DETAILED ACTION
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 .
Claim Rejections - 35 USC § 112
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 1-3 and 5 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.
In regards to claim 1, it is unclear how much a particle must resemble a scale to be considered scale-like. Claims 2-3 and 5 are also rejected as they are dependent or otherwise require all of the limitations of claim 1.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawahara (JP2015140337A).
In regards to claim 1, Kawahara teaches a boron nitride powder that is an aggregate of boron nitride particles [0006],
where the boron nitride particles comprise a plurality boron-nitride pieces that are scaly with a flake-like structure [0021],
and the particles have a thickness of 0.30 µm or less [0010-0011], [0021].
In regards to the boron nitride pieces being chemically bonded to each other, the images of Kawahara show that the boron nitride particles have no boundaries observed in between the boron nitride pieces as shown by [Fig. 2] and [Fig. 3].
In regards to the nitride powder being crushed and having a ratio of the average value of displacement amounts to an average particles’ diameter of 0.20 or more, as the boron nitride powder of Kawahara appears to be the same structure and compound as in the instant application, it would inherently have the same characteristics and properties as recited in claim 1.
In regards to claim 2, Kawahara does not explicitly teach that the average value Y of the displacement amount is 14 µm or more. However, as the boron nitride powder of Kawahara appears to be the same structure and compound as claimed in the instant application, it would have the same characteristics and properties as recited in claim 2.
In regards to claim 3, Kawahara does not explicitly teach that the boron nitride powder has an average value of crushing strength of 8 MPa or higher. However, as the boron nitride powder of Kawahara appears to be the same structure and compound as claimed in the instant application, it would have the same characteristics and properties as recited in claim 3.
In regards to claim 5, Kawahara teaches a resin composition comprising the boron nitride powder and a resin, where the resin is the Silicone Resin Coated Silicone Rubber Powder [0049].
Response to Arguments
Applicant’s arguments, see pages 3-7 of Remarks, filed 06/17/2026, with respect to the rejection(s) of claim(s) 1-2 and 4-5 under 35 USC 102(a)(1) and claim 3 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kawahara (JP2015140337A) as discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAANZEB RAJA whose telephone number is (703)756-4531. The examiner can normally be reached M - F 8:30-6.
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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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/JAANZEB C RAJA/ Examiner, Art Unit 1736
/ANTHONY J ZIMMER/ Supervisory Patent Examiner, Art Unit 1736
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