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 .
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.
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.
With regard to claim 9, the dependent claim recites a resin composition further comprising “ a liquid A” and “ a liquid B”, each with a set of components. 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 9 composition is interpreted as a composition comprising a liquid A including maleic anhydride-modified polybutadiene and a thermally conductive filler, and a liquid B including hydroxyl group-modified polybutadiene and a thermally conductive filler.
The liquid A and B while comprised in a single composition are not patentably discrete from one another in said single composition.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-4, and 10-11 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Nguyen (US-6238596-B1).
With regard to claim 1, Nguyen teaches a composition comprising (Table 4, Composition 16-17):
a malenized 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 antioxidant and the concentration range);
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).
This composition maps onto and satisfies all elements of the claimed resin composition. Nguyen teaches the composition is a polymer-resin-filler system (col 2, line 8)(which reads on the composition comprising resin).
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 claims 3-4, Nguyen teaches that typical antioxidants include a phenol-type (e.g., Irganox 1076, or Irganox 565) (col 4, lines 27-28) (which read on the phenol-based antioxidant).
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 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 2, 5-6, and 8 is rejected under 35 U.S.C. 103 as being unpatentable over Nguyen (US-6238596-B1) as applied to claims 1, 3-4, and 10-11 above.
The teachings of Nguyen is disclosed above.
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 (malenized 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 malenized liquid rubber and liquid B includes hydroxyl terminated liquid olefin rubber to a form the resin composition as recognized by Nguyen.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nguyen (US-6238596-B1) as applied to claim 2, 5-6, 8 above, and further in view of Kropp (WO-2020100102-A2).
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).
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, in which 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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nguyen (US-6238596-B1) and further 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 is 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
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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