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 .
Election/Restrictions
Claims 17-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/05/2025.
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.
Claim 8 recites the limitation " the heat treatment" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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.
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(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al (CN 115491747 A), an English computer translation (CT) is provided, in view of Taniguchi et al (US 2010/0120187).
Hu et al teaches a process for producing hexagonal boron nitride (h-BN), the process comprising: an absorption step comprising performing a first soak at a first temperature that is high enough to cause nitrogen and boron absorption into a metallic solvent (CT [0011]-[0013] teaches BN source with Ni-Li flux (solvent) and heating to 1400-1600°C to fully melt and dissolve the source material and reach saturation); a nucleation step after the absorption step and comprising forming h-BN nuclei in the metallic solvent (CT [n0014] teaches cooling to achieve spontaneous nucleation); a growth step after the nucleation step and comprising performing a second soak at a second temperature less than the first temperature to grow the h-BN nuclei ( CT [n0039]-[n0045] teaches heating to 1650°C (first temperature) and then reducing temperature to 700°C to grow a H-BN single crystal). It is noted any amount of time sufficient to achieve nucleation would meet the claimed soak time to grow h-BN nuclei.
Hu et al does not explicitly teach after the growth step, separating the h-BN nuclei from the metallic solvent.
In a method of growing H-BN, Taniguchi et al teaches a mixture of the boron nitride raw material and the metal solvent comprising a transition metal; heating the mixture to cause the solvent to be melted with the boron nitride raw material dissolving in the solvent; holding the mixture at a temperature higher than that eutectic point for at least 4 hours makes sure it is melted; the temperature of the solvent with boron nitride dissolving in a super-saturation state is reduced down, thereby inducing recrystallization of boron nitride supersaturated in the solvent; and removing of the metal solvent using a mixed solution of hydrochloric acid and nitric acid, whereby the hBN crystal body alone may be collected (Fig 1; [0056]-[0078]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Hu et al by after the growth step, separating the h-BN nuclei from the metallic solvent after the growth step, as taught by Taniguchi et al, to obtain a h-BN crystal body alone.
Referring to claim 2-4, the combination of Hu et al and Taniguchi et al teaches a nucleation step comprising a cooling ramp from the first temperature to the second temperature with a cooling rate of 10-300 °C/hr (~0.166 to 5°C/min) (Hu CT 0014]). Overlapping ranges are prima facie obvious (MPEP 2144.05).
Referring to claim 5, the combination of Hu et al and Taniguchi et al teaches a nucleation step comprising a cooling ramp from the first temperature to the second temperature with a cooling rate of 10-300 °C/hr (~0.166 to 5°C/min) (Hu CT 0014]). The combination of Hu et al and Taniguchi et al does not explicitly teach greater than 5°C per minute. A prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to produce products having the same properties. Titanium metal Corp. Am v Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Referring to claim 6, the combination of Hu et al and Taniguchi et al teaches the raw material supplied to the metal solvent is kept in supersaturation during crystal growth (Taniguchi [0062], [0069]-[0072] and [0078]) and cooling the melt from a first temperature (1650°C) to a second temperature (700°C) to achieve spontaneous nucleation (CT [n0014] and [n0039]-[n0045] teaches cooling to achieve spontaneous nucleation).
Referring to claim 7, the combination of Hu et al and Taniguchi et al teaches the raw material supplied to the metal solvent is kept in supersaturation during crystal growth (Taniguchi [0062], [0069]-[0072] and [0078]) and cooling the melt from a first temperature (1650°C) to a second temperature (700°C) to achieve spontaneous nucleation (CT [n0014] and [n0039]-[n0045] teaches cooling to achieve spontaneous nucleation). Overlapping ranges are prima facie obvious (MPEP 2144.05).
Referring to claim 8, the combination of Hu et al and Taniguchi et al teaches purifying the atmosphere inside the furnace cavity by pumping argon gas and turning on a vacuum pump 2-3 times to reduce the pressure to below 1x10-4 Pa (HU CT [0011], [n0009]) which clearly suggests the purging the reaction chamber to remove contamination from the reaction chamber prior to the heat treatment.
Referring to claim 9, the combination of Hu et al and Taniguchi et al teaches purifying the atmosphere inside the furnace cavity by pumping argon gas and turning on a vacuum pump 2-3 times to reduce the pressure to below 1x10-4 Pa (HU CT [0011], [n0009]), which clearly suggests prevent contamination in the reaction chamber by controlling pressure in the reaction chamber.
Referring to claim 10, the combination of Hu et al and Taniguchi et al teaches a metal solvent comprising Ni (Hu CT[n0022]) and Ni-Co-Fe (Taniguchi [0060], [0080]).
Referring to claim 11, the combination of Hu et al and Taniguchi et al teaches an alumina (Al2O3) crucible (Hu CT [n0022]).
Referring to claim 12, the combination of Hu et al and Taniguchi et al teaches the BN source with Ni-Li flux (solvent) and heating to 1400-1600°C to fully melt and dissolve the source material and reach saturation (Hu CT [0011]-[0013]). Overlapping ranges are prima facie obvious (MPEP 2144.05).
Referring to claim 13, the combination of Hu et al and Taniguchi et al teaches the melt is kept constant at 1450°C for 13 hours to fully melt and dissolve the source material to form a solution (Hu CT [n0030]).
Referring to claim 14, the combination of Hu et al and Taniguchi et al teaches cooling the melt from a first temperature (1650°C) to a second temperature (700°C) to achieve spontaneous nucleation with a cooling rate of 10-300 °C/hr (~0.166 to 5°C/min) (Hu CT 0014] [n0039]-[n0045]), and cooling from 1650 to 700°C at 10°C/hr would take more than 12 hrs. Overlapping ranges are prima facie obvious (MPEP 2144.05).
Referring to claim 15, the combination of Hu et al and Taniguchi et al teaches cooling the melt from a first temperature (1650°C) to a second temperature (700°C) to achieve spontaneous nucleation with a cooling rate of 10-300 °C/hr (~0.166 to 5°C/min) (Hu CT 0014] [n0039]-[n0045]) and heating at a rate of 300°C/hr (Hu CT [n0037]). The combination of Hu et al and Taniguchi et al does not explicitly teach greater than 5°C per minute. A prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to produce products having the same properties. Titanium metal Corp. Am v Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Referring to claim 16, the combination of Hu et al and Taniguchi et al teaches growth and cooling to room temperature (Hu CT [0015]) using the same method, as applicant, as discussed above; therefore, a solid melt alloy comprising the metallic solvent and comprising crystals comprising the h-BN nuclei on a surface of the solid metal alloy would be expected. Furthermore, the combination of Hu et al and Taniguchi et al teaches removing the metal solvent from the crystal (Taniguchi [0071]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J SONG whose telephone number is (571)272-1468. The examiner can normally be reached Monday-Friday 10AM-6PM.
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MATTHEW J. SONG
Examiner
Art Unit 1714
/MATTHEW J SONG/ Primary Examiner, Art Unit 1714