DETAILED ACTIONNotice 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/Restriction
Applicant's election with traverse of Claims 1-5 in the reply filed on April 1, 2026 is acknowledged. The traversal is on the ground(s) that “this finding of lack of unity of invention is premature in the present application as a full search of the prior art has yet to have been conducted”. This is not found persuasive because the finding of lack of unity of invention does not require a full search of the prior art to be conducted, only requiring identification of prior art that discloses the common technical feature. The requirement is still deemed proper and is therefore made FINAL.
Claims 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 1, 2026.
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 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamigata et al. (JP2014009140A).
With regard to Claim 1, Kamigata teaches spherical alumina particles comprising 90% by mass or more of an α-alumina crystal phase and having an average particle diameter of 0.5 to 40 μm (Claim 1, Spherical alumina filler obtained by heat-treating spherical alumina at 1200 to 1500°C to convert the gelatinization rate to 80% or more, having a specific gravity of 3.85 or higher and an average particle size of 1 μm to 10 μm; Table 1 of original Japanese document; Examples 3 and 4; 99% α conversion, 4.6 μm and 4.7 μm).
While Kamigata is silent to the spherical alumina particles having a half-width of an α-alumina peak of 0.124° or less as observed by X-ray diffraction, the preparation method disclosed by Kamigata and the preparation method of the instant invention are substantially identical and thus would produce substantially identical products. See MPEP 2112.01.I.
Paragraph 0035 of the instant application discloses the method for producing spherical alumina particles of the instant invention, comprising “heating raw material alumina particles having an average particle diameter of 0.5 to 40 μm and an average circularity of 0.90 or more at 1350 to 1700°C”. Further, paragraph 0054 of the instant specification discloses that raw material alumina particles are “subjected to heat treatment in an electric furnace at 1400°C for 4 hours in an air atmosphere”, wherein the particles have an average particle diameter of 5.1 μm and average circularity of 0.95.
Kamigata discloses heating raw material alumina particles having an average particle diameter of 0.5 to 40 μm and an average circularity of 0.90 or more at 1350 to 1700°C (Paragraph 0009, By subjecting this thermal spray alumina filler to heat treatment in air at 1200°C to 1500°C, preferably 1300°C to 1400°C, the δ phase, which has low thermal conductivity at low temperatures, can be converted to the α phase, which has high thermal conductivity at high temperatures; Paragraph 0033, The average particle size measured by laser scattering was 4.6 μm, and the average sphericity measured from SEM images was 0.93).
Further, Kamigata notes the length of heat treatment and type of furnace used (Paragraph 0009, The heat treatment time varies depending on the heat treatment temperature, but is usually 30 minutes or more, preferably 1 hour to 5 hours… The heat treatment furnace can be any known type, such as a box furnace, tunnel furnace, or rotary kiln, and the heat treatment atmosphere is not particularly limited, but an atmospheric atmosphere is sufficient).
In this regard, Kamigata teaches the spherical alumina particles having a half-width of an α-alumina peak of 0.124° or less as observed by X-ray diffraction.
Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 4380, 483-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
With regard to Claim 2, Kamigata teaches the particles wherein an average circularity of the spherical alumina particles is 0.90 or more (Paragraph 0033, The average particle size measured by laser scattering was 4.6 μm, and the average sphericity measured from SEM images was 0.93).
With regard to Claim 3, while Kamigata does not explicitly disclose the particles wherein a total content of Li, Na, and K in the spherical alumina particles is less than 500 ppm by mass with respect to a total mass of the spherical alumina particles, the preparation method disclosed by Kamigata and the preparation method of the instant invention are substantially identical and thus would produce substantially identical products (see Claim 1 rejection). See MPEP 2112.01.I.
In this regard, Kamigata teaches the particles wherein a total content of Li, Na, and K in the spherical alumina particles is less than 500 ppm by mass with respect to a total mass of the spherical alumina particles.
Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 4380, 483-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
With regard to Claim 4, Kamigata teaches the particles which have been subjected to surface treatment with a surface treatment agent (Paragraph 0024, Furthermore, it is also preferable to pre-treat the alumina filler with coupling agents such as silanes or titanates, or surface treatment agents such as silicone oligomers, or to perform integral blending treatment).
With regard to Claim 5, while Kamigata does not explicitly disclose the particles wherein a polyethylene/alumina composite sheet containing 30% by volume of the spherical alumina particles in a polyethylene resin has a dielectric loss tangent of less than 4.0 x 10-4 as measured by a resonator method at 30 to 40 GHz, the preparation method of the spherical alumina particles disclosed by Kamigata and the preparation method of the spherical alumina particles disclosed by the instant invention are substantially identical and thus would produce substantially identical products (see Claim 1 rejection). See MPEP 2112.01.I.
In this regard, Kamigata teaches the particles wherein a polyethylene/alumina composite sheet containing 30% by volume of the spherical alumina particles in a polyethylene resin has a dielectric loss tangent of less than 4.0 x 10-4 as measured by a resonator method at 30 to 40 GHz.
Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 4380, 483-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kunitomo et al. (US 2010/0051855 A1) teaches a spherical α-alumina powder with an average sphericity of not less than 0.93 and a content of α-crystalline form not less than 95%, with a multi-step preparation method involving softening and heat treatment of the alumina powder.
Hofius et al. (US 2019/0135648 A1) teaches an alumina product having α-alumina content greater than 90 wt% with a broad particle size range, but with an average sphericity less than 0.7.
Ikeda et al. (US 2017/0210886 A1) teaches spherical alumina powder with an average particle size of 0.1 to 100 μm and average sphericity of greater than 0.85, but does not disclose α-alumina phase.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDUL-RAHMAN YUSUF WALEED SMARI whose telephone number is (571)270-7302. The examiner can normally be reached M-Th 7:30-5, F 7:30-4.
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/ABDUL-RAHMAN YUSUF WALEED SMARI/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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