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 Election/Restrictions
Applicant's election with traverse of Group 1, claims 1-6 and 12, in the reply filed on November 29, 2024 is acknowledged.
The traversal is on the ground(s) that JP Recited in the pending claims. Applicant argues that Vinu (JP2007031170A) discloses a boron nitride porous body having a specific surface area of 500 to 900 m2/g (Remarks, page 6, para 1). Vinu utilizes a mesoporous carbon template to create a structure with an extremely high specific surface area (Remarks, page 6, para 1).
In response, Applicant’s arguments are not persuasive. It is noted that Vinu was used prior to the amendments to the claims. Otsuka (WO 2016092952 A1) 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 nitride powder (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). 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). The pore range would satisfy the size of a micropore; as well as, the term “aggregated” satisfies the lump particle.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention to have been motivated to reduce the pore diameter size, which would increase the surface area and compression strength. As such, the teachings of Otsuka, when combined with general knowledge in the art, render the claimed surface area characteristics obvious.
Thereby the requirement is still deemed proper and is therefore made FINAL.
Claims 7-11 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as drawn being drawn to the nonelected inventions, there being no allowable generic or linking claim.
Therefore, claims under consideration in the current office actions are claims 1-6 and 12.
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 17 March 2023, 01 May 2023, 26 July 2024, and 22 November 2024. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
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 nitride powder (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).
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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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Komatsu (JP2009119423 A) in view of Otsuka (WO 2016092952 A1).
With regard to claim 1, Komatsu teaches an active boron-carbon-nitrogen (hereinafter B—C—N) powder, comprising bond linkage of B—C—N atoms; wherein the surface area of the powder is 0.1 m²/g to 50 m²/g, produced without oxidation (para 0010) and a pore size of 0.4 to 50 nm (Abstract), thereby overlapping the claimed ranges and micropore.
However, Komatsu fails to teach a lump particle (aggregation) of B—C—N particles.
In the same field of endeavor, Otsuka teaches a hexagonal boron nitride powder containing aggregated hexagonal boron nitride particles (hereinafter hBN, Abstract); wherein a carbon source is used within which satisfies the claimed boron nitride powder (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). Furthermore, Otsuka teaches that when the powder contains a strong aggregation composed of dense primary particles of hBN, the aggregate can maintain its granular shape without breaking even if they are fine powders (para 0008) As a result, anisotropy does not occur in the thermal conductive sheet and high thermal conductivity can be expressed (para 0008).
With regard to the aggregation, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to aggregate the B—C—N primary particles. For doing so, the powder and aggregation would improve the strength and thermal conductivity for the same use. The person having ordinary skill in the art would expect the modification to promote workability properties of the base product of Komatsu, following the teachings of Otsuka.
With regard to claim 2, Komatsu fails to teach a lump particle (aggregation).
In the same field of endeavor, Otsuka teaches the primary particles to be exposed on the outer edge of aggregated particle (Fig 2).
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As stated above, Komatsu in combination of Otsuka teaches the aggregated particles.
With regard to claim 3, Komatsu teaches an active boron-carbon-nitrogen (hereinafter B—C—N) powder, comprising bond linkage of B—C—N atoms; wherein the surface area of the powder is 100 m²/g or more, produced with oxidation and a pore size of 0.4 to 50 nm (Abstract), thereby overlapping the claimed range and micropore. Komatsu further teaches the oxidizing agent may be an oxo acids, which can be considered a sintering aid (para 0013).
As stated above, Komatsu in combination of Otsuka teaches the aggregated particles.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Otsuka (WO 2016092952 A1).
With regard to claim 4, Otsuka teaches the aggregated hBN particles can produce a hBN sintered body (para 0002); wherein the aggregated hBN particles size is 45 to 106 μm (para 0077). Otsuka teaches that a small particle size is required in order to cope with the thinning of the molded body, as a result, the thermal conductivity is insufficient (para 0005). Otsuka further teaches a SEM image of an aggregate of primary particles at a magnification of 10,000x of 100 particles (para 0071, Fig. 2) This overlaps the claimed ranges.
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 to expect that a 10,000x magnification necessarily encompasses a subset of the particles visible at 500x. The magnification at 10,000x would provide a higher quality image of the structure and clarity.
Claims 5-6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuka (WO 2016092952 A1), as applied to claim 4 above, and further in view of Hirotsuru (US 20160227644 A1).
With regard to claim 5, Otsuka fails to teach the orientation of a hBN body.
In the same field of endeavor, Hirotsuru teaches a BN sintered body comprising aggregated particles of hBN (para 0040); wherein the orientation index is 2 or more (para 0047). Hirotsuru further teaches when the orientation is controlled, a higher thermal conductivity can be produced (para 0024).
With regard to the orientation, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to control the orientation index to be greater than 2 and less than 10. The person having ordinary skill in the art would expect the practice to promote thermal conductive properties of the base product of Otsuka, following the teachings of Hirotsuru.
With regard to claim 6, Otsuka teaches the thermal conductivity is 10 W/mK or more (para 0056), however, fails to teach a higher thermal conductivity.
In the same field of endeavor, Hirotsuru teaches the thermal conductivity range of approximately 7 to 110 W/mK (Table 1-2). 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 the thermal conductivity, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention that optimizing boron nitride particles over porosity would bear the results. The person having ordinary skill in the art would expect such practice to improve bonding and thermal conductive properties, while still maintaining some porosity, following the teachings of Hirotsuru.
With regard to claim 12, Otsuka fails to teach a composite body filled with resin.
In the same field of endeavor, Hirotsuru teaches a composite board comprising a resin impregnated boron nitride sintered body (Abstract). 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).
With regard to the composite body filled with resin, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to utilize resin within the pores of the hBN sintered body. The person having ordinary skill in the art would be motivated to implement such modification to enhance workability, strength, thermal conductive and electrical properties, consistent with the teachings of Hirotsuru.
Conclusion
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/A.A.W./Examiner, Art Unit 1761
/TANISHA DIGGS/Primary Examiner, Art Unit 1761