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 Amendment
The Amendment filed 26 December 2025 has been entered. Claims 1-2 are amended; claims 3-4 are added. Accordingly, claims 1-4 remain pending in the application. Applicant’s amendments to the claims have overcome each and every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed 13 November 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The specification recites heating in "the atmosphere" ([0012], [0034]-[0036]) or "an atmosphere" [0027], but there is no disclosure of heating in air, or what the composition of the atmosphere is.
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 1-4 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 1, line 5, recites "…disperse the starting material in the organic solvent". It is unclear how the starting material is dispersed in the organic solvent as the starting material appears to comprise the organic solvent (claim 1, lines 3-5). This limitation is interpreted as requiring dispersing the boron nitride nanotubes in the organic solvent.
Claim 1, lines 9-11, recite "heating a residue…to remove the polymer dispersant by pyrolysis". It is unclear if the heating and the pyrolysis are the same or separate steps. It is further unclear if pyrolysis is taking place as the heating appears to take place in air (per claims 3-4), and pyrolysis is defined as the thermal decomposition of organic materials at elevated temperatures in an inert atmosphere, that is, in the absence of oxygen, but air comprises oxygen. Therefore, this limitation is interpreted as requiring heating the residue in air at a temperature between 300°C and 900°C.
Claim 3, line 2, and Claim 4, line 2, recite “pyrolysis…is carried out by heating in air”. It is unclear if pyrolysis is taking place as the heating appears to take place in air, and pyrolysis is defined as the thermal decomposition of organic materials at elevated temperatures in an inert atmosphere, that is, in the absence of oxygen, but air comprises oxygen. Therefore, this limitation is interpreted as requiring heating the residue in air at a temperature between 300°C and 900°C.
Claim 2 is indefinite as it depends from an indefinite base and fail to cure the deficiencies of the base 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bando (JP 2007230830) as evidenced by O'Brien ("Efficient multilayer electroluminescence devices with poly(m-phenylenevinylene-co-2,5-dioctyloxy-p phenylenevinylene) as the emissive layer"), Min (KR 20210020695), Fukumori ("Effects of radical initiators, polymerization inhibitors, and other agents on the sonochemical unzipping of double-walled carbon nanotubes"), and Wondmagegn ("A study of C60–poly(m-phenylenevinylene-co-2,5-dioctoxy-p phenylenevinylene) nanocomposite") .
Regarding Claim 1, Bando discloses a method for purifying (purifying meets the broad limitation of processing) boron nitride nanotubes [0022], the method comprising: ultrasonic treatment (ultrasonic treatment meets the limitation of mixing) of a solution of boron nitride nanotubes, poly[m-phenylenevinylene-co-(2,5-dioctoxy-p-phenylenevinylene)] (aka PmPV), and an organic solvent at room temperature to disperse the boron nitride nanotubes in the organic solvent [0021], such that a suspension is obtained. Bando further discloses obtaining a boron nitride nanotube dispersion (boron nitride nanotube dispersion meets the limitation of a dispersion liquid including the boron nitride nanotubes) by centrifugation (aka centrifugal separation) to remove impurities (impurities meets the limitation of by-products contained in the starting material; [0021]). Bando further discloses evaporating the organic solvent from the boron nitride nanotube dispersion, resulting in boron nitride nanotubes coated/wrapped with PmPV, and heating the boron nitride nanotubes wrapped with PmPV in air to remove the PmPV [0022], wherein heating is in air is at a temperature of 700°C [0028].
Bando further discloses the PmPV is a polymer [0012].
Bando is silent to PmPV being a nonionic polymer.
O’Brien, however, teaches PmPV is a PPV (polyphenylene vinylene) derivative (pg. 2667, Col. 2, par. 2), and Min discloses derivatives of polyphenylene vinylene are classified as nonionic polymers [0041], such that the PmPV of Bando meets the limitation of a nonionic polymer.
Bando is further silent to PmPV being a dispersant.
Fukumori, however, teaches PmPV is a dispersant (pg. 1, Col. 1, par. 3).
Bando is further silent to PmPV having sp3-bonded CH groups.
Wondmagegn, however, illustrates PmPV, which comprises sp3-bonded CH groups (pg. 2394, Fig. 1; highlighted):
PNG
media_image1.png
352
814
media_image1.png
Greyscale
Regarding Claim 3, Bando discloses heating the boron nitride nanotubes wrapped with PmPV in air to remove the PmPV [0022], wherein heating it air is at a temperature of 700°C (700°C meets the limitation of between 300°C and 900°C; [0028]).
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.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Bando (JP 2007230830) in view of Coleman (US 2010/0304136).
Regarding Claim 2, Bando teaches the elements as described above with regards to claim 1.
Bando discloses the use of a PmPV polymer [0012].
Bando is silent to the polymer dispersant including a cellulose polymer or a vinyl polymer.
Coleman discloses coating nanotubes with a polymer [0016] by adding the polymer to a solvent, and adding nanotubes to the polymer solvent [0023]-[0028], wherein the nanotube is selected from boron-nitride nanotube, etc. [0036], and the polymer is selected from PmPV [0034], polyvinyl alcohol (PVA) (polyvinyl alcohol meets the limitation of a vinyl polymer per [0020] of the Specification of the present application; [0035]), etc., and the solvent may be toluene (toluene meets the limitation of an organic solvent; [0067]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bando to incorporate the teachings of Coleman to use a vinyl polymer, such as polyvinyl alcohol, because Bando teaches the claimed invention except that PmPV is used instead of PVA, and Coleman teaches that the PmPV and PVA are equivalent products known in the art of polymer-coating BNNTs. Therefore, because the two products were art recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute the PmPV for the PVA.
Regarding Claim 4, Bando discloses heating the boron nitride nanotubes wrapped with PmPV in air to remove the PmPV [0022], wherein heating it air is at a temperature of 700°C (700°C meets the limitation of between 300°C and 900°C; [0028]).
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Bando (JP 2007230830) in view of Coleman (US 2010/0304136).
An alternative rejection of claim 1 is provided in case PmPV is not a nonionic polymer dispersant having an sp3-bonded CH group.
Alternatively, regarding Claim 1, Bando discloses a method for purifying (purifying meets the broad limitation of processing) boron nitride nanotubes [0022], the method comprising: ultrasonic treatment (ultrasonic treatment meets the limitation of mixing) of a solution of boron nitride nanotubes, poly[m-phenylenevinylene-co-(2,5-dioctoxy-p-phenylenevinylene)] (aka PmPV), and an organic solvent at room temperature to disperse the boron nitride nanotubes in the organic solvent [0021], such that a suspension is obtained. Bando further discloses obtaining a boron nitride nanotube dispersion (boron nitride nanotube dispersion meets the limitation of a dispersion liquid including the boron nitride nanotubes) by centrifugation (aka centrifugal separation) to remove impurities (impurities meets the limitation of by-products contained in the starting material; [0021]). Bando further discloses evaporating the organic solvent from the boron nitride nanotube dispersion, resulting in boron nitride nanotubes coated/wrapped with PmPV, and heating the boron nitride nanotubes wrapped with PmPV in air to remove the PmPV [0022], wherein heating is in air is at a temperature of 700°C [0028].
Bando is silent to using a nonionic polymer dispersant having an sp3-bonded CH group.
Coleman discloses coating nanotubes with a polymer [0016] by adding the polymer to a solvent, and adding nanotubes to the polymer solvent [0023]-[0028], wherein the nanotube is selected from boron-nitride nanotube, etc. [0036], and the polymer is selected from PmPV [0034], polyvinyl alcohol (PVA) (polyvinyl alcohol meets the limitation of a nonionic polymer dispersant having an sp3-bonded CH group per [0020] of the Specification of the present application; [0035]), etc., and the solvent may be toluene (toluene meets the limitation of an organic solvent; [0067]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bando to incorporate the teachings of Coleman to use a nonionic polymer dispersant having an sp3-bonded CH group, such as polyvinyl alcohol, because Bando teaches the claimed invention except that PmPV is used instead of PVA, and Coleman teaches that the PmPV and PVA are equivalent products known in the art of polymer-coating BNNTs. Therefore, because the two products were art recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute the PmPV for the PVA.
Regarding Claim 2, Bando is silent to the polymer dispersant including a cellulose polymer or a vinyl polymer.
Coleman discloses coating nanotubes with a polymer [0016] by adding the polymer to a solvent, and adding nanotubes to the polymer solvent [0023]-[0028], wherein the nanotube is selected from boron-nitride nanotube, etc. [0036], and the polymer is selected from PmPV [0034], polyvinyl alcohol (PVA) (polyvinyl alcohol meets the limitation of a vinyl polymer per [0020] of the Specification of the present application; [0035]), etc., and the solvent may be toluene (toluene meets the limitation of an organic solvent; [0067]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bando to incorporate the teachings of Coleman to use a vinyl polymer, such as polyvinyl alcohol, because Bando teaches the claimed invention except that PmPV is used instead of PVA, and Coleman teaches that the PmPV and PVA are equivalent products known in the art of polymer-coating BNNTs. Therefore, because the two products were art recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute the PmPV for the PVA.
Regarding Claim 3, Bando discloses heating the boron nitride nanotubes wrapped with PmPV in air to remove the PmPV [0022], wherein heating it air is at a temperature of 700°C (700°C meets the limitation of between 300°C and 900°C; [0028]).
Regarding Claim 4, Bando discloses heating the boron nitride nanotubes wrapped with PmPV in air to remove the PmPV [0022], wherein heating it air is at a temperature of 700°C (700°C meets the limitation of between 300°C and 900°C; [0028]).
Response to Arguments
Applicant’s arguments, see "Remarks", pg. 4-5, filed 26 December 2025, with respect to the rejection(s) of claim(s) 1-2 under 35 U.S.C. 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Bando (JP 2007230830) and alternatively, in view of Bando (JP 2007230830) and Coleman (US 2010/0304136).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SLONE ELZABETH SIMKINS whose telephone number is (571)272-3214. The examiner can normally be reached Monday - Friday 8:30AM-4:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH WALKER can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.E.S./Examiner, Art Unit 1735
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735