DETAILED ACTION
Claims 1-20 were subject to restriction requirement mailed on 01/08/2026.
Applicant filed a response, and elected Group I, claims 1-4 and 10-12, and withdrew claims 5-9 and 13-20, without traverse on 02/04/2026.
Claims 1-20 are pending, and claims 5-9 and 13-20 are withdrawn.
Claims 1-4 and 10-12 are rejected.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4 and 10-12 in the reply filed on 02/04/2026 is acknowledged.
Claims 5-9 and 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/04/2026.
Claim Interpretation
Claim 1, line 2, recites a phrase “a [100] plane”. The examiner interprets that this phrase refers to (100) plane, given that [100] is a vector to describe a direction, and (100) is a proper Miller Indices to describe a crystal plane.
Claim 2, line 2, recites a phrase “a [101] plane”. The examiner interprets that this phrase refers to (101) plane, given that [101] is a vector to describe a direction, and (101) is a proper Miller Indices to describe a crystal plane.
Claim Objections
Claims 1-2, 4 and 12 are objected to because of the following informalities:
Claim 1, line 2, it is suggested to amend “[100]” to “(100)”, for proper Miller Indices to describe a crystal plane.
Claim 2, line 2, it is suggested to amend “[101]” to “(101)”, for proper Miller Indices to describe a crystal plane.
Claim 4, line 5, it is suggested to amend “S=(D90-D10)/D50 … (1)” to “S=(D90-D10)/D50 (1)”, to ensure clarity.
Claim 11, line 4, it is suggested to amend “S=(D90-D10)/D50 … (1)” to “S=(D90-D10)/D50 (1)”.
Claim 12, line 4, it is suggested to amend “S=(D90-D10)/D50 … (1)” to “S=(D90-D10)/D50 (1)”.
Appropriate correction is required.
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 1-4 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Mitsuru et al., JP 2019073419A (Mitsuru) (provided in IDS received on 03/14/2023).
The examiner has provided a machine translation of Mitsuru et al., JP 2019073419A (Mitsuru). The citation of the prior art set forth below refers to the machine translation.
Regarding claims 1-2, Mitsuru teaches zinc oxide particles having excellent thermal conductivity (Mitsuru, Abstract); the zinc oxide particles is an accumulation structure of plate-like small pieces (Mitsuru, page 3, 4th paragraph), reading upon having a polyhedral shape.
Mitsuru further teaches that the zinc oxide particles exhibit an X-ray diffraction pattern such as cubic and cubic face-centered structures (Mitsuru, page 2, 4th paragraph), which would necessarily have a (100) plane.
the zinc oxide can be baked as needed, as the firing temperature is higher, the crystallite diameter tends to be larger, and the thermal conductivity of the zinc oxide particles can be further enhanced (Mitsuru, page 6, 3rd paragraph).
Further regarding claims 1-2, although there are no disclosures on the amounts of crystallite diameter of a (100) plane or a (101) plane, as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of crystallite diameter of a (100) plane and a (101) plane, including over the amounts presently claimed, in order to achieve the desired thermal conductivity, and thereby arrive at the claimed invention.
Regarding claims 3 and 10, as applied to claims 1 and 2 respectively, Mitsuru further teaches the median diameter is in a range of 15-30 µm (Mitsuru, Abstract).
Regarding claims 4, 11-12, as applied to claims 1-3 respectively, Mitsuru further teaches the zinc oxide particles preferably have a D90/D50 of 1.5 or less (Mitsuru, page 4, 1st paragraph), wherein (D90-D10)/D50 would necessarily be 1.5 or less.
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732