DETAILED CORRESPONDENCE
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission has been entered.
Response to Arguments
Applicant's arguments have been fully considered.
Applicant argues “Applicant respectfully submits that the prior art combination does NOT teach the same compound. The Examiner's rejection of claim 1 relies on modifying Zhang's composition, which teaches filler up to 60 wt%, to increase filler content to greater than 80 wt% based on Yeo. This hypothetically modified composition is different from what Zhang actually discloses. The Examiner has not provided evidence that this hypothetical modified composition would inherently possess the claimed resistivity ranges, thermal expansion coefficient, viscosity, or pot life. Inherency requires that the claimed property necessarily flow from the prior art, not merely possibly be present.” (Emphasis omitted)
Examiner does not find this persuasive because the proposed rejection is not Zhang in view of Yao. Zhang teaches the filler is up to 60wt% whereas the claim requires greater than 80 wt%. Yao teaches a similar epoxy (title) using 80% filler (Abstract, Fig 5) and demonstrates that as filler content increases so does conductivity, e.g., see Fig. 5 and 6a, copied below.
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Yeo teaches that filler and conductive are positively related and that it is desirable to increase conductivity of epoxy for applications.
Yeo explicitly teaches the idea of increasing filler content to achieve desired properties at equation 42 (page 102), which shows that thermal conductivity of the composite (lamda_c) is positive correlated with the volume fraction of the filler particles (V). A person of skill in the art would have known that adding thermally conductive filler increases thermal conductivity, but changes other properties (e.g., processability).
The combination is obvious and results in the same composition.
Applicant has not pointed out what the structural difference is between the claim and the prior art combination of Zhang in view of Yao. Examiner agrees that Zhang teaches the filler is up to 60wt% whereas the claim requires greater than 80 wt%, which is why the rejection further relied on Yeo.
Applicant’s other arguments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-5, 7, 16-18, and 20-21 and is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN109206853A) and in view of Yeo (NPL 20171).
In reference to claim 1 and 16, Zhang discloses an epoxy molding compound, comprising: (“epoxy resin” [Pg 2])
a hardener; (“curing agent, and the catalyst” [Pg. 2])
a catalyst to accelerate curing of the epoxy molding compound; and (“curing agent, and the catalyst” [Pg. 2])
an inorganic based filler, … and a conductive additive, wherein an amount of the conductive additive comprises 0.1 to 5 wt % of the epoxy molding compound (“Alumina mass fraction: 30 wt% to 60 wt%; further, carboxylated carbon nanotubes are added, and the mass fraction is from 1 wt% to 3 wt%, and the mixture is heated and stirred at 60 ° C to 80 ° C to prepare a slurry for use.” [Top of Pg. 3]. Also see table in Chinese document showing example ranges).
Zhang teaches the filler is up to 60wt% whereas the claim requires greater than 80 wt%.
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, conductive epoxy, Yeo discloses a similar epoxy (title) using an alumina filler (Abstract) and demonstrates that as filler content increases so does conductivity, e.g., see Fig. 5 and 6a, copied below.
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Yeo teaches that filler and conductive are positively related and that it is desirable to increase conductivity of epoxy for applications.
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure Zhang’s epoxy such that the conductivity of was increased by increasing the filler and thereby arrive at the claimed invention.
Yeo explicitly teaches the idea of increasing filler content to achieve desired properties at equation 42 (page 102), which shows that thermal conductivity of the composite (lamda_c) is positive correlated with the volume fraction of the filler particles (V). A person of skill in the art would have known that adding thermally conductive filler increases thermal conductivity, but changes other properties (e.g., processability).
While it is recognized that Yeo warns that "some important physical properties of composites such as processability and mechanical strength (durability) are significantly diminished by the use of fillers with high concentration." Yeo further states that "developing heat dissipating materials with low filler loading has been a development trend in field of materials sciences." However this does not constitute teaching away. Recognizing that adding more thermally conductive filler may make processing more difficult is not a teaching away2. The context of this quoted section of Yeo is directed to a general background section on thermally conductive materials and is would not be read by a person of skill in the art as specific commentary on their materials or a specific warning.
In reference to claim 2-4 and 18 the cited prior art discloses the invention as in claim 1.
The prior art teaches the same compound and must have the same properties.
In reference to claim 5, 7 the cited prior art discloses the invention as in claim 1.
Zhang teaches the claim (e.g., “carboxylated carbon nanotubes are added, and the mass fraction is from 1 wt% to 3 wt%” [Top of Pg. 3]; and “Carbon-based fillers have good thermal conductivity, and carbon-based fillers include carbon nanotubes, graphene, expanded graphite, and the like” [Bottom of Pg. 1])
In reference to claim 20 the cited prior art discloses the invention as in claim 1.
Zhang adds a silane couping agent (“Alumina microspheres of different sizes (5 μm, 20 μm, 70 μm) were surface-modified with a silane coupling agent having an epoxy group”)
In reference to claim 21 the cited prior art discloses the invention as in claim 1.
Zhang and Yeo use epoxy resins as claimed.
Claim 6, 8 and is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN109206853A) and Yeo (NPL 20173) in view of Grötzinger (US 20230265260 A1)
In reference to claim 6 the cited prior art discloses the invention as in claim 1.
Zhang teaches carbon nanostructures (e.g., “carboxylated carbon nanotubes are added, and the mass fraction is from 1 wt% to 3 wt%” [Top of Pg. 3]), but Zhang does not specifically require the nanostructure is 0.1-0.5% of the epoxy.
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, conductive compounds (see title), Grötzinger teaches a similar invention (see claims) and explains that “carbon nanotubes (CNTs) are known” (P0005) and that “a very small amount of carbon nanotubes by weight enables good electrical conductivity, but also brings about a distinct increase in viscosity and levelling properties and a certain darkening of the coating” (P0033)
Grötzinger thus teaches that “a dispersion comprising 10% by weight of carbon nanotubes is used, preferably in an amount in the range from 0.01% to 1% by weight, especially 0.01% 0.5% by weight, based on the overall epoxy resin” (P0037).
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure the epoxy to reduce the amount of carbon additive to 0.01% 0.5% as suggested by Grötzinger because “In this range, the desired electrical conductivity and non-excessive darkening are achieved” (P0038 of Grötzinger).
In reference to claim 8 the cited prior art discloses the invention as in claim 1.
Zhang teaches the “Carbon-based fillers have good thermal conductivity, and carbon-based fillers include carbon nanotubes, graphene, expanded graphite, and the like” (Bottom of Pg. 1), but does not specifically require carbon black.
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, conductive compounds (see title), Grötzinger teaches a similar invention (see claims) and teaches a similar epoxy that can comprise carbon black (P0087 and P0098) and that “the addition of conductive carbon black or graphite, which does achieve a reliable conductivity” (P0005)..
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure the epoxy to use carbon black as the carbon as an art recognized alternative suitable for the same use.
In reference to claim 17 the cited prior art discloses the invention as in claim 1.
Zhang teaches carbon nanostructures (e.g., “carboxylated carbon nanotubes are added, and the mass fraction is from 1 wt% to 3 wt%” [Top of Pg. 3]), but Zhang does not specifically teach the use of pure carbon nanostructures.
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, conductive compounds (see title), Grötzinger teaches a similar invention (see claims) and explains that “carbon nanotubes (CNTs) are known” (P0005). Grötzinger does not indicate the nanotubes are modified, thus they are presumed to be pure.
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure the epoxy to use pure carbon nanotubes as the carbon as an art recognized alternative suitable for the same use.
Claim 19 and is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN109206853A) and Yeo (NPL 20174) in view of HallGoulle (US 20010000259 A1).
In reference to claim 19 the cited prior art discloses the invention as in claim 1.
The prior art generally references the use of catalyst for epoxy curing, but does not describe an imidazole catalyst.
The relevant prior art of HallGoulle teaches that “The use of unsubstituted or substituted imidazole as a curing catalyst in the curing of epoxy resins is known. For example, H. Lee and K. Neville in "Handbook of Epoxy Resins", pages 10-17 (1967), report the property of epoxy resins cured with 2-ethyl-4-methylimidazole.” (Paragraph 2).
It would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure Zhang’s epoxy such that the catalyst was an imidazole because imidazole is an art recognized substitute suitable for the same intended use.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/ Examiner, Art Unit 1744
1 https://www.sciencedirect.com/science/article/pii/S0266353816313252
2 By way of analogy: when making chocolate chip cookies, the recognition that adding more chocolate chips will make the batter difficult to mix is not a teaching away from making cookies with extra chocolate.
3 https://www.sciencedirect.com/science/article/pii/S0266353816313252
4 https://www.sciencedirect.com/science/article/pii/S0266353816313252
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