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 .
Claim Rejections - 35 USC § 112
Claim 22 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 22 recites “the thermally conductive filler exhibits a mean form factor of greater than 3.” The claim is indefinite because it is not clear what “form factor” means or encompasses. The specification does not appear to describe what the term means.
Claim Rejections - 35 USC § 103
Claim(s) 18-21, 23-26, 28, and 30-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maesano (EP 1064318 B1) in view of Ming et al. (EP 3225672 A1).
Note: citations refer to the machine translation of EP ‘318 mailed 11/19/2025 unless otherwise indicated.
Regarding claims 18-19, 24-26, and 28:
Maesano discloses hot melt adhesives comprising polyamides [abstract; 0001-0004]. The polymers have low melt viscosities [0031]. The polymers comprise fatty acid dimers, optionally C2-C22 dicarboxylic acids, optionally chain stoppers, and diamines selected from a group including aliphatic and cycloaliphatic diamines [0036; 0038]. Example 1 discloses a polymer comprising the following components [0100; also see original EP ‘318 at 0100].
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These monomers provide at least one X unit and at least one Y unit within the scope of the present claims. As non-exhaustive examples, an X unit is PA 210 (ethylene diamine and sebacic acid) and a Y unit is PA pip36 (piperazine and Pripol 1013 diacid dimer, which is a C36 dimer [0093]). Although Maesano is silent with regard to the Tg of the units Y, the examiner submits that those units that are the same as presently claimed necessarily have a Tg as claimed because they are otherwise the same unit made from the same material.
Maesano teaches coating (encapsulating) electronic devices [0083-0091]. The reference further teaches the use of fillers [0056].
Maesano is silent with regard to the use of a thermally conductive filler as claimed.
Such material was known in the art to have utility. For example, Ming discloses thermally conductive hot melt adhesives for use with electronic components [abstract; 0001; 0005-0010]. The adhesive comprises polyamide and 1-99 wt.% thermally conductive filler, including carbon material [0011-0012; 0016]. The carbon material comprises hard carbon, soft carbon, carbon nanotubes, graphite, and graphene [0028]. Although Ming is silent with regard to the carbon atom content of the carbon material, the fact the reference refers to the material as “carbon” material and does not disclose the existence of other elements in the material would suggest to one of ordinary skill in the art to use high amounts of carbon in the carbon material. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use high amounts of carbon, including amounts within the claimed range, to provide a carbon material in accordance with Ming’s teaching, and thereby arrive at the claimed invention.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a carbon material as a thermally conductive filler as taught by Ming with the adhesive taught by Maesano to provide thermal conduction properties to the adhesive.
Maesano teaches the melt viscosity of Example 1 is 3.2 Pa·s measured at 190°C according to ASTM D3236 [0098; Table 1 on p10 of original EP ‘318]. Additionally, Ming teaches a melt viscosity of 1000 to 1*106 cPs (1 to 1000 Pa·s), which provides good processing properties [0016; 0021].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the melt viscosity of the composition, including over values within the presently claimed ranges, to provide the desired flow properties as needed for a given production process as known in the art.
Nothing in Maesano requires the presence of 20% or more of a component having a density of greater than 3. Additionally, the combination of Maesano and Ming does not suggest the required presence of 20% or more of a component having a density of greater than 3.
Regarding claims 20-21:
Ming teaches the carbon material has a median particle size of 1 nm (0.001 µm) to 100 µm [0033]. The reference teaches that too large of a particle size negatively affects the filling degree of the material and too small of a particle size would lead to poor processability [0033]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the particle size of the carbon material, including over values within the presently claimed range, to provide the desired filling degree and processability as desired for a given end use.
Regarding claim 23:
Nothing in Maesano requires the presence of 10% or more of a component having a density of greater than 3. Additionally, the combination of Maesano and Ming does not suggest the required presence of 10% or more of a component having a density of greater than 3.
Regarding claim 30:
Maesano and Ming are silent with regard to a surface resistivity of the adhesive.
Ming teaches the use of 1-99% of the thermally conductive filler to provide the desired degree of thermal conductivity [0036-0037]. This range overlaps with the range used in the present invention (see, e.g., the disclosure of 3-35% by weight of thermally conductive filler in the present specification at page 15). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amount of thermally conductive filler to adjust the thermal conductivity of the adhesive to provide the desired degree of conductivity for a given end use of the adhesive, and in so doing provide compositions that are the same as those used in the present invention, which would have the same surface resistivity as presently claimed.
Regarding claim 31:
Ming teaches the addition of the thermally conductive filler can be adjusted to provide a thermal conductivity in the range of 1 to 10,000 W/mK [0036-0037]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amount of thermally conductive filler to adjust the thermal conductivity of the adhesive, including values within the claimed range, to provide the desired degree of conductivity for a given end use of the adhesive.
Regarding claim 32:
Maesano teaches antioxidants, UV stabilizers, etc. [0056].
Regarding claim 33:
Given that Maesano in view of Ming discloses a composition that is otherwise the same as presently claimed, the examiner submits it is intrinsically capable of being injected as presently claimed.
Regarding claim 34:
Maesano teaches coating (encapsulating) electronic devices [0083-0091].
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maesano (EP 1064318 B1) in view of Ming et al. (EP 3225672 A1) as applied above, and further in view of Cai et al. (US 2019/0085219).
Regarding claim 22:
The examiner notes the present claim is indefinite for the reasons described in the rejection under 35 USC 112. The indefinite term “form factor” may relate to the aspect ratio of the filler.
Maesano in view of Ming discloses an adhesive composition as previously explained.
The references are silent with regard to an aspect ratio of the filler.
The aspect ratio of filler was known to impart various effects. For example, Cai discloses electrically conductive hot melt adhesive compositions [abstract; 0001]. The compositions comprise a binding agent, e.g., polyamide, and conductive fillers in the form of flakes, platelets, etc. [0016-0018]. The reference teaches that fillers can settle when the compositions are in a molten state, but that by using a filler with a high aspect ratio, no appreciable settling occurs [008-0009; 0021]. The aspect ratio is preferably 10:1 or more [0030; 0054].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a filler having an aspect ratio of greater than 10:1 to prevent settling of the thermally conductive filler taught by Ming.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maesano (EP 1064318 B1) in view of Ming et al. (EP 3225672 A1) as applied above, and further in view of Fujiwara (US 2016/0324031).
Regarding claim 29:
Maesano in view of Ming discloses an adhesive composition as previously explained. Ming discloses the use of graphite [0028].
The references are silent with regard to expanded graphite.
Such material was known in the art to have utility as a thermally conductive filler. For example, Fujiwara discloses a heat sink for use with electronics [abstract; 0001-0002]. The reference discloses an adhesive comprising a thermally conductive filler [0150]. Such filler comprises graphite, including expanded graphite [0165].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use known thermally conductive graphite, including expanded graphite, to provide thermal conductivity properties as known in the art.
Ming teaches the use of 1-99% of the thermally conductive filler to provide the desired degree of thermal conductivity [0036-0037]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amount of thermally conductive filler, including over amounts presently claimed, to adjust the thermal conductivity of the adhesive to provide the desired degree of conductivity for a given end use of the adhesive.
Response to Arguments
Applicant's arguments filed 2/12/2026 have been fully considered but they are not persuasive.
Applicant’s amendments to claims 18 and 22-27 and explanations thereof on pages 7-8 of Remarks overcome the previous rejections under 35 USC 112(b), except that one rejection of claim 22 is maintained.
Regarding claim 22, Applicant argues the term “form factor” would be readily understood by one skilled in the art. Applicant argues “The specification describes an objective and reproducible methodology for determining this parameter, identifies commercially available and widely used measurement instruments, and sets forth a clear numerical threshold.” (p7). Applicant further notes particular measuring devices and the ISO 9276-6 standard, which are mentioned in the specification.
However, Applicant fails to point to a particular definition or description in the specification (or in supplemental material, such as the ISO 9276-6 standard) of the phrase “form factor” or the “reproducible methodology for determining this parameter”. The term does not appear to be a standard term based on the examiner’s searching of the prior art. The devices identified by Applicant appear to be scanning electron microscopes, which does not indicate what must be measured for a “form factor.” The examiner further notes claim 22 was rejected under 35 USC 103 over Maesano and Ming, and further in view of Cai, wherein the examiner stated “The indefinite term “form factor” may relate to the aspect ratio of the filler” and cited Cai for demonstrating high aspect ratio fillers were known in the art. In response, Applicant fails to acknowledge or discuss whether an aspect ratio disclosed by Cai would be encompassed by “form factor,” but rather argues Cai cannot cure alleged deficiencies in the other references (Remarks, p10). Therefore, Applicant declines to describe the term and fails to demonstrate one skilled in the art would understand the metes and bounds of the claim, and so the claim remains rejected for being indefinite.
Applicant argues Ming “expresses a preference for isocyanate polyurethane prepolymers as the hot-melt adhesive” and “provides no guidance…regarding the selection of thermally conductive fillers” (p9). Applicant points to Ming’s examples and notes two examples use polyamide as the hot-melt adhesive, but these examples use aluminum oxide and titanium nitride (p9).
In response, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the present instance, Maesano teaches hot-melt adhesives useful for coating (encapsulating) electronic devices [0083-0091] and further teaches the use of fillers [0056]. While Maesano is silent with regard to the use of a thermally conductive filler as claimed, such filler was known in the art to have utility as demonstrated by Ming, which discloses thermally conductive hot melt adhesives for use with electronic components, wherein the adhesive comprises polyamide and a thermally conductive filler, including carbon material [abstract; 0001; 0005-0012; 0016]. In view of these teachings, the examiner concludes it would have been obvious to one of ordinary skill in the art to use a carbon material as a thermally conductive filler as taught by Ming with the adhesive taught by Maesano to provide thermal conduction properties to the adhesive. Although Applicant argues Ming does not explicitly teach the use of a polyamide hot-melt adhesive with carbon filler, the reference nevertheless makes clear that adhesives comprising polyamide were within the scope of its invention as well as carbon filler. Nowhere does Ming suggest an incompatibility between these materials, and so they would be expected to provide the expected combination of effects (e.g., the carbon filler would act as a thermally conductive material that improves the thermal conductivity of a polyamide hot-melt adhesive). Therefore, the examiner maintains the rejections of record.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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