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 .
This Office action is in response to the amendment filed 9/8/2026. Claim 1 is amended and claims 1-15 are currently pending in the application.
Election/Restrictions
Applicant's election with traverse of group I in the reply filed on 9/8/2026 is acknowledged.
The traversal is on the ground(s) that
Wada requires a finely divided silica reinforcing filler. Silica, however, is not among the materials permitted as thermally conductive filler under amended claim 1.
Claim 1 requires organopolysiloxane filler treating agent comprising both (i) at least one alkenyl group per molecule and (ii) at least one hydroxy group, at least one alkoxy group, or a mixture thereof per molecule. Vinyl-terminated polydiorganosiloxane in Wada, does not comprise an hydroxy or alkoxy functionality in that molecule.
This is not found persuasive because
See rejections under 35 U.S.C. 103 as set forth in paragraph 12a-c below wherein Wada is not used as prior art in light of the amendment. The silicone rubber composition, of Meguriya et al, comprises thermally conductive filler as in present claims and does not require the silica filler. Additionally, claims use the transitional phrase “comprising” which is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004), see MPEP 2111.03.
See rejections under 35 U.S.C. 103 as set forth in paragraph 12a-c, wherein Fukui teaches the use of vinyl-terminated polydiorganosiloxane comprising alkenyl as well as alkoxy functionality and having the presently claimed degree of polymerization.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/8/2026.
Claim Objections
Claims 1 and 9 are objected to because of the following informalities:
Claim 1 recites “wherein the metal is selected from a group consisting of bismuth metal, lead” (line 25) and should read “wherein the metal is selected from a group consisting of bismuth, lead” since use of metal to refer to bismuth is redundant.
Claim 9 recites “1,2-di[-(3,5-di-tert-butyl-4-hydroxyp-henyl)propionyl]hydrazine” and should read “1,2-di[-(3,5-di-tert-butyl-4-hydroxyphenyl)propionyl]hydrazine”.
Appropriate correction and/or clarification are required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites “only filler present in the composition is the thermally conductive filler” (line 22). There is no explicit teaching in the present application to exclude all other fillers from the composition.
Claims 2-9 are subsumed by this rejection because of the dependence either directly or indirectly on independent claim 1.
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.
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.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Meguriya et al (US 2011/0003089 A1) in view of Fukui (WO 2006/107004 A1).
Regarding claims 1-2 and 4, Meguriya et al teach a silicone rubber composition having a high thermal conductivity (abstract) which reads on thermally conductive silicone rubber composition in present claim 1. The curable silicone rubber composition comprises (A) 100 parts by weight of organopolysiloxane having at least two alkenyl groups bonded to the silicon atoms in one molecule (i.e., reads on polydiorganosiloxane having at least two alkenyl unsaturated groups per molecule in the present claim 1); (B) organohydrogenpolysiloxane having at least two hydrogen atoms bonded to the silicon atom in one molecule (i.e., reads on organosilicon compound having at least two Si-H groups per molecule in present claim 1); (C) catalytic amount of a catalyst (paragraphs 0032-0035). The alkenyl group containing organopolysiloxane of the component (A) may have a degree of polymerization preferably about 200 to 20,000 (paragraph 0042) which overlaps with degree of polymerization of polydiorganosiloxane having at least two alkenyl unsaturated groups in present claims 1 and 2. Examples of addition catalyst (C) include platinum metal catalysts such as platinum black and platinum(II) chloride (paragraph 0069) which reads on hydrosilylation catalyst comprising platinum group metal or compound in present claim 1. Silicon carbide is added to improve thermal conductivity of the silicone rubber and has an average particle size of 1 to 50 microns (paragraph 0080) which reads on the thermally conductive filler and its particle size in present claims 1 and 4. The silicon carbide may be incorporated in an amount of 50 to 800 parts by weight relative to 100 parts by weight of the composition (paragraph 0086) which overlaps with the wt% of thermally conductive filler in present claims 1 and 4. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Meguriya et al are silent with respect to organopolysiloxane filler treating agent.
However, Fukui in the same field of endeavor teach a thermally conductive silicone rubber composition comprising (A) an organopolysiloxane, (B) a thermally conductive filler (C) a specific organopolysiloxane and (D) a curing agent (abstract). Component (C) is used for obtaining a thermally conductive silicone composition that possesses high thermal conductivity and good handleability even if it contains a large amount of thermoconductive filler. This component may be selected from (i) and (ii) (paragraph 0022). When composition possesses curability, component (i) imparts good adhesion to various substrates during curing (paragraph 0023). The organopolysiloxane of constituent (i) may be exemplified by
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(paragraph 0025) which reads on organosiloxane filler treating agent having a degree of polymerization of about 4 to about 500 and comprising at least one alkenyl group and at least one alkoxy group in present claim 1). Component (C) can be used in the composition and its dispersibility can be improved when it treats the surface of component (B) (i.e., thermally conductive filler). It is used in amounts of 0.1 to 10 parts by mass per 100 parts by mass of component (B) (paragraph 0028) which overlaps with the amount of organopolysiloxane filler treating agent in present claim 1. Therefore, in light of the teachings in Fukui, it would have been obvious to one skilled in art prior to the filing of present application to include the organopolysiloxane of constituent (i), of Fukui, in overlapping amounts, in the silicone rubber composition, of Meguriya et al, for above mentioned advantages.
Regarding claims 3 and 5, given that the silicone rubber composition of present claims is obvious based on the disclosure in Meguriya et al combined with the teachings in Fukui, one skilled in art prior to the filing of present application would have a reasonable basis to expect the silicone rubber composition, of Meguriya et al in view of Fukui, when cured to exhibit the presently claimed properties (such as cured silicone based product with a thermal conductivity of at least 1.5 W/mK, having a tensile strength of at least 2 MPa and elongation of break of at least 80% as in present claim 3; and thermal conductivity of at least 2.0 W/mK, having a tensile strength of at least 2 MPa and elongation of break of at least 80% as in present claim 5).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Meguriya et al (US 2011/0003089 A1) in view of Fukui et al (WO 2006/107004 A1) and Kashiwagi (US 2007/0166470 A1).
The discussion with respect to Meguriya et al and Fukui in paragraph 12 above is incorporated here by reference.
Meguriya et al and Fukui are silent with respect to two part composition; and cure inhibitor.
However, regarding two part composition, Kashiwagi in the same field of endeavor teach curable silicone rubber composition comprising (A) an organopolysiloxane containing two or more aliphatic unsaturated bonds within each molecule, (C) an organohydrogenpolysiloxane, (D) platinum group metal-based catalyst (abstract). The organohydrogenpolysiloxane (C) functions as a crosslinking agent. A cured product is formed from a composition as a result of the addition reaction between the hydrogen atoms bonded to silicon atoms within the component (C), the aliphatic unsaturated bonds bonded to silicon atoms within the component (A). (paragraph 0032). The platinum group metal-based catalyst is added to promote addition curing reaction within the composition (paragraph 0039). In order to ensure curing does not proceed, the composition is usually stored as two separate liquids and these two liquids are mixed together and cured at the time of use (paragraph 0042). Therefore, in light of the teachings in Kashiwagi et al, it would have been obvious to one skilled in art prior to the filing of present application to prepare the curable silicone rubber composition, of Meguriya et al in view of Fukui, as a two-part composition, (i.e., comprising organohydrogenpolysiloxane (i.e., b) in part A and catalyst (i.e., e) in part B as in present claim 6; or alternatively include other components such as (a), (c) (d) in combination with either “e” (i.e., catalyst) in one part and components such as (a), (c), (d) in combination with organohydrogenpolysiloxane (i.e., b) in second part as in present claim 7, to prevent premature curing.
Regarding cure inhibitor, Kashiwagi teaches that silicone rubber composition is prepared by mixing each of the components uniformly together. A one-part type composition containing a small quantity of curing inhibitor such as acetylene alcohol is also possible (paragraph 0042). Therefore, in light of the teachings in Kashiwagi, it would have been obvious to one skilled in art prior to the filing of present application to prepare a curable silicone composition, of Meguriya et al in view of Fukui, as a one-part composition, and include a curing inhibitor to prevent premature polymerization.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Meguriya et al (US 2011/0003089 A1) in view of Fukui (WO 2006/107004 A1) and Irie (US 2010/0144933 A1).
The discussion with respect to Meguriya et al and Fukui in paragraph 12 above is incorporated here by reference.
Meguriya et al and Fukui are silent with respect to compression set additive.
However, Irie in the same field of endeavor teach an addition reaction curable silicone rubber composition that is suitable for forming a molded article which has low compression set and does not need secondary heat treatment after primary curing (paragraph 0005). The curable silicone rubber composition comprises metal deactivator (paragraph 0006). Metal deactivator is an indispensable component needed for imparting low compression set to a molded article obtained by curing the addition-reaction-curable silicone rubber composition (paragraph 0010). Examples of metal deactivators include N,N'-bis-[3-(3,5-di-t-butyl-4-hydroxyphenyl)propionyl]hydrazine (paragraph 0013) and 3-(N-salicyloyl)amino-1,2,4-triazole (paragraph 0015) both read on the compression set additive in present claim 9. Case law holds that selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Therefore, in light of the teachings in Irie, it would have been obvious to one skilled in art prior to the filing of present application to include the metal deactivator in the silicone rubber composition, of Meguriya et al in view of Fukui, for above mentioned advantages.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
