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
Claims 7-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/16/2026.
Applicant's election with traverse of Group I, Claims 1-6, in the reply filed on 03/16/2026 is acknowledged. The traversal is on the ground(s) that Claims 7 and 8 necessarily contain the thermally conductive film adhesive of Group I. This is not found persuasive because the Invention of Group I may be used in a different process than that of Claim 7, and may be used to make a final product different than that of Claim 8, as shown in paragraphs 2 and 3 of the Office Action filed 01/14/2026.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3, line 2, “the thermally conductive film adhesive” should read “a thermally conductive film adhesive obtained from the thermally conductive film adhesive composition”.
Appropriate correction is required.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yori et al. (WO 2017/145624 A1) in view of the evidence of Shin-Etsu (Shin-Etsu Silicone, “KBM-403”).
Regarding Claims 1 and 4-5, Yori discloses a thermally conductive adhesive film (para 0011) formed from a varnish (i.e. adhesive composition) (para 0103) comprising acrylic resin, epoxy resin, curing agent, polyhedral alpha-alumina filler (para 0011), and silane coupling agent (para 0091).
The acrylic resin is an acrylic polymer (para 0013). The curing agent is a curing agent for the epoxy resin (para 0046).
There may be 60-95 parts by mass polyhedral alpha-alumina filler with respect to 100 parts total of acrylic resin, epoxy resin, curing agent, and polyhedral alpha-alumina filler (para 0011). Therefore there would be 5-40 parts by mass total acrylic resin, epoxy resin, and curing agent.
There may be up to 10 parts by mass silane coupling agent with respect to 100 parts total of acrylic resin, epoxy resin, and curing agent (para 0096). Therefore there may be up to 4 parts by mass silane coupling agent relative to 40 parts total acrylic resin, epoxy resin, and curing agent ((10/100)*40), and 60 parts polyhedral alpha-alumina filler; and there may be up to 0.5 parts by mass silane coupling agent relative to 5 parts total acrylic resin, epoxy resin, and curing agent ((10/100)*5), and 95 parts polyhedral alpha-alumina filler.
The silane coupling agent may be gamma-Glycidoxypropyltrimethoxysilane (para 0092), which corresponds to the KBM-403 silane coupling agent used in the present examples which has a minimum coating area of 330 m2/g (Present Specification para 0066; see also Shin-Etsu).
The polyhedral alpha-alumina filler may be AA-3 by Sumimoto (para 0118), which according to the present disclosure has a specific surface area of 0.6 m2/g (Present Specification para 0066).
The blending multiple = (blending amount of silane coupling agent x minimum coating area of silane coupling agent) / (blending amount of polyhedral alpha-alumina filler x specific surface area of polyhedral alpha-alumina filler).
Therefore, since the silane coupling agent / polyhedral alpha-alumina filler ratio may be up to 4/60, the blending multiple is up to (4*330)/(60*0.6) = 36.7. When the silane coupling agent / polyhedral alpha-alumina filler ratio is 0.5/60, the blending multiple is (0.5*330)/(95*0.6) = 2.9. The blending ratio of 2.9-36.7 overlaps that presently claimed.
The amount by mass of polyhedral alpha-alumina filler with respect to the total of acrylic resin, epoxy resin, curing agent, polyhedral alpha-alumina filler, and silane coupling agent is 60/104 (i.e. with maximum amount of silane coupling agent) to 95/100 (i.e. with minimal amount of silane coupling agent), or 57.7 to 95 mass%.
While there is no disclosure of volume% of the polyhedral alpha-alumina filler, given types of materials disclosed are the same as presently claimed, and the broad amounts by mass disclosed, the volume% of polyhedral alpha-alumina filler used according to Yori would overlap that claimed.
Alternatively:
Yori discloses that the amount of polyhedral alpha-alumina filler is selected to improve thermal conductivity, flexibility, and adhesiveness (para 0083). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to select an amount of polyhedral alpha-alumina filler, including Volume% as claimed, to optimize the thermal conductivity, flexibility, and adhesiveness.
In light of the overlap between the claimed composition and that disclosed by Yori, it would have been obvious to one of ordinary skill in the art to produce a composition that is both disclosed by Yori and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claim 2, Yori discloses all the limitations of the present invention according to Claim 1 above. Yori further discloses the adhesive films produced have a thermal conductivity of 2 W/m K or more (para 0136).
Yori does not disclose the melt viscosity of the adhesive film. However, since Yori discloses adhesive film composition comprising the same materials as claimed in amounts as claimed, a film produced from the composition would necessarily have melt viscosity as claimed.
Regarding Claim 3, Yori discloses all the limitations of the present invention according to Claim 1 above. Yori does not disclose the die shear strength of the adhesive film. However, since Yori discloses adhesive film composition comprising the same materials as claimed in amounts as claimed, a film produced from the composition would necessarily have die shear strength as claimed.
Regarding Claim 6, Yori discloses all the limitations of the present invention according to Claim 5 above. Yori further discloses a 5 to 50 micron film thickness (para 0102).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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