting in lengths. For both the substrate film and separator film, the type and amount of release agent applied to film and the type of film may be changed so that these films may differ in peeling force (meeting the limitation that the electrically insulating films are attached to both sides of the cured heat conductive sheet). (See Abstract and paragraphs 0002, 0012-0020, 0023-0025, 0028-0041, 0056). Although Asaine teaches an organopolysiloxane having alkenyl radicals, specifically an organopolysiloxane having at least two alkenyl radicals in the molecular chain and an organohydrogenpolysiloxane having at least two silicon-bonded hydrogen atoms (i.e., Si--H radicals) in the molecular chain and preferably at least three Si--H radical, Asaine fails to teach that the organopolysiloxane having alkenyl radicals has a perfluoropolyether structure in a main chain and the organohydrogenpolysiloxane has, in one molecule, one or more groups selected from perfluoroalkyl groups, perfluorooxyalkyl groups, perfluoroalkylene groups, and perfluorooxyalkylene groups. However, Hirohisa et al., in JP2014061617A, teach a thermal conductive sheet comprising (A1) a compound having a perfluoroalkyl ether structure in the main chain and 1 to 2 hydrosilyl groups at the end of the molecule, the content of molecules having 2 hydrosilyl groups is 60 to 100 mol% and the main chain can be composed of perfluorooxyalkylene units, and (B2) a compound having a perfluoroalkyl ether structure in the main chain and having 1 to 2 alkenyl groups at the end of the molecule, the content of molecules having 2 alkenyl groups is 0 to 40 mol% and a (C) a thermally conductive filler. With an appropriate ratio and when the blending ratios for (A1)/(B1) are also adjusted to appropriate predetermined ratios, a sheet with good thermal conductivity, even when the filler is highly filled, can be obtained. Furthermore, a high bleed suppression effect even when exposed to a high temperature environment for a long time can be obtained. Thermal conductive filler (C) can be an aluminum oxide and may be granular, scaly, or acicular with an average particle diameter of 0.1 to 100 µm. A platinum group catalyst can be used to catalyze a crosslinking reaction (hydrosilylation reaction) between a hydrosilyl group and an alkenyl group of a fluorine compound and an effective amount necessary to promote crosslinking and curing of the first resin composition is about 0.1 to 1000 ppm with respect to the above total content. (See paragraph 0001, 0011-014, 0022, 0024, 0028, 0039, 0066, 0070 of the translation). Accordingly, it would have been obvious to one having ordinary skill in the art to add a perfluoropolyether structure in a main chain of the organopolysiloxane having alkenyl radicals and one or more groups selected from perfluoroalkyl groups, perfluorooxyalkyl groups, perfluoroalkylene groups, and perfluorooxyalkylene groups in the organohydrogenpolysiloxane taught by Asaine given that Hirohisa et al. teach that the combination of a compound having a perfluoroalkyl ether structure in the main chain and another compound composed of perfluorooxyalkylene units results in a heat conductive sheet with good thermal conductivity and a high bleed suppression effect even when exposed to a high temperature environment for a long time. With regards to the limitation that the cured product obtained by curing the thermally conductive fluorine-containing curable composition has a thermal conductivity at 25°C of 1.0 W/mK or more (claim 22) and that the cured product obtained by curing the thermally conductive fluorine-containing curable composition has a hardness of 60 or less as measured with a type E durometer specified in JIS K6253-3 (claim 23), the Examiner takes the position that such property limitations are inherent in the cured product taught by Asaine given that the structure and composition of the cured product as taught by Asaine and that of the claimed invention are identical. Allowable Subject Matter 4. Claims 8-10, 13, and 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Conclusion 5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm. 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, CALLIE SHOSHO can be reached at 571-272-1123. 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. /SHEEBA AHMED/Primary Examiner, Art Unit 1787
Read full office action

Prosecution Timeline

Jan 12, 2024
Application Filed
Feb 12, 2026
Non-Final Rejection — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
80%
Grant Probability
95%
With Interview (+14.2%)
3y 1m
Median Time to Grant
Low
PTA Risk
Based on 1105 resolved cases by this examiner. Grant probability derived from career allow rate.

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