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 . 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.
Claim Rejections - 35 USC § 102
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.
Claim(s) 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Umetani (WO2020262407A1 - corresponding publication EP3992252A1 used for citations).
Regarding claims 10-11, Umetani, drawn also to the art of a thermally conductive composition and a thermally conductive sheet (‘member’) (Abstract; [0129]), discloses a thermally conductive composition containing a silicone matrix (A) [0028] (alkenyl organopolysiloxane and hydrogenorganopolysiloxane), a thermally conductive filler [0028 & 0036], a compatible component (D) i.e. alkoxysilane compound [0043 & 0055], and an optional other organopolysiloxane which includes long-chain alkyl modified silicone oils (i.e. alkyl silicone (B)) [0089-0090]. Umetani discloses a method of mixing the components [0123] and then curing (heating to cure) them [0127 & 0129] to form a thermally conductive member [0129].
Allowable Subject Matter
Claims 1-9 are allowed over the prior art of record.
The following is an examiner’s statement of reasons for allowance:
The prior art of record does not reasonably show or suggest the heat conductive sheet and method for mounting a heat conductive sheet.
The closest prior art of record is Umetani (WO2020262407A1). Similar to the claimed invention, Umetani discloses a heat conductive sheet and discloses a method of mounting a heat conductive sheet. Umetani discloses the heat conductive sheet comprising a silicone matrix, an optional alkyl silicone compound, and a thermally conductive filler. Umetani discloses a weight range of the optional alkyl silicone to be in the claimed range, but does not disclose or make any mention of the expansion coefficient of the heat conductive sheet.
Further, while it is known generally from other prior art references, to use alkyl modified silicone oils, specifically JP200327917A (cited in IDS and translation provided by applicant), the above reference discloses a completely opposite weight range to the weight range of the alkyl silicone as instantly claimed, and also does not disclose specifically an alkyl silicone compound as is specified in the instant specification, thus making an inherency argument for the expansion coefficient unreasonable.
Thus, while the prior art discloses generally the composition of the heat conductive sheet, the prior art does not specifically disclose the expansion coefficient as claimed and as tested by the TMA in the conditions as specified.
The prior art as a whole then, fails to reasonably show or suggest the claimed heat conductive sheet and method of mounting a heat conductive sheet in its totality.
It would not have been obvious to an ordinarily skilled artisan to have arrived at the instant invention without hindsight. For the foregoing reasons, the invention is deemed non-obvious.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kudoh (U.S PG Pub 20210324255A1), Kudoh (U.S PG Pub 20200385577A1), Weiser (U.S PG Pub 20080291634A1), Imaizumi (U.S PG Pub 20220048230A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746