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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/30/2025 has been entered.
Claim Rejections - 35 USC § 112
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 2-9 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.
The term “uniformly” in claims 2-9 is a relative term which renders the claim indefinite. The term “uniformly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “high” in claim 2, line 5 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20180369991(US’991), further in view of US20080076856 (US’856).
Regarding claim 2, US’991 discloses a surface modified abrasive particle may include a core abrasive particle and a coating functionally connected to a surface of the core abrasive particle. The core abrasive particle may have a median particle size of at least about 0.06 microns. The coating may include tyrosine (hydrophobic compound). See abstract. The unprocessed core abrasive particle may include a particular material. For example, the unprocessed core abrasive particle may include alumina, zirconia, oxides, carbides, nitrides, borides, diamond, superabrasives, white alundum, brown alundum, microcrystalline alumina abrasive, fused alumina zirconia, silicon carbide, boron carbide, boron nitride, silica or any combinations thereof. See [0031].
But it is silent an oxide layer formed on a surface of the inorganic fine particle and the organic molecule organically modifying the surface of the inorganic fine particle via the oxide layer.
US’856 discloses a boron nitride composition (inorganic particles, polishing agent) having its surface treated with a coating layer comprising at least an organosilicon compound. The organosiloxane compound has the formula (RR′SiO-)n, where R, R′ are the same or different and are selected from the group of H, alkyl (linear or branched), aryl and substituted aryl; n has a value ranging from 3-16 for cyclic compounds and 2 to 1 million for linear compounds. See [0013]. The boron nitride powder surface is first treated by either a calcination process, or by coating with at least an inorganic compound for the surface to have a plurality of reactive sites containing at least a functional group that is reactive to at least one functional group of the organosilicon compound. See Abstract. The uncoated BN powder particles are calcined at a sufficiently high temperature for a sufficient period of time for to increase the number of oxygen atoms in the BN by at least 100%. In another embodiment, the BN powder particles are calcined for a sufficient period of time to obtain a powder comprising at least 1% of oxygen atom. In a third embodiment, the BN powder particles are calcined for a sufficient of time and at a sufficient temperature so that the elemental composition of the treated powder has at least 3% oxygen atoms. As means of calcination, electric furnace, gas furnace, rotary kiln and continuous furnace can be employed in so far as an oxidizing environment (e.g., air) is ensured. See [0021]. Thus, the oxide layer is formed. In the alterative, the boron nitride powder is first treated by coating the boron nitride powder with at least one of alumina, silica, zirconia, boria, titania, ceria, germania, tantalum oxide, cesium oxide, yttrium oxide, colloidal yttria, magnesia, thoria, phosphate, and mixtures thereof. See claim 8.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the instant application to form an oxide layer the organic molecule group organically modifying the surface of the inorganic fine particle via the oxide layer motivated by the fact that US’858, also drawn to surface modify inorganic particles as polishing agent, discloses such method can increase the reactive sites ([ 0003], [0021] and [0024]).
As for the elemental analysis detection of atom, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). It is noted that claims are product-by-process claims. Eventhough product-by- process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted). US’856 discloses that organosilicon compounds may be used in gaseous, liquid or solid form. The solid organosilicon compounds may be first dissolved in a liquid carrier before being applied to the BN particles. See [0034]. The amount of coupling agent used to functionalize the BN of the invention depends on the coating method and the final end-use application. In one embodiment, a sufficient amount of coupling agent is used to get a single layer of silicone coating on the surface of the BN particles. In one embodiment, a sufficient amount of organosilicon compound is used to coat at least 30% of the surface of the BN particles. See [0036].
Regarding claim 3, US’856 discloses that the 1st coating material comprises silicon oxides derived from discrete colloidal silica particles averaging 10 to 100 nm in size. In a second embodiment, the BN particles are wet coated with an aqueous solution of colloidal silica particles with average particle sizes ranging from 20 to 50 nm. See {0024]. Thus, one of ordinary skill in the art would have optimized, by routine experimentation, the layer thickness to obtain the desired effect. In re Boesch, 617 F. 2d. 272,205 USPQ 215 (CCPA 1980). Since it has been held that where general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Regarding claims 4-5, US’991 discloses the surface coverage in ([0063]).
US’856 discloses that the amount of agent used to functionalize particles depends on the coating method and the final end-use application. In one embodiment, a sufficient amount of agent is used to get a single layer on the surface of the particles. In one embodiment, a sufficient amount of agent used to coat at least 30% of the surface of particles. See [0034].
Claim(s) 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20080076856 (US’856).
Regarding claim 6, US’856 discloses a boron nitride composition having its surface treated with a coating layer comprising at least an organosilicon compound. In one embodiment, the boron nitride powder surface is first treated by either a calcination process, or by coating with at least an inorganic compound for the surface to have a plurality of reactive sites containing at least a functional group that is reactive to at least one functional group of the organosilicon compound. The organosiloxane compound has the formula (RR′SiO-)n, where R, R′ are the same or different and are selected from the group of H, alkyl (linear or branched), aryl and substituted aryl; n has a value ranging from 3-16 for cyclic compounds and 2 to 1 million for linear compounds. See [0013]. The organosiloxane compound meets the limitation of the claimed organic molecule.
The uncoated BN powder particles are calcined at a sufficiently high temperature for a sufficient period of time for to increase the number of oxygen atoms in the BN by at least 100%. In another embodiment, the BN powder particles are calcined for a sufficient period of time to obtain a powder comprising at least 1% of oxygen atom. In a third embodiment, the BN powder particles are calcined for a sufficient of time and at a sufficient temperature so that the elemental composition of the treated powder has at least 3% oxygen atoms. As means of calcination, electric furnace, gas furnace, rotary kiln and continuous furnace can be employed in so far as an oxidizing environment (e.g., air) is ensured. See [00.21]. Thus, the oxide layer is formed.
In the alterative, the boron nitride powder is first treated by coating the boron nitride powder with at least one of alumina, silica, zirconia, boria, titania, ceria, germania, tantalum oxide, cesium oxide, yttrium oxide, colloidal yttria, magnesia, thoria, phosphate, and mixtures thereof. See claim 8.
In one embodiment, one or more methyl groups in the organosilicon compound may be substituted with one or more functional groups or moieties, to further increase the hydrophobic characteristics of the BN particles coated by the coupling agent of the invention. Particular examples of the functional groups include flurocarbyl such as trifluoropropyl, and perfluoropropyl. See [0031].
As for the elemental analysis detection of atom, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
The BN powder has an average particle size of 5 to 500 μm. In a third embodiment, from 10 to 100 μm. In a fourth embodiment, the BN powder has an average particle size of 1 to 30 μm. In one embodiment. See [0015].
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
It is noted that claims are product-by-process claims. Eventhough product-by- process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted). US’856 discloses that organosilicon compounds may be used in gaseous, liquid or solid form. The solid organosilicon compounds may be first dissolved in a liquid carrier before being applied to the BN particles. See [0034]. The amount of coupling agent used to functionalize the BN of the invention depends on the coating method and the final end-use application. In one embodiment, a sufficient amount of coupling agent is used to get a single layer of silicone coating on the surface of the BN particles. In one embodiment, a sufficient amount of organosilicon compound is used to coat at least 30% of the surface of the BN particles. See [0036].
Regarding claim 7, US’856 discloses that the 1st coating material comprises silicon oxides derived from discrete colloidal silica particles averaging 10 to 100 nm in size. In a second embodiment, the BN particles are wet coated with an aqueous solution of colloidal silica particles with average particle sizes ranging from 20 to 50 nm. See {0024]. Thus, one of ordinary skill in the art would have optimized, by routine experimentation, the layer thickness to obtain the desired effect. In re Boesch, 617 F. 2d. 272,205 USPQ 215 (CCPA 1980). Since it has been held that where general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223). The organosilicon coupling compound may be applied to the BN neat (i.e., in the absence of a carrier or other co-feed), or with an organic carrier. These organosilicon compounds may be used in gaseous, liquid or solid form. The solid organosilicon compounds may be first dissolved in a liquid carrier before being applied to the BN particles. See [0034].
Regarding claims 8-9, US’856 discloses that the amount of coupling agent used to functionalize the BN of the invention depends on the coating method and the final end-use application. In one embodiment, a sufficient amount of coupling agent is used to get a single layer of silicone coating on the surface of the BN particles. In one embodiment, a sufficient amount of organosilicon compound is used to coat at least 30% of the surface of the BN particles. See [0034].
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
The applicant argues that the amended claim 2 recites that the oxide layer, the oxyhydroxide layer, and/or the hydroxide layer are uniformly formed on a surface of the inorganic fine particle and further clarifies that the oxide layer is uniformly formed by high-temperature oxidation in air at a temperature of at least 600°C (also appliable to claim 6), the oxyhydroxide layer is uniformly formed by high-temperature oxidation in an amount of water vapor, and the hydroxide layer is uniformly formed by hydrothermal treatment, which processes produce the claimed uniformly formed layer(s).
The Examiner respectfully submits that the term “uniformly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. US’856 discloses that organosilicon compounds may be used in gaseous, liquid or solid form. The solid organosilicon compounds may be first dissolved in a liquid carrier before being applied to the BN particles. See [0034]. The amount of coupling agent used to functionalize the BN of the invention depends on the coating method and the final end-use application. In one embodiment, a sufficient amount of coupling agent is used to get a single layer of silicone coating on the surface of the BN particles. In one embodiment, a sufficient amount of organosilicon compound is used to coat at least 30% of the surface of the BN particles. See [0036]. Thus “uniform formed” is met. It is noted that claims are product-by-process claims. Eventhough product-by- process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted).
Conclusion
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731