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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on September 10, 2026 is acknowledged.
Claims 8-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 10, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on April 24, 2026 and April 09, 2024 have been considered by the examiner.
Claim Rejections - 35 USC § 112
Claim 6 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.
In claim 6, there is no express antecedent basis for the thermally conductive filler (D) having “an average particle diameter of 2 µm or more”.
Claim Rejections - 35 USC § 102
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 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.
Claims 1 and 3-6 are rejected under 35 U.S.C. 102(a1) as being anticipated by JP 2021091783 (Kiguchi) per IDS filed April 09, 2024.
As to claim 1, Kiguchi discloses a resin composition comprising:
a polyimide siloxane containing a siloxane unit (meets Applicants’ polyimide resin (A) containing a siloxane unit);
an epoxy resin (meets Applicants’ epoxy resin (B));
a siloxane diamine curing agent (meets Applicants’ siloxane diamine (C)); and
a thermally conductive filler (meets Applicants’ thermally conductive filler (D)) (e.g., abstract, [0008-0009], [0019], [0028-0033], [0041-0043], [0052-0055], examples, Tables 1 and 2).
As to claim 3, Kiguchi expressly exemplifies polyimide (1) [0114] obtained solely from 100 mol% siloxane-based dianhydride X22-168A (i.e., an example of Applicants’ acid anhydride of formula (1) per specification [0016]) and 100 mol% of siloxane-based diamine X-22-161A (i.e., an example of Applicants’ diamine of formula (2) per specification [0021]).
As to claim 4, Kiguchi expressly exemplifies siloxane-based diamine X-22-161A curing agent (i.e., an example of Applicants’ diamine of formula (3) per specification [0037]).
As to claims 5 and 6, Kiguchi expressly discloses (Tables 1 and 2) the same thermally conductive fillers defined in the present specification [0043] such as AA3 alumina particles, and as such, it is reasonably believed that they would inherently meet the presently claimed features.
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.
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021091783 (Kiguchi) described hereinabove.
As to claim 2, Kiguchi expressly discloses that the shape of the filler is not particularly limited [0033] and, as such, implicitly suggests that any filler shape (inclusive of the presently claimed spherical shape) can be satisfactorily used. Indeed, it is within the purview of Kiguchi’s inventive disclosure [0008], and obvious to one having ordinary skill in the art, to use a filler (A) having an aspect ratio of 1.0 (i.e., spherical) in accordance with the desired fluidity, thermal conductivity anisotropy and filling properties [0021]. Thus, no patentability can be seen in the presently claimed subject matter.
As to claim 7, Kiguchi discloses that the content of curing agent is preferably 0.1 to 35 pbw based on 100 pbw of the epoxy resin [0055]. Thus, it would have been obvious to one having ordinary skill in the art to employ Kikuchi’s siloxane diamine curing agent in amounts as presently claimed in accordance with the ultimate properties desired.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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