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 .
The rejection of claims 1, 3-4, and 10-11 as anticipated under 35 U.S.C. 102(a)(1) and (a)(2) over Nguyen (US-6238596-B1) is withdrawn in view of arguments/amendments.
The rejection of claims 2, 5-6, and 8 as unpatentable under 35 U.S.C. 103 over Nguyen (US-6238596-B1) is maintained in view of arguments/amendments.
The rejection of claim 9 as unpatentable under 35 U.S.C. 103 over Nguyen (US-6238596-B1) in view of Kropp (WO-2020100102-A2) is maintained in view of arguments/amendments.
The rejection of claim 7 as unpatentable under 35 U.S.C. 103 over Nguyen (US-6238596-B1) in view of Kropp (WO-2020100102-A2) and further Okada (JP-2006241411-A) is maintained in view of arguments/amendments.
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 20 March 2024, 04 November 2024, 31 October 2025, and 30 December 2025. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
Response to Arguments & Amendments
Applicant's arguments filed 10 September 2026 have been fully considered but they are not persuasive.
The Declaration under 37 CFR 1.132 filed 10 September 2026 is insufficient to overcome the rejection of claims 1-2 and 5-11 based upon a specific reference applied upon the 35 U.S.C. presented below as set forth in the last Office action because:
Applicant has submitted a Declaration under 37 CFR 1.132 (see pages 1–4) demonstrating unexpected results achieved by the instant specification. Applicant also argues Nguyen fails to provide a basis or teaching regarding the specific type and content of the antioxidant required to achieve the post-aging brittleness characteristics (see Applicant’s Arguments, pages 6–7).
The examples in the specification are of no probative value in determining patentability of claims since they do not involve a comparison of applicant’s invention with the closest applied prior art. See In re De Blawe, 222 USPQ 191 (Fed. Cir. 1984) and In re Fenn, 208 USPQ 470 )CCPA 1981). Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 716.02(b) III and 716.02(e). Thus, the comparative examples doesn't comprise any antioxidant which is not compared with the close prior art of record, Nguyen. Additionally, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227.
In response, Nguyen (US-6238596-B1) teaches a composition comprising (Table 4, Composition 16-17): a melanized polybutadiene, RICON 180 MA8, (which reads on the maleic anhydride-modified polybutadiene); a hydroxyl terminated polybutadiene, PolyBd R45, (which reads on the hydroxyl group-modified polybutadiene); an antioxidants, Irganox 1076 and 565 (which reads on the phenol antioxidant); and boron nitride (which reads on the thermally conductive filler) at a thermal conductivity greater than 1.0 W/mK (which reads on the thermal conductance). Nguyen further teaches that the antioxidants—such as Irganox 1076 and/or Irganox 565—can be at concentrations ranging from 0.01% to approximately 1 wt. % (col 4, lines 27-29)., which overlaps the claimed antioxidant range of 0.5% or more.
This overlaps on the claimed components of a resin composition comprising: a maleic anhydride-modified polybutadiene; a hydroxyl group-modified polybutadiene; a thermally conductive filler; and an antioxidant, wherein the content of the antioxidant is 0.5 wt.% or more of a phenol-based antioxidant, and wherein the composition exhibits a thermal conductivity of greater than 1.0 W/m·K.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to modify the concentration of Nguyen’s antioxidant. Specifically, Nguyen teaches an antioxidant range of 0.01 to 1 wt.% (col 4, lines 27-29). A range of 0.01 to 1 wt.% overlaps with the claimed range of 0.5 wt.% or more. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Claim Interpretation
With regard to claim 8, the dependent claim recites a resin composition further comprising two liquid-type resin. While Applicant recites two sub-compositions as two parts constituting the full composition, for purposes of claim interpretation the two parts are extended little patentable weight because the entirety of the composition ultimately comprises both parts as one, single composition.
In other words, claim 8 composition is interpreted as a resin composition comprising a two liquid-type resin.
The two liquid-type resin while comprised in a single composition are not patentably discrete from one another in said single composition.
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 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.
Claim 1-2, 5-6, 8, 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen (US-6238596-B1).
With regard to claim 1, Nguyen (US-6238596-B1) teaches a composition comprising (Table 4, Composition 16-17): a melanized polybutadiene, RICON 180 MA8, (which reads on the maleic anhydride-modified polybutadiene); a hydroxyl terminated polybutadiene, PolyBd R45, (which reads on the hydroxyl group-modified polybutadiene); an antioxidants, Irganox 1076 and 565 (which reads on the phenol antioxidant); and boron nitride (which reads on the thermally conductive filler) at a thermal conductivity greater than 1.0 W/mK (which reads on the thermal conductance). Nguyen further teaches that the antioxidants—such as Irganox 1076 and/or Irganox 565—can be at concentrations ranging from 0.01% to approximately 1 wt. %, which overlaps the claimed antioxidant range of 0.5% or more (col 4, lines 27-29).
This overlaps on the claimed components of a resin composition comprising: a maleic anhydride-modified polybutadiene; a hydroxyl group-modified polybutadiene; a thermally conductive filler; and an antioxidant, wherein the content of the antioxidant is 0.5 wt.% or more of a phenol-based antioxidant, and wherein the composition exhibits a thermal conductivity of greater than 1.0 W/m·K.
With regard to the antioxidant concentration, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the concentration of Nguyen’s antioxidant. Specifically, Nguyen would guide one having ordinary skill in the art to employ the antioxidant within a concentration that inhibit the oxidation and thermal degradation of the cured rubber gel (col 4, lines 27-29). Therefore, a person of ordinary skill in the art would have a reasonable expectation of success in achieving the claimed invention, as Nguyen can be provided with phenolic antioxidants to successfully achieve the claimed invention.
Please note, the intended use of the above claimed composition (i.e. for a heat-dissipating gap filler..) does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition.
In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting (see, e.g., MPEP 2112).
With regard to claim 2, Nguyen teaches that dispersing a thermally conductive filler within a liquid rubber mixture achieves advantageously high thermal conductivity (col 3, lines 44-46). Specifically, Nguyen suggests the optimal use of a combination of boron nitride at least 20 wt. % and silver at least 60 wt.% (col 3, lines 51-53), while further teaching a total filler loading of up to 95 wt.% relative to the combined weight of the filler and rubber (col 4, lines 48-49). Collectively, the combined boron nitride and silver yield a thermally conductive filler concentration of at least 80 wt.%. This range directly overlaps on the claimed limitation of 70 wt. % or more, even before accounting for Nguyen’s disclosure of filler up to 95 wt.% in the rubber composition.
While Nguyen does not explicitly teach the filler concentration with the degree of specificity to be anticipatory, the claimed concentration would have been obvious. It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the resin composition to contain 70 wt.% or greater of the filler. For doing so, a person having ordinary skill in the art would be motivated to optimize these known parameters, with a reasonable expectation of success, to achieve a composition exhibiting enhanced thermal conductivity as established in Nguyen.
With regard to claims 5-6, Nguyen teaches that typical cure accelerators include tertiary amines, such as didecylanethylamine (col 4, lines 30-31) (which read on the amine-based curing accelerator limitation).
With regard to claim 8, Nguyen teaches that a crosslinked elastomer network is formed by the reaction of two functional liquid rubbers (melanized liquid rubber and hydroxyl terminated liquid olefin rubber) at temperatures between 50 to 150° C. (col 3, lines 32-34).
Nguyen does not explicitly teach the liquids separately.
However, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to formulate the resin composition with two liquid-type resins, in which liquid A includes maleic anhydride-modified polybutadiene and liquid B includes hydroxy group-modified polybutadiene, in order to achieve the claimed invention. A person of ordinary skill in the art prior to the effective filing date would have recognized the utility of a two-part composition, as Nguyen can be provided as a two liquid composition, in which liquid A includes melanized liquid rubber and liquid B includes hydroxyl terminated liquid olefin rubber to a form the resin composition as recognized by Nguyen.
With regard to claim 10, Nguyen teaches a new material (heat-dissipating gap filler) can be provided as a dispensable liquid paste to be applied and cured as desired (col 2, lines 32-34) (which read on the curing to obtain a heat-dissipating gap filler limitation).
With regard to claim 11, Nguyen teaches that the provided thermal interface material is particularly suitable for use in electronic devices (col 1, line 34-36). The term “article” is defined as an electronic device [located in instant specification page 33, para [0057]], thereby reading on the claim limitation of the material to be incorporated within an article.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nguyen (US-6238596-B1) as applied to claims 1-2, 5-6, 8, 10-11 above, and further in view of Kropp (WO-2020100102-A2).
The teachings of Nguyen is disclosed above.
With regard to claim 9, Nguyen suggest that various modifications—such as combining multiple rubber types or incorporating multiple fillers—can be made without departing from the scope of the invention (col 7, lines 9-13).
However, Nguyen does not explicitly teach that the two liquid rubbers each comprise a thermal conductive filler.
In the same field of endeavor, Kropp teaches a curable composition comprising a two-part composition, in which a first part includes a polyol (e.g., hydroxyl terminated polybutadiene, KRASOL LH 2000, Table 1) and a second part includes a functional butadiene (e.g. maleated liquid rubber, RICON 130 MA13, Table 1); and optional components (e.g. fillers, crosslinkers, etc.) can be included in one or both of the first and second parts (page 12, lines 18-25). This overlaps the claimed components of the instant application and Nguyen’s composition.
Furthermore, Kropp teaches these additives, if present, should be added in an amount effective for their intended purpose. The curable compositions can exhibit thermal, mechanical, and rheological properties that render the composition useful as thermally conductive gap fillers, providing an optimal blend of tensile strength, elongation at break, overlap shear strength, and robust reworkability (page 13, lines 19-28). Lastly, Kropp teaches that the two components of a two-part composition may be mixed prior to being applied to the substrates to be bonded. After mixing, the two-part composition may reach a desired handling strength and ultimately achieve a desired final strength (page 16, lines 17-26). This method corresponds to the two-part mixing step [located in instant specification page 13, para [0025]], thereby reading on the claim limitation of liquids are not mixed in the two liquid type resin composition.
With regard to the liquid-filler configuration, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to formulate Nguyen’s resin composition comprising two liquid-type resins. Specifically, liquid A includes maleic anhydride-modified polybutadiene and liquid B includes hydroxy group-modified polybutadiene, with thermally conductive filler distributed in both liquid A and B. A person of ordinary skill in the art would have a reasonable expectation of success in achieving the claimed invention, as Kropp’s curable composition can be provided as a two part/liquid composition, featuring a polyol component (hydroxyl-polybutadiene) and a functional butadiene component (maleic-polybutadiene) and other components (e.g., fillers) distributed throughout both parts to successfully yield the recognized effective properties. Therefore, given the overlapping components disclosed in a single composition, a person of ordinary skill in the art would expect the modification to be obvious.
With regard to the mixture of liquid A and B, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to formulate Nguyen’s resin composition comprising two liquid-type resins. Specifically, in which the two liquid types are separate until application as established in Kropp. A person of ordinary skill in the art would have a reasonable expectation of success in achieving the claimed invention, as Kropp’s curable composition can be provided as a two part/liquid composition, featuring a polyol component (hydroxyl-polybutadiene) and a functional butadiene component (maleic-polybutadiene) and other components (e.g., fillers) distributed throughout both parts to successfully yield the recognized effective properties. Kropp would also guide one having ordinary skill in the art to employ the two components to be mixed prior to being applied to the substrate to yield desired handling strength (page 16, lines 17-26). Therefore, given the overlapping components disclosed in a single composition, a person of ordinary skill in the art would expect the modification to be obvious.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nguyen (US-6238596-B1) in view of Kropp (WO-2020100102-A2) as applied to claim 9 above, and further in view of Okada (JP-2006241411-A).
The teachings of Nguyen and Kropp are disclosed above.
With regard to claim 7, Nguyen does not explicitly teach the pKa of the amine-based curing accelerator.
In the same field of endeavor, Okada teaches an epoxy resin composition comprising (A) an epoxy resin, (B) a curing agent (e.g. an acid anhydride, para [0016]), (C) a basic accelerator having a pKa of 7 or more, and (D) a mixture of a metal hydroxide and inorganic filers (i.e., thermally conductive fillers, para [0007]).
Specifically, Okada teaches that suitable curing accelerators (e.g., amines, tertiary amines, and imidazole (paras. [0020 and 0023]) that exhibit a pKa of 7 or greater, and more preferably 11 or more (para [0019]) (which reads on the claimed pKa range). Okada further establishes a critical functional relationship: when the basicity pKa is 7 or higher, the cured product exhibits high electrical reliability. Conversely, a pKa of less than 7 shifts the base dissociation equilibrium, reducing the accelerator’s effectiveness (para [0019]).
While both references collectively teach similar compositions (i.e., curing accelerators, epoxy, acid anhydride, fillers, resin compositions, etc.), Okada highlights the critical importance of selecting the proper pKa curing accelerator.
With regard to the pKa, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify Nguyen’s composition to comprise a curing accelerator with a pKa greater than 8 to achieve the claimed invention. For doing so, a person having ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success, to achieve a composition that will exhibit high electrical reliability while maintaining composition equilibrium as established in Okada.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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, Angela Brown-Pettigrew can be reached at 571-272-2817. 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.
/A.A.W./Examiner, Art Unit 1761
/TANISHA DIGGS/Primary Examiner, Art Unit 1761 September 29, 2026
