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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 does not present any new limitation when compared to claim 1, and in fact is broader than claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bando et al. (JP 2007/031167 A).
Note; Bondo is provided by its English translation.
Regarding claims 1-2, Bando teaches a boron nitride particles in shape of horn (nanohoron) or cone; [abstract, claims 4-6].
Claim 3 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kuwabara et al. (JP2009155176 A). Note; Kuwabara is provided by its English translation.
Regarding claim 3, Kuwabara teaches boron nitride particles (as nanofibers) wherein its diameter varies through the length of fiber, as having a wider and a narrower sides as instantly claimed; [20]. Kuwabara further teaches that a plurality of the fibers are connected to each other at the ends thus taking a radial shapes or a branched form; [21].
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.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Bando et al. (JP 2007/031167 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 a 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”; [claim 4], 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), Kim et al. (KR 2018/0032213 A), as applied to claim 1, 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 with a resin with the motivation of having enhanced thermal conductivity and electrical insulation.
Claims 4 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kuwabara et al. (JP2009155176 A), as applied to claim 3, and further in view of Kim et al. (KR 2018/0032213 A).
Regarding claims 4 and 8-9, Kuwabara does not teach the instantly claimed length of 80 micron or longer. However, the analogous art of Kim et al. teaches a boron nitride fibers with lengths of 100 to 500 microns; [33], and teaches a method (instant claim 9) of making a resin material mixed with boron nitride particles; [abstract, claims 1-5, 17, 53]. At the time before the effective filing date of invention, it would have been obvious to utilize the mixture of longer boron nitride fibrous 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”; [claim 4], as taught by Kim.
Claim 10 rejected under 35 U.S.C. 103 as being unpatentable over Kuwabara et al. (JP2009155176 A), Kim et al. (KR 2018/0032213 A), as applied to claim 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 with a resin with the motivation of having a uniformly mixed resin thus an enhanced thermal conductivity and electrical insulation.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dr. M. Reza Asdjodi whose telephone number is (571)270-3295. The examiner can normally be reached on 9 AM- 6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dr. Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.R.A./
Examiner, Art Unit 1767
2026/03/07
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767