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 .
DETAILED ACTION
Claim Objections
Claim 17 is objected to because of the following informalities: “chosen from... and ...” is not a proper Markush group or conventional alternative limitation. Appropriate correction is required.
Claim 25 is objected to for “or else” should read “or”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 24 is rejected as being vague and indefinite because the following polyamide units are not clearly defined in either claim or specification as originally filed: “PA pip10, PA pip36, PA pip44, PA POP40036, PA POP40044, PA POP40010, PA POP4006, PA POP200036, PA POP200044, PA POP200010, PA POP20006, PA3636, PA3644, PA 4436, PA 4444”.
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.
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 17-32 are rejected under 35 U.S.C. 103 as being unpatentable over Kopannia et al (US 2009/0291288, of record, ‘228 hereafter) in view of Saga et al (US 2012/0157600, ‘600 hereafter).
Regarding claims 17-18, 24-26 and 29-31, ‘288 discloses a hot-melt adhesive composition ([0009]-[0010]) comprising a semicrystalline aliphatic copolyamide ([0021]-[0031]) having a unit such as PA610 reading upon unit X as in the present claim 17 and 24 (dodecanedioic acid with diaminohexane as in Example 1, [0071]), and a unit formed from dodecanedioic acid with piperazine and Jeffamine reading upon unit Y as in present claims 17, 25 and 26; wherein the copolyamide has melt viscosity being 17.2 Pa.s at 200°C (Example1, [0071]). ‘288 also discloses that the composition may further include a conductive filler such as metal, metal oxide and carbon-based powder ([0058]) to adjust its conductive properties as needed, but does not specifically set forth that the composition contains a carbon-based filler having 60% to 100% carbon atom relative to all atoms in the filler and an electrically insulating filler of metal oxides or nitrides; however, in the same field of endeavor, ‘600 discloses a polyamide composition comprising a semicrystalline aliphatic copolyamide ([0014]-[0015]), a conductive filler being metal oxide or nitride powder, carbon-based filler such as graphite and metal powder having preferred particle size 20 to 80 microns ([0034] with a total amount satisfying present claim 17 (such as in Example 1, graphite and Talc, Table 1), in order to render a polyamide composition having desired thermal conductivity to dissipate heat generated from an electronic device ([0003]-[0007]). In light of these teachings, one of ordinary skill in the art would have been motivated to use the filler as taught by ‘600, to modify the polyamide composition of ‘288, in order to render a composition having desired thermal or electrical conductivity. ‘288 also discloses the metal oxide or/and graphite content can be in a preferred amount of 20 to 80 wt% ([0038]), satisfying present claims 29 to 31.
Regarding claims 19-20, modified ‘288 teaches all the limitations of claim 17, but the cited prior art does not expressly set forth that the conductive fillers have BET surface area as presently claimed. However, ‘600 discloses that the conductive fillers have preferred average particle size being less than 300 microns, which falls within the range of the filler used in the present application art, and the BET surface area directly depends upon the particle size of the filler which is well-known in the art, thus it is reasonable to expect that the BET surface area of the conductive fillers as taught by ‘600 satisfying presently claimed range as in claims 19 and 20, in absence of an objective showing to the contrary. Case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II).
Regarding claims 21-23 and 28, modified ‘288 teaches all the limitations of claim 17, but the cited prior art does not expressly set forth that the composition has melt viscosity, surface resistivity, melting point and injection pressure as presently claimed; however, as set forth above, the cited prior art fairly suggest a hot-melt adhesive composition being substantially identical to the hot-melt adhesive composition as presently claimed, thus it is reasonable to expect that the prior art hot-melt adhesive composition would have possessed the same properties including melt viscosity, surface resistivity, melting point and injection pressure as presently claimed, in absence of an objective showing to the contrary. Case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II).
Regarding claims 27 and 32, modified ‘288 teaches all the limitations of claim 17, the cited prior art also teaches that the composition may further include an additive such as tackifying agent, antioxidant, inorganic filler or reinforcing agent ([0052] of ‘288); and an electronic device encapsulated in the composition ([0056] of ‘600).
Relevant Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Ming et al (US 2017/0288278) and I’Abee et al (US 2012/0228542). Ming et al discloses a polymer composition comprising a thermoplastic polymer including a polyamide, a thermally and electrically conductive filler being graphite, and a thermally conductive but electrically insulative filler being metal oxide or nitride([0005]-[0016], [0030]-[0041], [0048], Table 1, Embodiment 2 and 7). I’Abee et al discloses a polymer composition comprising a thermoplastic polymer including a polyamide, a thermally and electrically conductive filler being Graphite, and a thermally conductive but electrically insulative filler being metal oxide or nitride ([0003]-[0014], [0031], [0075], Example 3, Table 3).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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