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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-9) in the reply filed on 06/12/2026 is acknowledged.
Specification
The disclosure is objected to because of the following informalities: the specification includes “Resin composition” comprising: ingredients, in which one of the ingredients is also “a resin composition”. Therefore, entirely of the specification needs to be clear what applicant intend to claim, and a composition within a composition is vague, thus specification is lacking clarity. Appropriate correction is required.
Claim Interpretation
The Examiner interprets claim 1 “ratio” in line 7 is interpreted as an aspect ratio, as provided in the specification. Furthermore, claim 1 appears to require - a first thermoplastic resin, a filler, and at least one of an aggregate and a resin composition of a second thermoplastic resin. It appears that only one of “an aggregate” or “a second thermoplastic resin” is required as part of the claim and is similarly rejected below.
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 1 – 9 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 1 preamble recites “a resin composition” and the body of the claim then recites “a resin composition” in line 5. Following this phrase, claim then appears to compare a “ratio of a longest first length to a shortest second length among lengths of the aggregate and the resin composition”. The repeating phrase “a resin composition” both in the preamble and body causes claims to be vague and indefinite as it is unclear whether these compositions have different ingredient, amounts, or properties, making it impossible to determine the boundary/scope of the claim. Furthermore, claim then recites “wherein the aggregate or the resin composition does not include first inorganic particles having a particle diameter larger than or equal to 25 micron” however, the resin composition of the preamble already includes the aggregate, thus remainder of claim is also vague. The dependent claims 2-9 are rejected for the similar rejection as discussed above.
Claim 5 is vague as such applicant compares softening temperature of first thermoplastic resin with the “resin composition” temperature. It is noted earlier that claim 1 already presents ambiguity as to preamble recites “a resin composition” while the body also recites another “resin composition”. Thus, it is unclear as for claim 5, whether applicant is comparing (i) softening temperature of first resin composition (polymer) with the second resin composition, or (ii) softening temperature of the first resin composition with the final composition.
Claim 6 as written “wherein an addition amount of the first inorganic particle is larger than or equal to 50% by weight and smaller than or equal to 85% by weight”, claim is vague as to whether applicant intends to claim additional amount of the first inorganic particle, or just amount of first inorganic particle, and whether the percentage is based on total weight of the composition?
Claim 7 recites “wherein the first thermoplastic resin,
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claim(s) 1 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over D1 (JP 2016533282 A; the Examiner uses equivalent translation provided by US 20160263791 A1) in view of Uibel et al. (US 2016/0122502 A1).
Regarding claim 1, D1 teaches a resin composition for injection molding, comprising: a first thermoplastic resin (“polymer”), a filler including non-fibrous first inorganic particle (“silicon oxide”), at least one aggregate of second inorganic particles (“boron-nitride agglomerate” [0134]-[0145]) (see abstract; claims; and description).
However, D1 fails to explicitly teach wherein the ratio of a longest first length to a shortest second length among lengths of the aggregate (presumably the aspect ratio “ratio of its shortest dimension such as width, thickness to its longest dimension”) as claimed being larger than or equal to 25 micron and smaller than or equal to 100 microns.
In the same field of endeavor, Uibel et al. teach resin composition including the polymer material is selected from the group consisting of the thermoplastic materials polyamide (PA) and polyphenylene sulfide (PPS) and including boron nitride agglomerate (see claims 9, 15); and wherein the aspect ratio of the boron nitride agglomerates is from 1.0 to 1.8, preferably from 1.0 to 1.5 (see claim 15 and 20).
Thus, the ratio between longest length of the aggregate and the shortest second length, and how to set the first length could easily be derived by a person one ordinary skilled in the art to the obtained desired thermal conductivity as defined by D1 in view of Uibel et al (see abstract; [0001]) for the benefit of achieving desired thermal conductivity (see abstract).
Furthermore, it is noted that since D1 exemplifies settling an aspect ratio (a ratio of a diameter to a thickness) of agglomerate to 5 or more and an average diameter of an aggregate of 20 micron or more to 1000 microns or less ([0072], [0079], [0083], claim 13) and exemplifies that the thickness of the agglomerate is at least 1 micron ([0054][0078]), it would have been obvious the thickness of this extent, no first inorganic particles having a particle size of 25 micron or more are included therein.
Claim 6 as written “wherein an addition amount of the first inorganic particle is larger than or equal to 50% by weight and smaller than or equal to 85% by weight”, claim is vague as to whether applicant intends to claim additional amount of the first inorganic particle, or just amount of first inorganic particle, and whether the percentage is based on total weight of the composition?
Claim 7 requires the resin composition to be black without reciting additional ingredient that causes the materials to be black. D1 teaches use of carbon black as secondary filler (see [0152]), thus based on the similar ingredient also used in the instant applicant’s invention, it would have been obvious that similar material would have similar properties, such that the resin composition would be black based on the quantity of carbon black.
As for claim 8, D1 further teaches wherein the first thermoplastic resin is polyphenylene sulfide (see [0071]), which is a polyarylene sulfide.
As for claim 9, D1 further teaches wherein the first inorganic particles are spherical or polygonal silica particles (see [0153][0156]).
Claim(s) 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over D1 (JP 2016533282 A; the Examiner uses equivalent translation provided by US 20160263791 A1) in view of Uibel et al. (US 2016/0122502 A1) and in further view of Choi (US 2020/0283618 A1).
As for claim 2-4, D1 and Uibel et al. fail to teach wherein the cumulative 99% particle diameter D99 of the first inorganic particle is smaller than or equal to 25 micron; wherein a particle diameter of the second inorganic particles is smaller than or equal to 1 micron.
In the same field of endeavor, pertaining to similar composition including fillers (conductive), Choi teaches the insulating filler includes one or more selected from the group consisting of magnesium oxide, titanium dioxide, aluminum nitride, silicon nitride, boron nitride, aluminum oxide, silica, zinc oxide, barium titanate, strontium titanate, beryllium oxide, manganese oxide, talc, silicon carbide, and silicon dioxide (see claim 4); wherein the average particle diameter of the insulating filler is in the range of 10 nm to 600 μm (see claim 5) in combination with thermoplastic polymer selected from polyphenylsulfone (PES) similar to claimed invention (see claim 9). Additionally, Choi teaches using mixture of copolymer two or more materials selected from the group consisting of polyamide, polyester, polyketone, a liquid crystal polymer, a polyolefin, polyphenylene sulfide (PPS), polyether ether ketone (PEEK), polyphenylene oxide (PPO), polyethersulfone (PES), polyetherimide (PEI), and polyimide (see claim 9). Thus, these materials are considered to be same type of two or more are selected (since these are all thermoplastic).
It would have been obvious to one ordinary skilled in the art at the time of the effective filing of the application was made to modify the sizes of the inorganic particles as taught by D1, with having desired size as suggested by Choi, for the benefit of improvement in insulation property of a heat radiation member and minimization in deterioration of heat radiation performance of the heat radiation member (see abstract).
Claim 5 is vague as such applicant compares softening temperature of first thermoplastic resin with the “resin composition” temperature. It is noted earlier that claim 1 already presents ambiguity as to preamble recites “a resin composition” while the body also recites another “resin composition”. Thus, it is unclear as for claim 5, whether applicant is comparing (i) softening temperature of first resin composition (polymer) with the second resin composition, or (ii) softening temperature of the first resin composition with the final composition. Since, Choi teaches using mixture of copolymer two or more materials selected from the group consisting of polyamide, polyester, polyketone, a liquid crystal polymer, a polyolefin, polyphenylene sulfide (PPS), polyether ether ketone (PEEK), polyphenylene oxide (PPO), polyethersulfone (PES), polyetherimide (PEI), and polyimide (see claim 9), thus it is obvious that these materials would have different softening temperatures when used in combination.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 12,552,092 B2 – uses similar composition containing polyarylene sulfide, silicas as in the instant claimed invention.
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NAHIDA SULTANA
Primary Examiner
Art Unit 1743
/NAHIDA SULTANA/ Primary Examiner, Art Unit 1743
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