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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 3-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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) 1 and 3-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al. (KR 10-2105364; translation provided by Google Patents 09/16/2025) in view of Nogami (JP2022041651; translation provided by Google Patents 02/07/2026).
Regarding claim 1, Jeong et al. teaches preparing a dispersion by mixing a benzene compound containing a hydrophilic functional group and boron nitride which meets a broad and reasonable interpretation of a boron nitride nanotubes; and a first layer located on at least a portion of a surface of the boron nitride nanotubes, wherein the first layer forms Pi (¶) bonds with the boron nitride nanotubes (page 2/10). Jeong et al. teaches the benzene compound containing the hydrophilic functional group, the hydrophilic functional group may include a hydroxy group which meets a broad and reasonable interpretation of the first layer includes hydroxyphenyl groups (page 2/10). Jeong et al. does not teach wherein the first layer includes at least one of tannic acid, gallic acid, catechol, epigallocatechin, pyrogallol, hexahydroxydiphenic acid, ellagic acid, or chlorogenic acid, as a polyphenol group.
Nogami teaches inorganic filler of the present invention has boron nitride particles and a coating layer formed on the surface of the boron nitride particles, the coating layer being formed from a polyhydroxy compound, the polyhydroxy compound being at least one selected from the group consisting of catechol, pyrogallol, gallic acid, tannic acid, tartaric acid and derivatives thereof (abstract). Nogami teaches boron nitride h-BN has a crystal structure belonging to a hexagonal system, does not have a functional group on the ab axis surface, and has a structure having some hydroxyl groups and amino groups only on the c axis and therefore, the dispersibility in the polymer matrix or the like is poor, and when a large amount of boron nitride particles are mixed in the polymer matrix, the viscosity of the boron nitride composition becomes extremely high, the mixing becomes difficult, and the dispersibility decreases (page 3). Nogami teaches , by forming a coating layer of the polyhydroxy compound on the surface of the boron nitride aggregate as in the present invention, the viscosity of the boron nitride composition is lowered and the dispersibility in the polymer matrix or the like is improved (page 3). Nogami teaches the boron nitride h-BN has anisotropy, and when it is mixed with a polymer matrix to form a boron nitride composition, the boron nitride h-BN is oriented and the anisotropy of thermal conductivity is formed (page 3). It would have been obvious to one of ordinary skill in the art at the time of filing to coat the boron nitride nanotubes taught by Jeong et al. with polyhydroxy compound, the polyhydroxy compound being at least one selected from the group consisting of catechol, pyrogallol, gallic acid, tannic acid, tartaric acid and derivatives thereof because the coating improves the viscosity and anisotropy of the boron nitride nanotubes.
Regarding claim 3, Jeong et al. teaches hydrophilic functional groups, which can significantly increase the hydrophilicity of boron nitride when modifying the surface of boron nitride which meets abroad and reasonable interpretation of wherein the surface-treated boron nitride nanotube is hydrophilic (page 2/10).
Regarding claims 4, 6 and 7, Jeong et al. teaches a heat-radiating composition comprising a hydrophilic surface-modified boron nitride and a binder prepared boron by the above-described method for producing a hydrophilic surface-modified boron nitride wherein the binder comprises acrylic resin, phenol resin, urethane resin, melamine resin, fluorine resin, silicone-based resin, and/or epoxy-based resin which meets a broad and reasonable interpretation of further comprising a second layer on the first layer, wherein the second layer includes amine groups or thiol groups as hydrocarbon groups (page 3/10).
Claim 5 recites wherein the amine groups or thiol groups are added to the hydroxyl groups of the first layer by Michael addition which is a process limitation. Claim 1 is a product claim and as such claim 5 is not limiting per MPEP §2113. “[E]ven though 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 12/18/2026 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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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/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 02/07/2026