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 Arguments
In their response submitted on 6/8/2026 the only argument applicants had against all references is that the sphericalness is not the same as roundness.
The applicants are correct; however their arguments are not persuasive for following reasons:
By definition sphericity measures how closely three-dimensional particles resemble a perfect sphere. It is an overall 3D shape similarity to a sphere regardless of surface texture.
By definition roundness measures how closely a two-dimensional projection (cross section) od a particle resembles a perfect circle.
While sphericalness and roundness are both shape descriptors they measure different aspects of particle geometry. Particle can be highly spherical but still have low roundness is its surface is irregular, for example aggregate. The examiner appreciates the calculations provided by the applicants; however, it is well established that there is no direct correlation between sphericalness and roundness. Indirectly one has to with use of volume and surface area. It is unclear how applicants arrived at the table and relate the sphericalness and roundness of the aluminum nitride of the prior art.
Additionally, while the prior art of record utilizes term sphericalness it is also important to understand how the prior art defines sphericalness.
As mentioned above sphericalness is a 3 dimensional measurement that is a ratio of the surface area of a sphere with the same volume as the particle to surface area of the particle. That is not what was measured in references utilized in the office action.
Roundness can be calculated in several ways:
Feret’s diameter which is a ratio of minimum diameter (DS in the prior art) and maximum diameter (DL in the prior art).
Ratio of particle area to the area of the smallest enclosing circle
Ratio of average curvature at the corners to overall curvature.
Applicant’s method HS roundness is also referred to as high-precision roundness is measured by comparing particle’s cross sectional profile to a perfect circle. It is along the lines of method 2.
Having said that, the roundness of the particle is a physical properties which is independent of method utilized.
In all references, the inventors refer to the sphericalness as being a ratio of short diameter to long diameter, which is actually definition of roundness method 1. The ability of applicant’s being its own lexicographer applied to all inventors past and present, hence, the importance of learning the definitions of the terms utilized in the prior art.
In summary, Watanabe discloses sphericalness as a ratio of DS/DL (roundness method 1) to be at least 0.8, wherein 0.8 overlaps with claimed range. Fukunaga discloses sphericalness as a ratio of DS/DL (roundness method 1) to be at least 0.8, wherein 0.8 overlaps with claimed range. Muneoka discloses sphericalness as a ratio of DS/DL (roundness method 1) which is 0.77 and 0.76 (examples) which result lies within claimed range.
Applicants had additional arguments directed to Muneoka, indicating that the average grain size is from several microns to several hundreds of microns and sphericalness of not less than 0.75.
Muneoka is not as broad with respect to the particle size as applicants claim. Example 7 of Muneoka discloses average grain size of 84 microns which lies within applicant’s claimed range. That particular grain has DS/DL ratio of 0.77 (also within applicant’s range). Example 8 discloses alumina nitride having average particle diameter of 76.2 microns and DS/DL of 0.74. These are the examples that examiner relied on in the non-final office action which applicant did not provide any comment to.
In summary, because of the above arguments, applicants’ arguments are not persuasive and all rejections of record are maintained.
There are probably couple of ways that the applicants can amend the claims to overcome the prior art. For Watanabe and Fukunaga limiting the roundness to exclude 0.8 would overcome the references, because both require roundness of at least 0.8. Therefore the references would teach away from aluminum nitride having lower roundness.
With respect to Muneoka, the issue is not as clear cut as with Watanabe or Fukunaga. This is because examples 7 and 8 of Muneoka, especially example 8, result in particle having basically the same grain size of 76.2 vs. 76 of the instant example 1 and 2. Applicant’s specification does not provide clear indication of what the roundness of the particles in instant examples 1 and 2 really is. It only reports that the particles have roundness within claimed range. So does Muneoka.
It should be noted that while comparative examples of Muneoka are not his invention they still part of printed publication that is available to the public. Comparative example 2 teaches average grain diameter of 106.8 and DS/DL of 0.65 both within the claimed ranges.
Examiner believes that more in depth conversation would be required to identify allowable subject matter. Although amending roundness to 0.5-0.7 may do the trick. It is something to think about.
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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (US 2012/0258310).
With respect to claim 1, Watanabe discloses a sintered granular aluminum nitride wherein average particle size is 10-200 microns (Claim 5) which overlaps with instant range of 30-200 microns. All particles therefore are below the 200 microns maximum peak. Since particle diameter is the same as the maximum peak the average particle diameter will meet the required “not less than 30% of the maximum peak”.
The sphericalness (roundness DS/DL) of such particles is not less than 0.8 which also overlaps with the claimed range of 0.5-0.8. this further means that all granules have claimed sphericalness of 0.8.
With respect to claims 2 and 3, the exemplary image (by no means limiting) in figure 12:
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While Watanabe does not explicitly disclose the crystal grain size of the aluminum nitride granule, Figure 12 with the scale bar discloses various crystal sizes with clear valleys in between them at which valley two grain crystals are connected. Connected crystals form the granule.
In the Figure 12, per scale included with the image, the granule comprises crystal grains that will fall within claimed by the applicant’s range of 3-18 microns. This will include crystal gains that are smaller than 3 microns, and at the same time encompassed the instant claims and present in applicant’s own images.
With respect to claim 4, aluminum nitride is utilized as a filler to make adhesive compositions (abstract) [0001] as well as making articles which require high heat conductivity. Example of the polymer disclosed in silicone rubber [0002] [0022].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that when practicing invention of Watanabe, one of ordinary skill in the art would also arrive at broadly claimed instant invention. Specifically, while Watanabe teaches aluminum nitride granules that meet the granular particle size, sphericalness and crystal grain size which values overlap with instant invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Fukunaga (US 2015/0376009)
With respect to claim 1, Fukunaga discloses sintered aluminum nitride granules which have average particle size of 10-200 micron which overlaps the range of 30-200 microns (claim 2) [0030]. As such the granules of Fukunaga will be below the maximum peak diameter of 200 microns. Their average particle size is within the same range meeting not less than 30% of the maximum peak.
Sphericalness (DS/DL) of the aluminum nitride of the instant invention is at least 0.8 [0061]. This further means that granules have sphericalness of 0.8.
With respect to claims 2 and 3, sintered granules of Fukunaga are illustrated in Figure 2:
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Wherein crystal grains within each particle, have valleys which distinguish one crystal from another. While the diameter of the crystal is not explicitly disclosed it is evident from the scale utilized in the image that the crystal grain size varies and includes grains as low at 3 microns or lower, wherein 3 microns overlaps with instant claimed range of 3-18 microns.
With respect to claim 4, the alumina nitride is used as a filler to make adhesives or heat conducting articles [0058] in combination with a resin [0059].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that when practicing invention of Fukunaga, one of ordinary skill in the art would also arrive at broadly claimed instant invention. Specifically, while Fukunaga teaches aluminum nitride granules that meet the granular particle size, sphericalness and crystal grain size which values overlap with instant invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Muneoka (US 2013/0244036).
With respect to claim 1, Muneoka discloses aluminum nitride granules which have average particle size of 6-280 microns (claim 3) wherein the content of granules having particle size above the recited range is less than 10%.
Examples 7 and 8 disclose average grain size of 84 and 76 microns respectively and shape of the grain was observed using scanning type equipment. The particle size of these 2 examples meets the limitation of diameter being not less than 30% of the maximum peak because the content of the larger particles (coarse) is only 1 % and 4.6% respectively.
The roundness (sphericalness) of the particulates is defined as ratio of shorter diameter (DS) to longer diameter (DL) [0078]. Examples 7 and 8 disclose sphericalness of 0.77 and 0.74 respectively.
With respect to claims 2-3, Muneoka discloses images of the particulates, which show valleys where two or more crystals are linked together to make a granule.
Figure 1 of Muneoka provides exemplary image:
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Which clearly depicts valleys. The image which contains the scale shows that crystal grains of this particular particle are approximately 5 microns.
With respect to claim 4, Muneoka discloses use of aluminum nitride as a filler to make various articles [0063] wherein the aluminum nitride is incorporated into a resin [0064].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that when practicing invention of Muneoka, one of ordinary skill in the art would also arrive at broadly claimed instant invention. Specifically, while Muneoka teaches aluminum nitride granules that meet the granular particle size, sphericalness and crystal grain size which values overlap with instant invention.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 June 24, 2026
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