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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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.
Claims 6, 8, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hirano et al. (US 4,762,729) in view of Watanabe et al. (US 5,137,772).
Regarding claim 6, Hirano discloses a method for manufacturing cubic boron nitride powder, comprising forming a mixture by mixing a boron nitride precursor powder and an additive powder wherein the additive powder of a nitrogen-containing compound (col. 4, lines 42-53) and heat-treating the mixture (col. 9, lines 28-35).
Hirano discloses wherein the heat-treating the mixture, the boron nitride precursor powder is configured to react to form a boron nitride, and the boron nitride is configured to reach with a surface of the additive powder to form a shell surrounding an outside of a core, wherein the shell comprises cubic boron nitride (cubic boron nitride outer layer is formed under high-pressure and high-temperature conditions (col. 9, lines 37-40)). Given that Hirano explicitly disclose that the c-BN is the outer layer of the nitrogen-containing intermediate layer, c-BN outer layer corresponds to the claimed shell and the nitrogen-containing intermediate layer corresponds to the claimed core. Therefore, Hirano discloses that the shell is directly in-contact with the core (col. 6, lines 1-4). Furthermore, Hirano discloses epitaxial structure at an interface between the core and the cBN (col. 5, line 61 – col 6, line 4; abstract: direct contacts of the layers to undergo oriented growth, col. 6, lines 13-19).
Although Hirano discloses nitrogen-containing core, Hirano fails to explicitly disclose that the nitrogen-containing core comprises the elements as claimed.
Hirano discloses the claimed invention except that it uses nitride of Al, Ga, In, Tl (col. 6, lines 1-12 and 37-4) instead of nitride using IVa Ti group or nitride using VIa group Cr (Table II, Abstract). Watanabe shows that nitride using IVa Ti group or nitride using VIa group Cr is an equivalent structure known in the art. Therefore, because these two materials were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute nitride of Al group (IIIb group) for nitride using IVa Ti group or nitride using VIa group Cr in the invention of Hirano Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
One of the problems solved by Hirano is to provide great adhesion between the core and the shell so that it would allow to induce oriented growth of the cubic boron nitride (col. 2, lines 25-33). Similarly to Hirano, Watanabe also produces adherence strength (Table II). This is done by providing suitable nitrogen-containing material (Table II).
An example of Hirano’s core material is nitrogen-containing (col. 6, lines 1-4), but discloses a preferred material of nitride belonging Al group. In that regard, Watanabe also teaches Al group, but recognizes that of nitride using IVa Ti group or nitride using VIa group Cr can be used for adhesion properties. Because both Hirano and Watanabe teaches that the materials are directed to good adherence property and is direct contact with a cubic boron nitride, a preponderance of the evidence supports the Examiner’s conclusion that it would have been obvious to have substituted Hirano’s nitride of Al, Ga, In, Tl for either nitride using IVa Ti group and nitride using VIa group Cr as taught in Watanabe for as nitrogen-containing material with a reasonable expectation of success.
Regarding claim 7, Hirano discloses an additive powder and the boron nitride precursor powder as set forth above, however, Hirano fails to explicitly disclose the amount of the additive powder includes a greater content than the boron nitride precursor powder, wherein the boron nitride precursor powder includes 10% to less than 50% of the additive powder. However, Hirano discloses that the thickness of the BN shell is 0.05-20 µm (col. 8, lines 57-59) and the thickness of the core is 0.5 µm or greater (col. 6, lines 20-35). In light that the amount of the additive powder and boron nitride precursor powder contributes to the thicknesses of the shell and core, one of ordinary skill in the art would recognize that Hirano’s thickness range would overlap the claimed amount range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Alternatively, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the amount of the boron nitride precursor powder and additive powder since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivated to optimize the amount of each boron nitride precursor powder and additive powder to produce a cBN powder dependent on what the end use of the cBN powder was used for.
Regarding claim 8, Hirano discloses the temperature as claimed (col. 7, lines 17-19).
Regarding claim 12, Hirano’s cBN powder and the core would inherently comprise of a shape. Therefore, the core would directly affect the shape of the cBN powder. Although Hirano discloses additive powder for the core and a final end product of a cBN powder as presently claimed, Hirano fails to explicitly disclose that the additive powder for the core is substantially same shape to that of the final end product. However, it has been held that a mere change in shape without affecting the functioning of the part would have been within the level of ordinary skill in the art, In re Dailey et al., 149 USPQ 47; Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Additionally, it would have been well within the purview of one of ordinary skill in the art before the effective filing date of the claimed invention to choose to use substantially the same shape. One of ordinary skill in the art would be well aware that shapes are either the same or different. Thus, choice of substantially same shape given only two alternatives would be well within the level of ordinary skill in the art.
Regarding claim 13, Hirano’s additive powder would inherently possess a particle size as well as the cBN powder size. Therefore, the particle size of the additive powder would directly affect the end result of the cBN powder. However, Hirano fails to explicitly disclose that the particle size of a finally produced cubic boron nitride powder is formed to have a particle size substantially same to that of the additive powder.
However, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the particle size of the final end product and the additive powder to be substantially same since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed particle size relationship is critical and has unexpected results. In the present invention, one would have been motivate to optimize the particle size relationship on what the end use of the cubic boron nitride powder was used for.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hirano et al. (EP 0209137 A2) in view of Watanabe et al. (US 5,137,772), in view of Yagi et al. (JP 61-266576).
Regarding claim 9, Hirano discloses a heat-treating the mixture as presently claimed, however, fails to disclose that it is performed at a pressure of 100-300 Pa in a gas atmosphere including nitrogen as presently claimed.
Yagi discloses a cBN coating onto a ceramic material, wherein the heat-treatment comprises of 200-1500ºC with a pressure of 0.001-300 Torr in a nitrogen gas atmosphere. Yagi discloses that this would produce a high-hardness boron nitride onto the base.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hirano’s pressure to be within the claimed range during heat-treatment process, as suggested by Yagi, in order to obtain a BN layer with excellent density, high hardness and crystallinity (Overview).
Response to Arguments
Applicant's arguments filed 12/30/25 have been fully considered but they are not persuasive. Applicant argues that since Hirano discloses an intermediate layer, Hirano teaches away from the claimed cBN powder structure. The examiner respectfully disagrees.
It is noted that the claims are open to have unrecited core materials/layers as claimed and/or are open to have unrecited additional structure within a boron nitride powder. The core itself are actually open to multiple layers (inner core and outer core), however, the upper layer (surface of the additive powder that creates said upper layer (outer core)) must be in direct contact to the cBN shell, wherein there is a growth interface between upper layer of core (outer core) and cBN shell. Please refer to the Examiner’s figure below on how Hirano discloses the claimed invention.
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Therefore, the examiner maintains that Hirano discloses the core materials and structure as claimed. The examiner suggests to amend the claim to reflect that the core is a single or continuous layer to overcome the Hirano reference.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785