DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is entitled to and claims the benefit of priority of JP Patent App. Nos. 2023-153110, filed 09/20/2023, and 2024-073852, filed 04/20/2024. The preliminary amendment filed on 07/05/2024 is entered and acknowledged by the Examiner.
3. Claims 1-10 are pending. Claims 1-10 are under examination on the merits. Claims 20-21 are withdrawn to a non-elected invention from further consideration.
Information Disclosure Statement
4. The information disclosure statements submitted on 07/05/2024, and 02/03/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Priority
5. Receipt is acknowledged of papers submitted on 08/08/2024 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 1-10 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 pre-AIA the applicant regards as the invention. Claim 1 recites the limitation "the particle size distribution" (4 occurrences). There is insufficient antecedent basis for this limitation in the claim. Claims 2-10 being depended on claim 1 are rejected as well.
8. Claims 1-10 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 pre-AIA the applicant regards as the invention. Claim 1 recites the term “(a third thermally conductive filler (exclusive of silicon carbide))”, wherein, the inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the included term is part of the claimed invention. Claims 2-10 being depended on claim 1 are rejected as well.
Claim Rejections - 35 USC § 103
9. 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.
10. Claims 1-10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Takenaka et al. (US Pub. No. 2020/0140736 A1, hereinafter “’736”) in view of Appukuttan et al. (US Pub. No. 2019/0292321 A1, hereinafter “’321”).
Regarding claims 1-2: ‘736 teaches a thermally conductive polysiloxane composition (Page 1, [0001]) comprising: (A) a thermally conductive filler (Page 1, [0014]; Page 2, [0038]), (B) a siloxane compound represented by the general formula (1) as set forth (Page 1, [0015]; Page 2, [0039]), (C) an alkoxysilane compound represented by the general formula (3) as set forth (Page 2, [0026]; Page 2, [0050]), (D) a polyorganosiloxane containing at least one aliphatic unsaturated group per molecule (Page 2, [0028]; Page 3, [0052]), (E) a polyorganohydrogen siloxane having two or more hydrogen atoms bonded to silicon atoms per molecule (Page 2, [0029]; Page 3, [0053]), and (F) a platinum-based catalyst (Page 2, [0030]; Page 3, [0054]).
‘736 teaches by using a plurality of types of fillers having different particle diameters in combination, the filler having a relatively small particle diameter goes into voids formed in the filler having a relatively large particle diameter, enabling higher filling. Especially, it is preferred that component (A) comprises 20 to 70% by mass of (A-1) inorganic particles having an average particle diameter of 30 to 150 µm (i.e., read on instant E-4 filler of 35 µm having inherent a thermal conductivity of 60 to 300 W/mk; Page 11, Examples, Table 1), 1 to 50% by mass of (A-2) inorganic particles having an average particle diameter of 1 to less than 30 µm (i.e., read on instant E-3 filler of 3 µm having inherent a thermal conductivity of 10 to 300 W/mk; Page 11, Examples, Table 1), and 1 to 50% by mass of (A-3) inorganic particles having an average particle diameter of 0.1 to less than 1 µm (i.e., read on instant E-2 filler of 0.4 µm having inherent a thermal conductivity of 10 to 300 W/mk; Page 11, Examples, Table 1), because a thermally conductive polysiloxane composition having excellent operation properties and a low viscosity as well as high thermal conductivity can be obtained (Page 11, Examples, Table 1; Page 12, Claim 1). ‘726 teaches the thermally conductive fillers as component (A) include generally known inorganic particles, such as alumina, magnesium oxide, zinc oxide, silica (a quartz powder), boron nitride, aluminum nitride, silicon carbide, a metal powder, diamond, aluminum hydroxide, and carbon. Especially preferred are alumina, zinc oxide, aluminum nitride, and silicon carbide. With respect to the inorganic particles, there is no particular limitation as long as they are of grades that can be used as component (A), and those which are commercially available can be used. Further, a plurality of types of inorganic particles of different chemical species can be used in combination (Page 3, [0056]). ‘736 does not expressly teach a silicon carbide having a peak of the particle size distribution in the range of from 10 to 40 µm.
However, ‘321 teaches a composition (Page 1, [0001]) comprising: (A) a silicone polymer of the Formula (I) as set forth, B) a thermally conductive filler, C) optionally an antioxidant, D) optionally an inhibitor, E) optionally a volatile diluent, and F) optionally a coupling agent (Page 3, Claim1). ‘321 teaches the filler material is chosen from alumina, silicon carbide, silica, boron nitride, silicon nitride, aluminum nitride (Page 3, [0034]), wherein the filler material is chosen from a plurality of filler materials (Page 3, [0036]) such that the filler material is chosen from a first filler having an average particle size from about 0.01 to about 0.9 µm, a second filler having an average particle size of about 1 µm to about 10 µm, a third filler having an average particle size of about 15 µm to about 150 µm and optionally a fourth filler having an average particle size of about 100 µm to about 400 µm (Page 3, [0037]; Page 3, [0039]; Page 8, [0111]; Page 8, [0125]; Page 9, [0127]) with benefit of providing the silicone composition that is provided as a thermal conducting composition comprising the silicone polymer and a thermally conductive filler material (Page 7, [0110]).
In an analogous art of the thermally conductive silicone composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the thermally conductive silicone composition by ‘736, so as to include a fourth filer such as a silicon carbide having a peak of the particle size distribution in the range of from 10 to 40 µm as taught by ‘321, and would have been motivated to do so with reasonable expectation that this would result in providing the silicone composition that is provided as a thermal conducting composition comprising the silicone polymer and a thermally conductive filler material as suggested by ‘321 (Page 7, [0110]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since it is held that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980).
Regarding claims 3-4: The disclosure of ‘736 in view of ‘321 is adequately set forth in paragraph above and is incorporated herein by reference. ‘736 teaches the thermally conductive silicone composition, further comprising at least one member selected from the group consisting of (A-2) a polyorganosiloxane having in the molecule thereof one alkenyl group bonded to a silicon atom (Page 7, [0127]; Page 8, [0135]), and (B-2) a polyorganohydrogensiloxane having in the molecule thereof one hydrogen atom bonded to a silicon atom (Page 8, [0137]; Page 8, [0143]).
Regarding claims 5-8: The disclosure of ‘736 in view of ‘321 is adequately set forth in paragraph above and is incorporated herein by reference. ‘736 teaches the component (A) comprises 20 to 70% by mass of (A-1) inorganic particles having an average particle diameter of 30 to 150 µm (i.e., read on instant E-4 filler of 35 µm having inherent a thermal conductivity of 60 to 300 W/mk; Page 11, Examples, Table 1), 1 to 50% by mass of (A-2) inorganic particles having an average particle diameter of 1 to less than 30 µm (i.e., read on instant E-3 filler of 3 µm having inherent a thermal conductivity of 10 to 300 W/mk; Page 11, Examples, Table 1), and 1 to 50% by mass of (A-3) inorganic particles having an average particle diameter of 0.1 to less than 1 µm (i.e., read on instant E-2 filler of 0.4 µm having inherent a thermal conductivity of 10 to 300 W/mk; Page 11, Examples, Table 1), because a thermally conductive polysiloxane composition having excellent operation properties and a low viscosity as well as high thermal conductivity can be obtained (Page 11, Examples, Table 1; Page 12, Claim 1).
‘321 teaches regarding the different filler types contributing to the first and/or second fillers, the concentration of the different filler types may be chosen as desired. In one embodiment, the first filler comprises a first filler type in an amount of about 5 vol. % to about 95 vol. % and a second filler type in an amount of about 95 vol. % to about 5 vol. % based on the total volume of the first filler; a first filler type in an amount of about 10 vol. % to about 80 vol. % and a second filler type in an amount of about 20 vol. % to about 90 vol. % based on the total volume of the first filler; a first filler type in an amount of about 30 vol. % to about 60 vol. % and a second filler type in an amount of about 70 vol. % to about 40 vol. % based on the total volume of the first filler. In one embodiment, the first filler comprises a first filler type in an amount of about 20 vol. % to about 40 vol. % and a second filler type in an amount of about 80 vol. % to about 60 vol. % based on the total volume of the first filler (Page 9, [0130]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since discovery of an optimum value of a result effective variable (i.e., the amount and type of the filler for conductive polysiloxane composition) in a known process is ordinarily within the skill of the art. In re Aller, 220 F.2d 454, 456 (CCPA 1955). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 9: The disclosure of ‘736 in view of ‘321 is adequately set forth in paragraph above and is incorporated herein by reference. ‘321 teaches a cured product which is obtained by curing the thermally conductive silicone composition (Page 9, [0165]; Page 12, Claim 5).
Regarding claims 10: The disclosure of ‘736 in view of ‘321 is adequately set forth in paragraph above and is incorporated herein by reference. ‘321 teaches an electronic part comprising the thermally conductive silicone composition (Page 9, [0165]; Page 12, Claim 6).
Examiner Information
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
08/03/2026
bijan.ahvazi@uspto.gov
Prosecution Insights