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 .
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang et al., “Thin-walled boron nitride microtubes exhibiting intense band-edge UV emission at room temperature”, Nanotechnology 20 (2009).
Regarding claims 1-2, Huang teaches hollow boron nitride microtube particles which are “long and thin” in shape. See the abstract and Figure 2(a). A diameter of 1-3 µm and lengths of hundreds of microns is disclosed, giving an aspect ratio much greater than 1.5. See Section 3.1. The disclosure of a length of hundreds of microns meets the claim limitations requiring “a maximum length (Lb) of the boron nitride particle in a direction perpendicular to a direction of maximum length (La) of the boron nitride particle is 50 µm or longer”. It is noted here that La has no specific length limitation and thus the diameter of the product of Huang is considered to be La as it is the maximum length in that direction and is perpendicular to direction b.
The reference is silent regarding the behavior of the BN particles when subjected to the loading and unloading step specified in the claim. However, the particles of Huang are the same material claimed, made of boron nitride, and are the same shape and structure claimed (hollow, long and thin), therefore they would have the same structural properties as the product claimed and meet the claim limitations.
Regarding claim 3, Huang teaches microtubes, i.e. a shell of boron nitride surrounding a hollow part. See Figures 3-4 and associated text.
Response to Arguments
The terminal disclaimer filed 12/23/2025 has been approved and the Non-Statutory Double Patenting rejections in view of applications 18/041851 and 18/687278 have been withdrawn.
Applicant’s amendment and arguments, filed 12/23/2025, with respect to the 102 rejection of claims 1-3 as being anticipated by Arslan et al. have been fully considered and are persuasive. The rejection of claims 1-3 has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Huang et al.
Applicant argues on page 6 of the remarks of 12/23/2025 that the claims require a diameter greater than 50 µm and that Huang (and other cited references) does not teach this feature. In response, it is noted that the claims as currently written do not require the 50 µm or longer length to be the diameter of the particle. See the explanation in the 35 USC 102 rejection above. The claim only requires a maximum length in one direction to be 50 µm or more and does not specify the direction other than saying it is perpendicular to another direction which also has a maximum length. The new limitation is met by Huang.
Applicant argues that the behavior of a boron nitride particle to loading and unloading steps would change depending on the size. However, as explained above, a specific size is only required for one direction in the claims. Further, this assertion amounts to attorney arguments presented without evidence and thus is not convincing. See MPEP 716.01(c).
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 ANTHONY J ZIMMER whose telephone number is (571)270-3591. The examiner can normally be reached Monday - Friday, 9:30 AM - 6 PM EST.
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, Alexa Neckel can be reached at 571-272-2450. 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.
ANTHONY J. ZIMMER
Supervisory Patent Examiner
Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
Prosecution Insights