DETAILED ACTION
Applicant’s reply and request for continued examination (RCE), filed 20 January 2026 in response to the Advisory action mailed 2 January 2026, has been entered and fully considered. As Applicant provided no claim amendments, pending claims 1-7 are in the forms as presented previously in the entered after final submission of 22 December 2025.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 20 January 2026 has been entered.
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]).
Further regarding i) the cumulative pore volume and ii) the ratio of cumulative pore volume to total pore volume, as claimed, Nishi teaches a maximum cumulative pore volume of 2.0 cm3/g or less, further the 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.
Claim 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeda et al. (WO 2019073690 A1; using US PGPub 2020/0247672 for English language citations).
Takeda teaches boron nitride aggregated powder obtained by the method of a) a pressure nitriding baking step of baking boron carbide in a nitrogen atmosphere at 1800°C or more to 2400°C or less, b) a decarbonizing crystallization step of mixing the baked product of step a) with a boron source and heating to a reaction temperature of 1800°C or more and obtaining a bulky boron nitride product, and c) a pulverizing step of pulverizing the bulky product to a powder having an average particle size of 2 to 20 µm (abstract; [0029]-[0032]; [0047]; [0052]-[0086]). Takeda further teaches the pressure nitriding baking step temperature at a range of 1800°C or more and 2400°C or less ([0064]), teaches the boron sources in the decarbonizing crystallization step include boric acid, boron oxide, and mixtures thereof ([0074]), and teaches the pulverizing step comprises pulverization of bulky particles formed via the aggregation of primary particles ([0076]).
Takeda further teaches the nitriding baking step wherein the atmosphere in the nitriding baking step, with which the boron carbide is treated, is a gas which enables the nitriding reaction to proceed and is preferably 95% (V/V) or more of nitrogen gas, more preferably 99.9% (V/V) or more nitrogen gas ([0067]), at a pressure of 1.0 MPa or less ([0065]) (instant nitrogen gas supply 20 equivalents or greater).
Further regarding the tap density as claimed, Takeda teaches boron nitride aggregated particles obtained by the claimed method. 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 claims 1-3 and 6-7 as anticipated by Nishi (US PGPub 2016/0060112) is maintained. Applicant’s arguments (Remarks, pages 4-5) have been fully considered but were not found persuasive.
Applicant asserts that ‘objective evidence’ has been provided by Table 1 of the instant specification of allegedly improved performance. Applicant appears to misunderstand the Examiner’s point. Applicant must provide objective evidence that the anticipatory reference of Nishi will not/does not necessarily result in, or have, the claimed property. Arguments of unexpected results are i) not applicable to an anticipatory rejection and ii) do not establish that the cited reference fails to inherently meet the claimed property. It is noted that a rejection based on 35 USC 102, can only be overcome by (a) persuasively arguing that the claims are patentably distinguishable from the prior art, (b) amending the claims to patentably distinguish over the prior art, or (c) perfecting priority under 35 USC 119(e) or 120. Comparative data is not sufficient to overcome an anticipatory rejection under 102.
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, page 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 is not persuasive and 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, 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).
The 35 U.S.C. 102(a)(1) rejection of claim 5 as anticipated by Takeda (WO 2019073690 A1) is maintained. Applicant’s argument (Remarks, pages 6-7) have been fully considered but were not found persuasive.
Applicant argues that the disclosed temperature range of Takeda of 1800 or more to 2400 ºC or less does not meet, and in fact is excluded by, the claimed range of 2050 to 2300 ºC. Given that the range of 2050-2300 ºC falls directly within the range of 1800-2400 ºC, Applicant’s argument is factually and mathematically incorrect. The claimed temperature range in no way ‘excludes’ the disclosure of Takeda who teaches a range encompassing said claimed range. Applicant argues that the working example of Takeda utilizing 2000 ºC firing temperature is controlling to the disclosure of Takeda. Firstly, this is highly incorrect and, as has been pointed out above and prior, preferred embodiments and examples do not teach away from, exclude, or negate the broader teachings and embodiments of the cited reference (MPEP 2123). Secondly, Takeda’s example of a 2000 ºC firing temperature serves to direct one of ordinary skill in the art to the portion of the already closely overlapping range of 1800-2400 ºC that directly meets the instant range (i.e. temperatures of 2000 ºC and above), noting also that 2050 ºC is not a significantly distinct temperature from 2000 ºC for one of ordinary skill in the art to expect a different property.
Applicant argues that a “firing temperature range between 2000 ºC and 2050 ºC is a critical variable” and that the temperature of 2050 ºC is not a variable of routine optimization (note that optimization is not a rational relied upon in the anticipatory rejection). Given that Applicant feels a temperature range of 2000 to 2050 ºC to be critical to obtaining the claimed product, it makes little sense that the range actually claimed is 2050 to 2300 ºC (where only the temperature of 2050 ºC is demonstrated to result in the claimed tap density and there is no showing as to the remainder of the claimed range). Applicant has done no more than prove true the position that the anticipatory method of Takeda will result in the claimed tap density. No position of “routine optimization” was taken, noting again that i) the rejection is one of anticipation not obviousness and ii) the temperature of 2050 ºC falls within the disclosed range of Takeda.
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