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 II, claims 7 and 14-19 in the reply filed on 09/02/2025 is acknowledged.
Claims 1-6 and 8-13 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/02/2025.
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 7 and 14-19 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 7 recites the limitation "the boron nitride sintered body" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
All claims not specifically addressed are rejected due to their dependence on a rejected claim.
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) 7 and 14-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Igarashi et al. (JP2014162697A with reference to machine translation and original Japanese publication as noted, hereinafter referred to as Igarashi).
Regarding claim 7, Igarashi discloses a composite body comprising: the boron nitride sintered body (See the fourth to last paragraph of page 3 from the machine translation, disclosing a boron nitride sintered body) including boron nitride particles (see Igarashi at the Abstract from the machine translation, disclosing boron nitride aggregated particles) and pores (see Igarashi at Table 2 of the original Japanese publication, disclosing examples 1-27 with a total porosity of from 61-84%, which means the body has pores) and a resin (see Igarashi at the first full paragraph of page 5 from the machine translation, disclosing resin) filled in at least some of the pores of the boron nitride sintered body (see Igarashi at the first paragraph of page 9 from the machine translation, disclosing vacuum impregnation of epoxy resin into the boron nitride molded body. Examiner notes this would provide resin filled in at least some of the pores of the boron nitride sintered body.).
While Igarashi does not explicitly disclose a compressive elastic modulus of the boron nitride sintered body is 1 GPa or more, the compressive strength appears to be a function of the composition as well as the porosity as detailed by Examples 1-2 and Comparative Examples 1-2 of Table 1 from the instant specification. Examiner notes Comparative Example 1 of Table 1 of the instant specification has a porosity of 60%, which is substantially identical to 61% of Table 2 Example 15 of Igarashi. Examiner notes instant Comparative Example 1 has a compressive elastic modulus of 0.97 GPa, which is 1 GPa when accounting for significant figures. As such, because the composition and porosity of Example 15 of Igarashi is substantially identical to Comparative Example 1 of the instant application, Example 15 of Igarashi would inherently possess a compressive elastic modulus within or close to touching the claimed range. 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 (see MPEP 2112.01(I) first paragraph). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (see MPEP 2144.05(I), second paragraph).
Regarding claim 14, while Igarashi does not explicitly disclose a compressive strength of the boron nitride sintered body is 3 MPa or more, the compressive strength appears to be a function of the composition as well as the porosity as detailed by Examples 1-2 and Comparative Examples 1-2 of Table 1 from the instant specification. Examiner notes Comparative Example 1 of Table 1 of the instant specification has a porosity of 60%, which is substantially identical to 61% of Table 2 Example 15 of Igarashi. Examiner notes instant Comparative Example 1 has a compressive strength of 4.0 MPa. As such, because the composition and porosity of Example 15 of Igarashi is substantially identical to Comparative Example 1 of the instant application, Example 15 of Igarashi would inherently possess a compressive strength within the claimed range. 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 (see MPEP 2112.01(I) first paragraph).
Regarding claim 15, Igarashi discloses a porosity of the boron nitride sintered body is 30 to 65% by volume (see Igarashi at Table 2, Example 15 of the original Japanese publication, disclosing an example of a boron nitride sintered body with a porosity of 61%).
Regarding claim 16, Igarashi discloses a bulk density of the boron nitride sintered body is 900 to 1500 kg/m3 (see Igarashi at Table 2, Example 15 of the original Japanese publication, disclosing an example of a boron nitride sintered body with a porosity of 61%. At the fifth to last paragraph of page 5 from the machine translation, Igarashi discloses the theoretical density of the boron nitride body is 2.28 g/cm3, which Examiner notes is 2280 kg/m3. Examiner notes with a porosity of 61%, this would provide a density of (theoretical density)*0.61 which is (2280)*0.61= 1390.8 kg/m3, which is within the claimed range.).
Regarding claim 17, Igarashi discloses an orientation index of the boron nitride sintered body is 20 or less (see Igarashi at the Abstract, disclosing an orientation degree of 0.6 to 1.4, which is within the claimed range.).
Regarding claim 18, Igarashi discloses the boron nitride sintered body has a sheet shape and a thickness of less than 5 mm (See Igarashi at the last paragraph of page 9 from the machine translation, disclosing a width of 10 mm, a length of 10 mm, and a thickness of 1.0 mm, which Examiner notes corresponds to a sheet with a thickness of less than 5 mm).
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.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Igarashi.
Regarding claim 18, Igarashi makes obvious the content of the resin in the composite body is 10 to 60% by mass on the basis of the total mass of the composite body (Examiner notes per the rejection of claim 15 above, Table 2 Example 15 has a porosity of 61%. Examiner additionally notes per the rejection of claim 7, resin is applied via vacuum infiltration, which will fill approximately all of the pores. This provides an approximate resin fill of 61 mass%, which is close to touching the claimed range.) A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (see MPEP 2144.05(I), second paragraph).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731