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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 17th, 2025 has been entered.
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.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fauzi (US 6319602 ).
Regarding claim 1, Fauzi discloses “a process for producing an h-BN characterized by admixing a carbonate, sulfate or nitrate of an alkali metal or alkaline earth metal With a boron-containing compound and a nitrogen containing compound, and heating the mixture in a nonoxidizing gas atmosphere at 1000° C. to 1500° C. “ (Fauzi [C6 L60-65]). In the case where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 (I). One of ordinary skill in the art would be able to select a heating temperature that fulfills the limitations set in the instant claim.
Furthermore, Fauzi teaches that “it is suitable to use the alkali metal or alkali earth metal carbonate, sulfate, or nitration in an about 0.1 to 3 parts by weight, preferable about 0.1 to about 0.5 parts by weight per part by weight of the combined about of the boron containing compound and the nitrogen containing compound.” (Fauzi [C 7 L33-38]). Therefore, going off of example B1 of the prior art (Fauzi [C12 L11-13]) where the weight ratio of melamine and orthoboric acid would result in a molar ratio of 0.34. With this in mind, when substituted with a blend of lithium and potassium carbonate by 70:30, the alkali metal molar rate would be 0.41. Using the proportionality equation, the ratio of melamine :orthoboric acid : alkali metal carbonate would be 1:1:0.5. Which leads to calculating the mass of the alkali metals and the boron, which leads to a value of 1.9 boron atoms to alkali metal atoms. In the case where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 (I). One of ordinary skill in the art would be able to select a boron, nitrogen and alkali metal compounds in a ratio which meets the limitation of the instant claim.
Regarding the alkali metals, the prior art discloses that “sulfates or nitrates of alkali metals or alkaline earth metals are carbonates, sulfates or nitrates of potassium, sodium, lithium, barium, strontium, calcium, etc., among which desirable are carbonates of alkali
metals, especially potassium carbonate and sodium carbonate. At least two of these compounds may be used in combination.” (Fauzi [C7 L22-28]). While Fauzi does not disclose the amount of lithium ions to sodium/potassium atoms, the prior art does teach that the two compounds can be combined. Therefore, it would have been obvious to ordinary skill in the art to choose two of the alkali metals and determine their relative proportions in line with the amount presented in the prior art. It would have been obvious to one of ordinary skill in the art to choose any combination of alkali metals (including those claimed) and determine their relative amounts since the prior art suggests combining at least two alkali metal compounds in order to predictably produce the desired hexagonal boron nitride particles. One of ordinary skill in the art would be motivated to make this modification in order to reduce costs by using less of the expensive lithium compounds
Regarding claim 3, Fauzi discloses the process of heating the mixture at temperatures between 1000°C -1500°C, for 1 to about 6 hours (Fauzi [C7 L22-28]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” one of ordinary skill in the art would be able to select a heating temperature that will meet the required limitation of the claim.
Allowable Subject Matter
Claim 4 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 following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 4, Fauzi discloses an aspect ratio of 10 to 50 (Fauzi [C3 L26]). The aspect ratio taught in the prior art is far outside the range claimed range required by the instant claim. Therefore, claim 4 which requires the aspect ratio of the obtained hexagonal boron nitride powder to be between 1.0 to 5.0, is considered novel and nonobvious.
Response to Arguments
Applicant's arguments filed September 17th, 2025 have been fully considered but they are not persuasive.
On page 3 of the remarks of September 17th, 2025, applicant argues Fauzi does not teach or suggest the use of lithium with either potassium or sodium as claimed. This is unpersuasive because Fauzi discloses such a combination. Regarding the alkali metal compounds, column 7, lines 27-28, of Fauzi teaches, “At least two of these compounds may be used in combination.” Applicant argues that Fauzi does not use a combination of lithium with either sodium or potassium in the examples. However, preferred embodiments do not teach away from the broader disclosure of the patent. See MPEP 2123.
Applicant argues unexpected results specifically citing Reference Example 6, which uses 100% lithium, and does not produce what applicant considers to be a “thick” particle. Applicant also mentions sodium and potassium alone are not shown in the instant examples to produce thick particles.
This was found to be unpersuasive because Reference Examples 1-5 use 100% lithium and produce thick particles. Thus, the difference in thickness between Reference Examples 1-5 and Reference Example 6 cannot be attributed to the lithium content, but appear instead to be dependent on the B/AM ratio, a parameter met by Fauzi. See the rejection above. Further, Fauzi clearly suggests using a combination of alkali metals. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Also, applicant has not shown the claimed range to be critical, and the results shown by applicant are not commensurate in scope with the claimed range. The claims require lithium to be 50-90 mol. % of the alkali metals. Table 1, pointed to by applicant, only shows results at 50%, 58%, and 100% lithium. The data presented does not establish the criticality of the claimed range because the data presented does not show data from the entire claimed range. Further, results are only shown for carbonate compounds, but claim 1 encompasses any alkali metal compound.
MPEP 716.02(d) II. also states, “[] applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” The presented data does not show any data outside the claimed range and close to the endpoints of the range that would establish 50 mol % and 90 mol % as critical values.
The specific combinations of alkali metals and their amounts are obvious from Fauzi as discussed in the rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNETTE H PHAN whose telephone number is (703)756-4520. The examiner can normally be reached M-F 8:30-6:30 EST.
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/ANNETTE PHAN/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736