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 .
DETAILED ACTION
Status of Application
1. This application is a 371 of PCT/JP2022/008571, which was filed on 03/01/2022.
Claims 1-12 were originally presented in this application for examination.
Claims 1-12 are currently pending in this application and under consideration.
Specification
2. The examiner has not checked the specification to the extent necessary to determine the presence of all possible minor errors (grammatical, typographical, and idiomatic). Cooperation of the applicant(s) is requested in correcting any errors of which applicant(s) may become aware of in the specification, in the claims and in any further amendment(s) that applicant(s) may file.
Applicant(s) is also requested to complete the status of the copending applications referred to in the specification by their Attorney Docket Number or Application Serial Number, if any.
The status of the parent application(s) and/or any other application(s) cross-referenced to this application, if any, should be updated in a timely manner.
3. The abstract of the disclosure is objected to because:
The abstract provided with the application is too long.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112 (Second Paragraph)
4. 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.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A. Regarding claims 1 & 3, the instant claims recite “wherein aggregated particles of hexagonal boron nitride primary particles have a longer diameter ranging from 5 to 10 um, a longer diameter/short diameter ranging from 1.0 to 1.3”. It is unclear as to what is meant by the phrase “a longer diameter” and “a longer diameter/short diameter”.
B. It would appear that Applicants attempted to recite a ratio of the diameter of the longer length particles to the diameter of the shorter length particles of the aggregated particle of hexagonal boron nitride particles claimed, however the way the claims are written is unclear and does not particularly point out what applicants intend by the claimed range “1.0 to 1.3”. Also, the diameter of the shorter length particles is not defined in the claims.
C. Regarding claims 1 & 3, the claims recite multiple ranges for the primary particles of the hexagonal boron nitride aggregated particles. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claims 1 & 3 recite the broad recitation “5 to 10 um” and the claims also recite “4 um or less”, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Even though the narrower range of “4 um or less” is not quite falling within the broad range of “5 to 10 um”, it is confusing and unclear as to why there are two different ranges being required in the same claim.
*Claims 2 & 4-12 are being rejected because they depend on rejected claims 1 & 3, and they do not cure the indefiniteness.
Claim Rejections - 35 USC § 102(a)(1)
5. 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.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawahara et al. (US 11,168,216 B2), hereinafter “Kawahara et al. ‘216”.
Kawahara et al. ‘216 discloses a resin material comprising: first boron nitride aggregate particles; second boron nitride aggregate particles; and a binder resin (col. 33, claim 1).
The first boron nitride aggregate particles have a particle diameter of more than 20 um,
The primary particles constituting the first boron nitride aggregate particles have a mean major axis of 2 um or more and less than 20 um (col. 34, claim 5).
The primary particles constituting the secondary boron nitride aggregate particles have a mean major axis of 8 um or less (col. 34, claim 5).
The second boron nitride aggregate particles have a particle diameter of 30 um or more and 60 um or less (col. 34, claim 6).
Regarding claims 1 & 3, the claimed primary particles having a longer diameter ranging from 5 to 10 um is met by the reference because it overlaps the disclosed range of 2 um or more and less than 20 um of the primary particles constituting the first boron nitride aggregate particles (col. 34, claim 5).
With respect to the claimed ratio of “the longer diameter/short diameter of from 1.0 to 1.3” in the instant claim 1, the instant claimed range is also met by the reference range of 0.25 – 2.5 because it overlaps the disclosed range. (2 um/8 um = 0.25 and 20 um/8 um = 2.5).
With respect to the claim feature on “a circularity within a range from 0.3 to 0.8” and “a maximum diameter of primary particles that can be confirmed on a surface of the aggregated particles is 4 um or less from an SEM observation image at 10,000 magnification” in the instant claims 1 & 3, it is inherent that the disclosed boron nitride aggregated particles would have the claimed features as well in view of the same particle sizes disclosed and claimed.
Regarding claims 2 & 5, the instant claimed limitation on “primary particles having a particle size (D50) at a 50% vol. of from 5 to 150 um” is met by the reference since the reference teaches that the primary particles constituting the first and second boron nitride aggregates have mean particle size of 2 um or more and less than 20 um, and 8 um or less, respectively, and these ranges are falling within the instant claimed range.
With respect to the claimed features on “a volume-based median diameter of pores as measured by a mercury porosimetry is 3.0 um or less”, “a content of impurity elements is 500 ppm or less”, “a BET surface area ranging from 1 to 15 m2/g” and “an oil absorption ranging from 50 to 190 cc/g” in claims 2, 4, & 6, it is inherent that the disclosed boron nitride aggregated particles would have the claimed features as well in view of the same particle sizes disclosed and claimed.
Regarding claims 7-12, the reference teaches a resin composition and a resin sheet comprising the hexagonal boron nitride powder comprising the hexagonal boron nitride aggregate particles as recited in the instant claims (col. 33- col. 34, claims 1-8). The claimed features on the “sheet density” and the “dielectric strength” of the resin sheet as set forth in the instant claims 10 & 12 are inherent characteristics of the disclosed resin sheet material in view of the same boron nitride powder and aggregated particles disclosed and claimed.
Claim Rejections - 35 USC § 102(a)(1)
6. 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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeda et al. (US 2021/0163288 A1), hereinafter “Takeda et al.”
Takeda et al. discloses a hexagonal boron nitride powder having a purity of 98% by mass or more and a specific surface area of less than 2.0 m2/g (page 6, claim 1).
The hexagonal boron nitride powder has an average particle diameter of 2.0 to 30 um (p. 6, claim 2).
The hexagonal boron nitride powder contains a metal in an amount of 35 ppm or less (p. 6, claim 3).
Regarding claims 1 & 3, Takeda et al. appears to teach the same hexagonal boron nitride powder as claimed. Since the same average particle diameter, specific surface area, and metal impurity amount are disclosed, it is only reasonable to conclude that the claimed features of the particles (the particles diameter of the longer diameter, a ratio of particles of the longer diameter/shorted diameter, circularity, and a maximum diameter of primary particles that can be confirmed on a surface of the aggregated particles” as recited in these claims would have been inherent characteristics. See discussions on claims 2 & 4-6 below for more details.
Regarding claims 2, 5, & 6, the reference teaches the hexagonal boron nitride powder having an average particle diameter (D50) of 2.0 to 30 um (p. 6, claim 2), which appears falling within the instant claimed range of “5 to 150 um”. The disclosed content of metal of 35 ppm or less (p. 6, claim 3) is also encompassed by the instant claimed range of “500 ppm or less”.
Regarding claim 4, the claimed BET specific surface area is met by the reference because the hexagonal boron nitride powder disclosed has a specific surface area of less than 2.0 m2/g (p. 6, claim 1), which appears falling with the instant claimed range of “from 1 to 15 m2/g”.
With respect to the claim limitations on “a volume-based median diameter of pores as measured by a mercury porosimetry is 3.0 um or less” (in claim 2 & 6) and “an oil absorption ranging from 50 to 190 cc/100 g” (in claim 4), while the reference is silent on these features of the disclosed hexagonal boron nitride powder, it is inherent and expected that the hexagonal boron nitride powder disclosed would have the claimed features as well in view of the same average particle diameter (D50), metal impurity amount, and specific surface area disclosed and claimed.
Claim Rejections - 35 USC § 102(a)(1)
7. 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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishi et al. (US 9,956,868 B2), hereinafter “Nishi et al. ‘868”
Nishi et al. ‘868 discloses a boron-nitride powder, containing boron-nitride particles each composed of hexagonal boron-nitride primary particles joined together, which is an aggregate of the boron-nitride particles, wherein
the boron-nitride powder has a mean sphericity of 0.70 or more, a mean particle diameter of 20 to 100 um, a porosity of 50 to 80%, a mean pore diameter of 0.10 to 2.0 um, a maximum pore diameter of 10 um or less, and a calcium content of 500 to 5,000 ppm (col. 17, claim 1).
Regarding claims 1 & 3, the claim limitation on “circularity within a range from 0.3 to 0.8” is met by the reference teaching of “a mean sphericity of 0.70 or more” (col. 17, claim 1).
Regarding the claimed features on “the primary particles have a longer diameter ranging from 5 to 10 um”, “a ratio of 1.0 to 1.3 (a longer diameter/shorter diameter)”, and “a maximum diameter of primary particles that can be confirmed on a surface of the aggregated particles is 4 um or less from an SEM observation image at 10,000 magnification”, Nishi et al. ‘868 appears to teach the same hexagonal boron nitride powder as claimed and since the same average particle diameter (D50), median pore diameter, circularity (sphericity) and metal impurity are disclosed and claimed, it is only reasonable to come to a conclusion that the claimed features of the particles as recited in these claims would have been inherent characteristics. See discussions on claims 2 & 4-6 below for more details.
Regarding claims 2, 5, & 6, Nishi et al. ‘868 appears to teach the claimed average particle diameter of the hexagonal boron nitride primary particles as recited in the instant claims. The instant claims 2 & 5 recite “a particle size (D50) of from 5 to 150 um”, which encompassed the disclosed range of 20 to 100 um (p. 17, claim 1). Claims 2 & 6 further recite “a median pores diameter of 3.0 um or less”, which also encompassed the disclosed range of 0.10 to 2.0 um (col. 17, claim 1). The instant claim limitation on “content of impurity elements of 500 ppm or less” in claim 2 is also met by the reference calcium content of 500 to 5,000 ppm (col. 17, claim 1). The claimed amount of 500 ppm appears to be the same as the amount in the lower range of the reference.
Regarding claim 4, the claim limitations on “a BET specific surface area ranging from 1 to 15 m2/g” and “an oil absorption ranging from 50 to 190 cc/100 g” in the claim is noted. While the reference is silent on these features of the disclosed hexagonal boron nitride powder, it is inherent and expected that the hexagonal boron nitride powder disclosed would have the claimed features as well in view of the same average particle diameter (D50), median pore diameter, circularity (sphericity) and metal impurity amount disclosed and claimed.
Regarding claims 7 & 8, Nishi et al. ‘868 teaches a resin composition containing a resin and the hexagonal boron-nitride powder comprising aggregated particles (col. 18, claim 4).
Citations
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All references are cited for related art. See PTO-892 Form prepared.
Conclusion
9. Claims 1-12 are pending. Claims 1-12 are rejected. No claims are allowed.
Contacts
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner CAM N. NGUYEN whose telephone number is (571)272-1357. The examiner can normally be reached on M-F (8:30 am – 5:00 pm) at alternative worksite or at cam.nguyen@uspto.gov.
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, Anthony Zimmer, can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Cam N. Nguyen/Primary Examiner, Art Unit 1736
/CNN/
February 27, 2026