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 .
The amendment dated 04/07/2026 has been considered and entered. The response requires fillers at amounts of 80 to 98% by weight which Hayama et al. (WO 2022/071491A1) in view of Akita et al. (CN 1961162A) and in view of Nakatani et al. (JP 2009-209179A) does not teach. Therefore, the previous rejections are withdrawn and new grounds of rejections are made as necessitated by the amendment.
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.
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, 2, 4, 8 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Shibuya Tadashi (JP 2014-194006A) in view of Saito et al. (JP 2012-111823A)
In regards to claim 1, Shibuya teaches thermal conductive grease that comprises 70 to 98% of inorganic powder filler, base oil at from 2 to 30%, metal soap at 0.001 to 3%, antioxidant at 0.001 to 3% etc. (abstract). The filler can be one or more such as aluminum oxide, zinc oxide etc., having particle sizes of from 0.15mm to less than 3 mm, and which can further be combined with coarse inorganic particles having particle sizes of from 3 to 50mm [0016, 0017]. The base oil can be 2 or more such as synthetic hydrocarbon oil, i.e., polyalphaolefins, esters, polyglycol such as polyethylene glycol etc. [0020, 0021]. The composition can comprise other known additives in a normal amount [0063]. Shibuya thus, teaches the conductive fillers in amounts overlapping the claimed ranges, base oils as claimed but does not particularly recite the presence of calcium carbonate.
Saito similarly teaches thermal grease having metal oxide fillers, and which can comprise optional components to enhance the thermal grease such as calcium carbonate at 0.1 to 1% (specification). Thus, persons of ordinary skill in the art at the time the claim was filed would have found it obvious to have used the optional component such as calcium carbonate and in the recited amounts of Saito in the composition of Shibuya, as Shibuya allows for the use of known additives at conventional amounts in the composition.
In regards to claims 2, 8, 9, Shibuya and Saito combined teach the composition comprising the calcium carbonate but fail to recite its particle size. Lv et al. (CN 110499030A) teaches greases similarly useful for electronic components and which comprises calcium carbonates having particle sizes of from 10 to 100 nm (specification). Thus, persons of ordinary skill in the art at the time the claims were filed would have found it obvious to have used calcium carbonates having the particle sizes recited by Lv in the composition of Shibuya and Saito, as Lv teaches suitable particle sizes for calcium carbonates useful in greases for electronics components.
In regards to claim 4, Shibuya and Saito combined teach the grease which can comprise base oil such as polyethylene glycol which provides polyalkylene glycol having a hydroxy group and suitable for providing the intended use of surface modifier as claimed.
In regards to claim 10, Shibuya and Saito combined teach the grease having the claimed ingredient as previously stated.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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