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 .
This action is responsive to Applicant’s amendments/remarks filed July 06, 2026.
The rejection of claims 1-3 as being anticipated under 35 U.S.C. 102(a)(1) and (a)(2) over Otsuka (WO-2016092952-A1) is maintained in view of amendments/arguments.
The rejection of claims 1-3 as being unpatentable under 35 U.S.C. 103 over Komatsu (JP-2009119423-A) in view of Otsuka (WO-2016092952-A1) is withdrawn in view of amendments/arguments.
The rejection of claim 4-6 and 12 as being unpatentable under 35 U.S.C. 103 over Otsuka (WO-2016092952-A1) in view of Hirotsuru (US-20160227644-A1) is withdrawn in view of amendments/arguments.
Response to Arguments and Amendments
Applicant's arguments filed 06 July 2026 for rejection of claims 1-3 as being unpatentable under 35 U.S.C. 103 over Komatsu (JP-2009119423-A) in view of Otsuka (WO-2016092952-A1) have been fully considered but they are not persuasive.
The Applicant argues that Otsuka fails to disclose a basis for maintaining a high carbon content in the final boron carbonitride product sufficient to meet the amended limitation requiring 60 mass% or more of boron carbonitride (see Page 6).
In response, Applicant’s argument is unpersuasive. Otsuka discloses a hexagonal boron nitride powder containing aggregated hexagonal boron nitride particles (hereinafter "BN") (Abstract), wherein a carbon source is utilized to satisfy the claimed boron nitride powder limitations (para 0036). The disclosed particles possess an average pore diameter of 80 nm (para 0019), which can be measured down to a range of 0.5 nm (para 0077), and a powder surface area of approximately 15 to 25 m²/g (Abstract). This pore range satisfies the claimed "micropore" size, and the term "aggregated" satisfies the "lump particle" limitation.
Furthermore, Otsuka teaches that the carbon content in the hBN powder is preferably 0.5 mass% or less (para 0022).
Therefore, these combined disclosures read on the claimed limitation of a boron carbonitride powder. Because the amended limitation specifies "60 mass% or more of boron carbonitride" but does not dictate a minimum or specific threshold for the internal carbon content itself, the presence of carbon within the powder satisfies the broad definition of boron carbonitride. The instant claims fail to recite a specific carbon-to-boron/nitrogen ratio that would distinguish the claimed material from Otsuka's composition. Therefore, Otsuka anticipates the claims, including the amended limitation.
Applicant’s arguments, see page 6-7, filed 06 July 2026, with respect to Komatsu in view of Otsuka have been fully considered and are persuasive. The rejection of claims 1-3 as being unpatentable under 35 U.S.C. 103 over Komatsu (JP-2009119423-A) in view of Otsuka (WO-2016092952-A1) has been withdrawn.
Applicant’s arguments, see page 6-7, filed 06 July 2026, with respect to Otsuka in view of Hirotsuru have been fully considered and are persuasive. The rejection of claim 4-6 and 12 as being unpatentable under 35 U.S.C. 103 over Otsuka (WO-2016092952-A1) in view of Hirotsuru (US-20160227644-A1) is withdrawn in view of amendments/arguments.
Applicant argues Hirotsuru do not provide a basis for the aggregate particles to disappear post-sintering (page 8).
In response to applicant's argument that the aggregate particles disappear post sintering, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., aggregate particles disappear) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Otsuka (WO 2016092952 A1).
With regard to claim 1, Otsuka teaches a hexagonal boron nitride powder containing aggregated hexagonal boron nitride particles (hereinafter BN, Abstract); wherein a carbon source is used within which satisfies the claimed boron carbon nitride powder at a content ratio of 100% (para 0036). The particle has an average pore diameter of 80 nm (para 0019), however, could be measured within the range of down to 0.5 nm (para 0077); and a powder surface area of approximately 15 to 25 m2/g (Abstract). The pore range would satisfy the size of a micropore; as well as, the term “aggregated” satisfies the lump particle. Otsuka further teaches as the average pore diameter becomes smaller, the BET specific surface area and the compression fracture strength become higher values, and it can be seen that the average pore diameter correlates with the BET specific surface area and the compression fracture strength (para 0085).
With regard to claim 2, Otsuka teaches the primary particles to be exposed on the outer edge of aggregated particle (Fig 2).
PNG
media_image1.png
430
1238
media_image1.png
Greyscale
With regard to claim 3, as stated above, Otsuka teaches the powder and the specific surface area which satisfies the claimed range. Otsuka further teaches the incorporation of boron sources, such as boron acid and boron oxide, to enhance adhesiveness of the granulation (which satisfies the sintering aid and claimed powder composition, paras. 0031 and 0070).
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.
Claims 4-6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Hirotsuru (US 20160227644 A1).
With regard to claim 4, Hirotsuru discloses a boron nitride sintered body comprising an aggregate of two or more primary hexagonal boron nitride (hBN) particles bound via sintering (paragraphs [0040]–[0041]). Specifically, Hirotsuru teaches that these three-dimensionally bonded particles exhibit an average major axis diameter of 5 to 50 μm when observed at a magnification of 1500x. Because the claim limitation encompasses of "3 lump particles or less" (spanning 0 to 3 particles), Hirotsuru reads on the claimed lump particle count, while simultaneously overlapping with the claimed particle size.
Furthermore, Hirotsuru promotes for a particle size within or towards the upper limit; specifically, if the boron nitride particles are smaller than 5 μm, the increased number of contact points among the flake-like particles reduces the thermal conductivity of the resin-impregnated body (paragraph [0043]). Hirotsuru further teaches that within range promotes the thermal conductivity range from approximately 7 to 110 W/mK (paragraph, Table 1-2), which overlaps with the claimed thermal conductivity range.
With regard to the magnification, it would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention a 1500x magnification necessarily encompass a subset of the particles visible at a lower 500x magnification. The magnification at 1500x represents a routine optimization of imaging parameter to provide a higher-resolution view of the microstructure, thereby confirming the structural integrity and particle boundaries within the sintered body. Hirotsuru would guide one having ordinary skill in the art that the cross-section images and magnifications of aggregated particles within the established parameter in the molded product are readily achievable with a reasonable expectation of success, given the overlapping particle sizes and aggregation characteristics as provided.
With regard to the overlapping, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP §2144.05(I). Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
With regard to claim 5, Hirotsuru teaches a BN sintered body comprising aggregated particles of hBN (para 0040); wherein the orientation index is 2 or more (para 0047), which overlaps the claimed. Hirotsuru further teaches when the orientation is controlled, a higher thermal conductivity can be produced (para 0024).
With regard to claim 6, Hirotsuru teaches the thermal conductivity range of approximately 7 to 110 W/mK (Table 1-2), which overlaps the claimed thermal conductivity. Hirotsuru further teaches in order to increase the thermal conductivity of the composite body, it is necessary to increase the content of the boron nitride particle and to increase the bonding area of the boron nitride particles, thereby decreasing the porosity of the boron nitride sintered body (para 0052).
With regard to claim 12, Hirotsuru teaches a composite board comprising a resin impregnated boron nitride sintered body (Abstract), which reads on the claimed composite body comprising: the boron nitride sintered body filled with resin. Hirotsuru further teaches that the composite board exhibits superior workability and strength by allowing a resin to impregnate ceramics having crystal grains that form a three-dimensional network structure with open pores, as is conventionally known (para 0023). As a result, improvements in thermal conductive properties, strength, and electrical insulation are achieved (paras 0018 and 0041).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.A.W./Examiner, Art Unit 1761
/TANISHA DIGGS/Primary Examiner, Art Unit 1761 October 6, 2026
