DETAILED ACTION
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 § 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Bando et al. (JP 2007/031167 A), in view of Yao et a. (CN 107673318 A).
Note; Yao is provided by its English translation.
Regarding claim 1, Bando teaches boron nitride particles in shape of horn (nano-boron) or cone wherein its diameter increases from one end to the other end; [abstract, claims 4-6].
Bando does not teach the instantly claimed particle lengths. However, the analogous art of Yao teaches a method of making thermally conductive (4, 14, 47) boron nitrate nanoparticles with diameter of 10-150 nm and length of 20-100 microns; [abstract, 0045, claim 12]. At the time before the effective filing date of invention it would have been obvious to use Yao’s longer conical boron nitrides for Bando’s dielectric and thermal conductive material with the motivation of providing a more efficient heat release (due to providing a higher surface area for thermal conduction) from electronic equipment. Furthermore, it should be noted, the given range of particle diameters (10-150 nm) and particle lengths range of 20-100 micron, it is quite reasonable to assume that some (irregular) fraction of Yao’s boron nitride particles would naturally assume a conical shape which further render the claim obvious.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Bando et al. (JP 2007/031167 A), Yao et a. (CN 107673318 A) as applied to claim 1, and further in view of Kim et al. (KR 2018/0032213 A).
Regarding claims 5-6, Bondo does not teach the instantly claimed resin. However, the analogous art of Kim et al. teaches boron nitride particles and method of making a resin material comprising boron nitride particles; [abstract, claims 1-5, 17]. At the time before the effective filing date of invention, it would have been obvious to utilize the mixture of boron nitride particles within a resin with the motivation of having improved thermal conductivity and electrical insulation, “as an article manufactured therefrom, and a method for manufacturing the same are provided”; [claims 1, 4-5, 0053], as taught by Kim.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Bando et al. (JP 2007/031167 A), Yao et a. (CN 107673318 A), Kim et al. (KR 2018/0032213 A), as applied to claim 6, and further in view of Otsuka et al. (US 2018/0354792 A1).
Regarding claim 7, Bondo does not teach the pulverized boron nitride particles. However, the analogous art of Otsuka teaches a resin comprising pulverized boron nitride particles; [153]. At the time before the effective filing date of invention, it would have been obvious to use pulverized boron nitride particles within a resin with the motivation of having enhanced thermal conductivity and electrical insulation through uniform mixture within the resin material.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kuwabara et al. (JP2009155176 A), in view of Yao et a. (CN 107673318 A).
Regarding claim 3, Kuwabara teaches boron nitride particles (as nanofibers) wherein its diameter varies through the length of fiber, as having a wider and narrower side as instantly claimed; [20]. Kuwabara further teaches that plurality of the fibers is connected to each other at the ends thus taking radial shapes or a branched form; [21].
Kuwabara does not teach the instantly claimed particle lengths. However, the analogous art of Yao teaches a method of making thermally conductive (4, 14, 47) boron nitrate nanoparticles with diameter of 10-150 nm and length of 20-100 microns; [abstract, 0045, claim 12]. At the time before the effective filing date of invention it would have been obvious to use Yao’s longer conical boron nitrides for Kuwabara’s dielectric and thermal conductive material with the motivation of providing a more efficient heat release (due to providing a higher surface area for thermal conduction) from electronic equipment. Furthermore, it should be nonoted thathe given range of particle diameters (10-150 nm) and particle lengths range of 20-100 micron, it is quite reasonable to assume that some (irregular) fraction of Yao’s boron nitride particles would naturally assume a conical shape which further render the claim obvious.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kuwabara et al. (JP2009155176 A), Yao et a. (CN 107673318 A), as applied to claim 3 and further in view of Kim et al. (KR 2018/0032213 A).
Regarding claims 8-9, Kuwabara does not teach the instantly claimed resin. However, the analogous art of Kim et al. teaches boron nitride particles and method of making it with a resin; [abstract, claims 1-5, 17, 0054]. At the time before the effective filing date of invention, it would have been obvious to utilize the Kim’s mixture of boron nitride particles within a resin with the motivation of having improved thermal conductivity and electrical insulation, (“as an article manufactured therefrom, and a method for manufacturing the same are provided”); [claims 1, 4-5, 0054], as taught by Kim.
Claim 10 rejected under 35 U.S.C. 103 as being unpatentable over Kuwabara et al. (JP2009155176 A), Yao et a. (CN 107673318 A), Kim et al. (KR 2018/0032213 A), as applied to claim 9 & 3, and further in view of Otsuka et al. (US 2018/0354792 A1).
Regarding claim 10, Kuwabara does not teach the pulverized boron nitride particles. However, the analogous art of Otsuka teaches a resin comprising pulverized boron nitride particles; [153]. At the time before the effective filing date of invention, it would have been obvious to use pulverized boron nitride particles within a resin material with the motivation of having a uniformly mixed resin thus an enhanced thermal conductivity and electrical insulation.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3 and 5-10 have been considered but are moot because the new ground of rejection does not rely on previous combination of reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dr. M. Asdjodi whose telephone number is (571)270-3295. The examiner can normally be reached on 10 AM- 8 PM Flex..
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/M.R.A./
Examiner, Art Unit 1767
2026/08/26
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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