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 .
Preliminary amendment filed 5/17/2024 is made of record. Claims 4, 6, 8 and 10 are amended; and claims 1-10 are currently pending in the application.
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.
Claims 4 and 6 are 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 4 recites “RaR”SiO-[R2SiO]m-OR”2Ra” (line 3) and has a peroxide grouping “[R2SiO]m-OR”. It is not clear how a polysiloxane can comprise a peroxide grouping and is stable in a composition. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application. However, for examination purposes, the polyorganosiloxane is interpreted to have the following chemical structure: “RaR”SiO-[R2SiO]m-SiR”2Ra”.
Claim 6 recites “conductive filler is present at a concentration of greater than 70 and at the same time 74 volume percent” (line 11). It is not clear how the conductive filler can comprise greater than 70 (which can include 71 volume percent) and 74 volume percent at the same time. Hence, metes and bounds of present claim cannot be ascertained by one of ordinary skill in art. For examination purposes, it is interpreted as greater than 70 to 74 volume percent.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-4, 6-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al (JP 2009-221310 A).
It is noted that JP 2009-221310 A is in Japanese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Regarding claims 1 and 10, Kobayashi et al teach heat-conductive silicone composition containing (A) a polyorganosiloxane and (B) a heat-conductive filler (abstract) which reads on filler particles in present claim 1. If the blending ratio of B1 as the thermally conductive filler exceeds 80 wt% when the components (A) and (B) are kneaded, the components (B) are not dispersed (paragraph 0035). Hence, the dispersion of filler particles in the matrix comprising the polyorganosiloxane is implicit (i.e., reads on filler particles dispersed in a matrix material in present claim 1). Examples of component A include polyorganosiloxane represented by formula:
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(paragraph 0020) wherein X = hydrogen (paragraph 0013-0014) which reads on linear polyorganosiloxane with an average of 2 carboxylic acid groups per molecule in present claim 1. An oily polyorganosiloxane of a component (C) can be added. By blending the component (C), the thermally conductive filler (component (B)) can be more easily filled at a higher ratio (paragraph 0036). Ingredient (C) is not limited as long as it has a viscosity of 0.01 to 10 Pa.s at 250C and is a silicone oil (paragraph 0037) which reads on second polyorganosiloxane is a liquid at 250C. Examples of component (C) include
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(paragraph 0041) which reads on the second polyorganosiloxane that is free of carboxylic acid in present claim 1. The amount of ingredient (B) is 100 to 60,00 parts by weight based on 100 parts by weight of ingredient (A) (paragraph 0034). The amount of component (C) is 10 to 1000 parts by weight based on 100 parts by weight of component (A) (paragraph 0042). It is noted that composition of Kobayashi et al are free of aliphatic diols, silicone polyethers and Si-OH terminal polysiloxanes (i.e., reads on present claim 1 and present claim 10).
Kobayashi et al fail to disclose in a single embodiment as in present claims, a composition comprising presently claimed amounts of first polyorganosiloxane, second polyorganosiloxane, and filler.
However, component A (i.e., first polyorganosilxane), component B (i.e., filler) and component C (i.e., second polyorganosiloxane) are present in amounts of 100 parts by weight, 100 to 60,000 parts by weight and 10 to 1000 parts by weight (for a ratio of 1: 1 to 600: 0.1 to 10) which overlaps with the weight percent of first polyorganosiloxane and second polyorganosiloxane in present claim 1. Additionally, weight percent of the filler is so broad, one skilled in the art prior to the filing of present application would have a reasonable basis for the weight percent of the filler, in Kobayahsi et al, to overlap with the volume percent of filler (such as in a range of 15 to less than 78 volume percent as in present claim 1). It is noted that D = M/V (Density = mass/volume) and density is an experimental value. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in Kobayashi et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to have selected the overlapping range for the amount of first polyorganosiloxane, second polyorganosiloxane and filler, absent evidence to the contrary.
Regarding claims 2 and 3, component A in Kobayashi et al is represented by chemical formula:
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(paragraph 0020) wherein X = hydrogen (paragraph 0013-0014), R3 is an alkyl group such as methyl, (paragraph 0022 and reads on R is a hydrocarbyl group having 1 carbon atom in present claim 2) Z is a substituted divalent hydrocarbon group having 1 to 20 carbon atoms (paragraph 0023 and reads on R’ is a divalent group having 1 to 12 carbon atoms in the present claim 2 and -[CH2]9- in present claim 3) and c is an integer of 10 to 1000 (paragraph 0024) which overlaps with “n” is an integer of 10 to 150 in present claim 2, and 10 to 130 in present claim 3.
Regarding claim 4, Kobayashi et al teach that examples of component (C) include
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wherein p is an integer of 10 to 800 (paragraph 0041) which reads on second polyorganosiloxane in present claim 4, wherein Ra and R” are an hydrocarbyl group having 1 carbon atom and “m” is an integer in the range of 40 to 800.
Regarding claims 6 and 8, Kobayahsi et al teach that component A (i.e., first polyorganosilxane), component B (i.e., filler) and component C (i.e., second polyorganosiloxane) are present in amounts of 100 parts by weight, 100 to 60,000 parts by weight and 10 to 1000 parts by weight. Examples of thermally conductive fillers include zluminum, copper, silver, nickel and iron (paragraph 0029) which reads on the thermally conductive filler in present claim 6 and electrically conductive filler in present claim 8. Additionally, weight percent of the filler is so broad, one skilled in the art prior to the filing of present application would have a reasonable basis for the weight percent of the filler, in Kobayahsi et al, to overlap with the volume percent of filler in present claims. It is noted that D = M/V (Density = mass/volume) and density is an experimental value. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in Kobayashi et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to have selected the overlapping range for the amount of first polyorganosiloxane and filler (i.e., thermally conductive filler in present claim 6 and electrically conductive filler in present claim 8), absent evidence to the contrary.
Regarding claim 7, Kobayashi et al teach that surface treatment agent (D) may be added to the composition (paragraph 0043). Examples of component (D) include alkoxysilanes such as C6H13Si(OCH3)3 (paragraph 0050) which reads on trialkoxy functional silane in present claim 7.
Claims 5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al (JP 2009-221310 A) in view of Iwata (US 2017/0101570 A1).
The discussion with respect to Kobayashi et al in paragraph 9 above is incorporated here by reference. Additionally, Kobayashi et al teach that component (C) is represented by formula:
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wherein R6 is selected from vinyl (paragraphs 0038-0039) which reads on second polyorganosiloxane comprises at least two vinyl groups per molecule in present claim 8.
Kobayashi et al are silent with respect to third polysiloxane comprising two or more silyl hydride groups; and platinum-based hydrosilylation catalyst.
However, Iwata in the same field of endeavor teach heat conductive silicone grease composition containing as indispensable components (A) an organopolysiloxane containing at least one alkenyl group per molecule, (B) an organohydrogenpolysiloxane which contains at least two silicon bonded hydrogen (i.e., reads on third polysiloxane comprising two or more silyl hydride groups in present claim 5), (C) platinum complex curing catalyst (i.e., reads on platinum based hydrosilylation catalyst in present claim 9) and (D) a heat conductive filler (abstract). The composition has high shape retention properties, is low in hardness and can be stored at room temperature (abstract). Therefore, in light of the teachings in Iwata in the same field of endeavor, it would have been obvious to one skilled in art prior to the filing of present application, to include an organohydrogenpolysiloxane which contains at least two silicon bonded hydrogen and a platinum-based curing catalyst, of Iwata, to the composition, of Kobayashi et al, comprising organopolysiloxane containing at least one alkenyl group per molecule and heat conductive filler, for above mentioned advantages.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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