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 .
Response to Arguments
Applicant’s arguments, see Pgs. 1-5, filed 12/26/2025, with respect to the rejection(s) of claim(s) under 35 USC § 102 have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Nishi et al. (US 20190092695 A1) [IDs dated 12/21/2023]. This action is made non-final in light of the new grounds of rejection.
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:
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 13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Nishi et al. (US 20190092695 A1) [IDs dated 12/21/2023], herein Nishi.
In regards to claim 13, Nishi teaches composite body comprising a boron nitride sintered body including boron nitride particles and pores which are at least partially filled with a resin [Abstract, 0025-0027, Table I, 0080-0081, Table 3]. The average pore diameter is from 0.1 to 3 µm [0046, 0079, Table 4]. Nishi teaches the sintered body is molded and thus does not have a cut plane [0048, 0078]. Nishi does not teach the body is a sheet and the thickness of the sheet.
Nishi discloses the claimed invention except for that the body is a sheet. It would have been obvious to one having ordinary skill in the art at the time the invention was made to molded the body in the shape of a sheet, since it has been held that the configuration was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration claimed was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Further, it would be obvious to have the body be sheet shaped as Nishi further teaches sheets are cut from the body to form insulting adhesive sheets [0097].
Nishi discloses the claimed invention except for the thickness of the sheet of the sintered composite being less than 2 mm. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have made the thickness less than 2 mm, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In regards to claim 15, Nishi does not teach the porosity of the sintered body. However, it is expected to meet or overlap the claimed range.
Nishi teaches a substantially similar sintered boron nitride body formed via similar pressing and sintering processes with the pressing pressure of 75 MPa which is within the taught range of the Instant examples as such one would expect the physical properties that result to be similar including the porosity, see In re Best.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art.
In regards to claim 16, Nishi does not teach the density of the sintered body. However, it is expected to meet or overlap the claimed range.
Nishi teaches a substantially similar sintered boron nitride body formed via similar pressing and sintering processes with the pressing pressure of 75 MPa which is within the taught range of the Instant examples as such one would expect the physical properties that result to be similar including the density, see In re Best.
Allowable Subject Matter
Claim 14 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art fails to teach or suggest the orientation index of the boron nitride sintered body is 40 or less as claimed. Nishi is silent to the orientation index but is not expected to meet the limitation due to the ratio of hexagonal BN used, as seen in the Instant examples, example 2 and 3, the amount of hexagonal BN increases the orientation index and Nishi uses a higher percentage than that in the Instant examples.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH COLLISTER/ Primary Examiner, Art Unit 1784
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