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 .
Withdrawn Rejections
The 35 U.S.C. §102 rejection of claims 1 and 4 as over Bando et al. (JP 2004-161561), made of record in the office action mailed on 12/2/2025, page 2 has been withdrawn due to Applicant’s amendment in the response filed on 02/12/2026.
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) 1-2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Bando et al. (JP 2004-161561) in view of Ishida (JP 2017-094542) and Nakagawa et al. (WO 2020/031913).
Regarding claims 1-2, Bando discloses manufacturing a highly pure, small-diameter boron nitride nanotube (abstract). Bando discloses boron nitride nanotube having a bent shape (page 5, para 0021). As Bando discloses boron nitride nanotube, it therefore would be intrinsic that nanotube would be hollow.
However, Bando fails to disclose boron nitride nanotube has a ratio of a length of a perpendicular line L2 to a length of a straight line L1 is 0.2 or more and a first portion extending in a first direction with a length of 50 microns or longer and a second portion bending from the first portion with a length of 50 microns or longer and wherein the aspect ratio of first and second portion is less than 12.
Whereas, Ishida discloses a laminate having high heat dissipation performance including boron nitride nanotubes. (Abstract). The length of the boron nitride nanotubes is disclosed to be 1-200 microns (page 5, first paragraph) with an aspect ratio of 3 or more. (page 5, third paragraph).
Whereas, Nakagawa discloses a hexagonal boron nitride powder that exhibits excellent photoluminescence. This hexagonal boron nitride powder is configured such that, of the hexagonal boron nitride particles contained therein, the number of particles that are structured to be folded at an angle of 110-160° with respect to the (1, 0, 0) crystal plane of primary particles accounts for at least 30% (abstract). The length of the bent portion of the particle having a structure bent at an angle of 110 ° to 160 ° with respect to the crystal (1,0,0) plane of the particle is not particularly limited, but is preferably 3 μm or more (page 3, para 2). Thus, if the length of the nanotube is 100 microns and the length of the bent part is 50 microns (where the bent part corresponds to perpendicular line), then the length of the straight line would intrinsically be 50 microns.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to form the boron nitride nanotube of Bando having a length of 100 microns with a straight line having 50 microns and a perpendicular line having 50 microns and an aspect ratio of less than 12 as taught by Ishida and Nakagawa motivated by the desire to have increased insulation and mechanical strength.
Alternatively, with respect to the imitation of claimed ratio of claim 2 and first portion with a length of 50 microns and second portion with a length of 50 microns of claim 3, Change in size and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). MPEP 2144.04[R-1]
Regarding claim 4, Bando discloses boron nitride nanotube (see figure 1, para 0021) which would intrinscially have the hollow part surrounded by shell part formed of boron nitride.
Response to Arguments
Applicant’s arguments filed on 02/12/2026 has been fully considered, but they are not persuasive.
Applicant argues that Banda discloses a nanotube, whereas, claim presently claimed invention is microtube and Banda and Ishida discloses nanotubes which are inherently nano-scale structures and they do not teach or suggest a particle with a micro-scale diameter of at least 4.2 microns.
However, it should be noted that nanotube is well known term used and even though if an invention mentions nanotube, it does not limit the size to be in nm size, lot of times Applicant does address nanotube size in a range of 2000-3000 nm etc. Examiner would like to point out Ishida which discloses a laminate having high heat dissipation performance including boron nitride nanotubes. (Abstract). The length of the boron nitride nanotubes is disclosed to be 1-200 microns (page 5, first paragraph). Ishida mentions boron nitride nanotubes but with a length of 1-200 microns.
Applicant argues that Nakagawa discloses particles that are not hollow and which have a thickness of up to 3.0 µm, which does not meet the claimed diameter of at least 4.2 µm. The combination of the cited references therefore does not teach or suggest to those of ordinary skill in the art a particle with a micro-scale diameter of at least 4.2 µm.
However, Nakagawa is only used as teaching reference in order to teach to form the boron nitride nanotube of Bando with a straight line having 50 microns and a perpendicular line having 50 microns. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Applicant argues that the presently claimed invention, which is based on microstructures, goes against the conventional wisdom of turning toward nanostructures as embodied in the cited references. Those of ordinary skill in the art would have no motivation to produce the claimed invention which are micro-structured and also bent in shape.
However, it should be noted that it would have been obvious to one of ordinary skill in the art at the time the application was filed to form the boron nitride nanotube of Bando having a length of 100 microns with a straight line having 50 microns and a perpendicular line having 50 microns and an aspect ratio of less than 12 as taught by Ishida and Nakagawa motivated by the desire to have increased insulation and mechanical strength.
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.
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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