DETAILED ACTION
Applicant’s reply, filed 11 May 2026 in response to the non-final Office action mailed 11 February 2026 (see also interview summary mailed 5/7/2026), has been fully considered. As per Applicant’s filed claim amendments claims 1-4 and 6-7 are pending under examination, wherein: claim 1 has been amended, claims 2, 4 and 7 are as originally filed, claims 3 and 6 are as previously presented, and claim 5 has been cancelled by this and/or prior amendment.
Claim Objections
Claim 1 is objected to because of the following informalities: “W/(m.K)” should instead be –W/(m·K)-- (a centered dot not a period). Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-3 and 6-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. As-amended independent claim 1 now recite the limitation of “wherein the boron nitride powder has a heat conductivity of 1.4 W/(m.K) or more”. The instant originally filed specification contains no range limitation with respect to thermal conductivity. The Table 1 (at [0071]) contains three discrete inventive example points of 1.4 (Ex 2), 1.5 (Ex 1) and 1.6 (Ex 3) W/(mK), which does not establish support for the upper open-ended range recitation of “or more” as claimed. As such the recitation of “1.4 W/(m.K) or more” constitutes new matter. This rejection includes claims 2-3 and 6-7 as they depend from claim 1.
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.
Claims 1-3 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishi et al. (US PGPub 2016/0060112).
Regarding claims 1-3, Nishi teaches aggregated boron nitride powder having a mean sphericity of at least 0.70, a mean particle diameter of 20-100 µm, a porosity of 50-80%, a mean pore diameter measured by mercury porosimeter of 0.10-2.0 µm, a maximum pore diameter measured by mercury porosimeter of at most 10 µm, a cumulative pore volume of 2.0 cm3/g or less, a calcium content of 500-5,000 ppm, and a graphitization index between 1.6 and 4.0 (abstract; [0030]-[0031]; [0036]; Fig1; [0041]; [0043]-[0049]; [0051]; [0055]). Nishi further teaches the boron nitride produced will have ‘high’ thermal conductivity ([0028]) and exemplifies values of 7.2 W/(m·K) and above (see Table 2)(instant ‘1.4 W/(m·K) or more’).
Further regarding i) the cumulative pore volume and ii) the ratio of cumulative pore volume to total pore volume, as claimed, it is noted Nishi teaches a maximum cumulative pore volume of 2.0 cm3/g or less, and additionally regarding iii) the heat conductivity as claimed, the high conductivity aggregated boron nitride of Nishi, having the claimed composition, particle sizes, and pore radii, was made by substantially the same starting materials and via substantially the same process as claimed (instant specification: examples, pages 19-29). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)). If it is the Applicant' s position that this would not be the case: (1) evidence would need to be provided to support the Applicant' s position; and (2) it would be the Office' s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, via the claimed method.
Regarding claims 6-7, Nishi teaches the aggregated boron nitride as set forth in claim 1 above and further teaches use of the boron nitride in resin compositions, themselves suitable for use in heat dissipation members of electronic devices ([0028]; [0062]-[0063]; [0075]).
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Minamisono et al. (JP 2006016290 A; using Clarivate Analytics machine translation for English language citations).
Minamisono teaches boron carbonitride materials having mean particle diameters from 4-15 µm, obtained by combining a carbon source, a nitrogen source and a boron source, heating, pulverizing, and firing the pulverized product at temperatures of 1200 °C or higher in a non-oxidizing atmosphere (abstract; pg1; pg2-3).
Further regarding the tap density as claimed, Minamisono teaches boron carbonitride particles having the claimed average particle sizes, made by substantially the same starting materials and via substantially the same process as claimed (instant specification: examples, pages 19-29). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)). If it is the Applicant' s position that this would not be the case: (1) evidence would need to be provided to support the Applicant' s position; and (2) it would be the Office' s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, via the claimed method.
Response to Arguments/Amendments
The 35 U.S.C. 102(a)(1) rejection of claim 5 as anticipated by Takeda (WO 2019073690 A1) is withdrawn as a result of Applicant’s cancellation of the claim.
The 35 U.S.C. 102(a)(1) rejection of claims 1-3 and 6-7 as anticipated by Nishi (US PGPub 2016/0060112) is maintained. Applicant’s arguments (Remarks, pages 3-5) have been fully considered but were not found persuasive.
Applicant argues that Nishi fails to teach or suggest the present invention, specifically the quantitative property of a heat conductivity of 1.4 W/(m·K) or more. This argument is not persuasive and it is noted that Nishi teaches not only “high” thermal conductivity but also demonstrates thermal conductivity values of 7.2 W/(m·K) and above (see [0028]; see also Table 2). As such, Nishi meets and anticipates the claimed property.
Applicant argues that the evidence of instant Table 1 is objective and disputes the Examiner’s determination that evidence of the Table is based upon a visual assessment. The Examiner firstly notes again that the rejection is one of anticipation and Applicant must provide objective evidence that the anticipatory reference of Nishi itself will not/does not necessarily result in, or have, the claimed property. Secondly, as set forth in the instant original specification (see [0063]) the evaluation of ‘filling property’, previously discussed, is defined as a visual assessment. Applicant argues comparative examples and asserts such provides a “boundary data point”. This is neither accurate nor persuasive and does not demonstrate anything with respect to the thermal conductivity or the ratio of cumulative pore volume of Nishi. Notably the comparative example, as asserted by Applicant, shows that if the ratio is above 48% then the thermal conductivity will be below 1.4 W/(m·K). Given that Nishi teaches thermal conductivities of 7.2 and above, Applicant’s data serves to support the Examiner’s conclusion that Nishi will meet the claimed ratio (i.e. 48% or less).
The 35 U.S.C. 102(a)(1) rejection of claim 4 as anticipated by Minamisono (JP 2006016290 A) is maintained. Applicant’s argument (Remarks, pages 5-6) have been fully considered but were not found persuasive.
Applicant admits that Minamisono discloses the firing temperature can be 1200°C or higher but asserts that Minamisono really means a ‘much lower temperature than the temperature of the claimed invention’. This argument remains unpersuasive. Applicant appears to simply dismiss the broader range that Applicant admits is taught by Minamisono. Applicant is reminded that claim 4 is a product claim and not a method claim, and contains no temperature recitation.
As previously noted, Minamisono teaches 1200 ºC or higher which means that Minamisono teaches a range of 1200 ºC and values above that with no required maximum temperature i.e. Minamisono is not restricted/limited to 1200 ºC. Applicant’s examples appear to demonstrate that values falling within the range of 1200 ºC or higher will in fact result in the claimed tap density (examples 1-3). Secondly, it is again noted that the instant independent claim 4 contains no recitations of temperature and as such Applicant’s arguments that the invention requires a certain firing temperature are not germane. Applicant has failed to provide any evidence that the product of Minamisono will not have the claimed tap density. Applicant further argues that Minamisono teaches a preferred temperature range of 1200 to 1500 ºC for economic reasons and therefore Minamisono cannot meet the temperature of the instant disclosure. Applicant is reminded that narrow embodiments/recitations do not serve to negate the broader disclosure (MPEP 2123).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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