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 Interpretation
In regards to claim 4, “boron nitride pieces” are being interpreted as a piece or section of a boron nitride particle that is within the agglomerate.
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) 1-2 and 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ashiba (JP2018115275A).
In regards to claim 1, Ashiba teaches a boron nitride powder that is an aggregate of boron nitride particles (Para. 0006, “As a method for reducing the anisotropy of the thermal conductivity of hexagonal boron nitride and improving its thermal conductivity in the thickness direction, it has been proposed to use secondary agglomerated particles (boron nitride agglomerated particles) formed by agglomerating primary particles of hexagonal boron nitride”). 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, Ashiba teaches that the boron nitride particles are not crushed and are compressed to a 30% particle size displacement at a load rate of 0.67 mN/second [0142-0143]. Therefore, the ratio of the average value of the amount of displacement of the boron nitride particles in the direction where load is applied before the particle is crushed to the average particle size of the boron nitride powder is greater than 0.3, which is greater than the 0.20 ratio as required by the claim.
In regards to claim 2, Ashiba teaches that the average value of the displacement amount is 14 µm or more. Ashiba teaches an average particle diameter of 70 µm (Para. 0149, “Example 2 (1) Preparation of Boron Nitride Agglomerated Particles 2 Boron nitride primary particles having an average major axis of 3.3 μm and an aspect ratio of 12.7 were agglomerated by a spray-drying method to an average particle diameter of 70 μm”). When the particles are at 30% compression, the particle displacement is calculated to be 21 µm, which fulfills the claim of the average displacement amount being at least 14 µm or more.
In regards to claim 4, Ashiba teaches a boron nitride powder where the boron nitride particle is composed of a plurality of boron nitride pieces, and the pieces of boron nitride are chemically bonded to each other. For example, the figure in Ashiba as shown below has a boron nitride particle (12) that can be thought of as two pieces, a top and bottom half, wherein the top and bottoms halves of the boron nitride particle are chemically bonded to each other.
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In regards to claim 5, Ashiba teaches a resin composition comprising the boron nitride powder and a resin (Para. 0006, “The following Patent Documents 1 to 3 disclose resin compositions using agglomerated particles of boron nitride).
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.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Ashiba (JP2018115275A).
In regards to claim 3, Ashiba teaches that the average value of crushing strength is 8 MPa or higher, where the compressive strength is the amount of strength required before failure (Para. 0029, “There is no particular upper limit to the compressive strength of the agglomerated particles of boron nitride contained in the hardenable material when compressed to 30%. The boron nitride agglomerated particles contained in the hardenable material may have a compressive strength of 15 MPa or less when compressed by 30%”). This presents an overlapping range with the instant claim and overlapping ranges are prima facie obviousness. See MPEP 2144.05.
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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/JAANZEB C RAJA/ Examiner, Art Unit 1736
/ANTHONY J ZIMMER/ Supervisory Patent Examiner, Art Unit 1736