Prosecution Insights
Last updated: April 19, 2026
Application No. 18/283,482

BORON NITRIDE POWDER AND RESIN COMPOSITION

Non-Final OA §102§103§112
Filed
Sep 22, 2023
Examiner
DIAZ, MATTHEW R
Art Unit
1761
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Denka Company Limited
OA Round
1 (Non-Final)
53%
Grant Probability
Moderate
1-2
OA Rounds
2y 10m
To Grant
98%
With Interview

Examiner Intelligence

Grants 53% of resolved cases
53%
Career Allow Rate
273 granted / 515 resolved
-12.0% vs TC avg
Strong +45% interview lift
Without
With
+45.1%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
54 currently pending
Career history
569
Total Applications
across all art units

Statute-Specific Performance

§101
0.8%
-39.2% vs TC avg
§103
37.8%
-2.2% vs TC avg
§102
16.2%
-23.8% vs TC avg
§112
29.1%
-10.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 515 resolved cases

Office Action

§102 §103 §112
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. The preliminary amendment filed 09/22/2023 is entered . Claims 1-4 are currently pending. The Drawings filed 09/22/2023 are approved by the examiner. The IDS statements filed 11/07/2023, 11/20/2023, and 06/25/2025 have been considered . Initialed copies accompany this action. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. 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 appl icant regards as his invention. Claim 2 is 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 pre-AIA the applicant regards as the invention. From an antecedent basis perspective, it is unclear in claim 2 whether the limitation “wherein the boron nitride particle …” refers to the parent claim’s boron nitride powder that is an aggregate of boron nitride particles (aggregated, i.e., assembled and attached/bound, boron nitride particles) or the boron nitride particles themselves. The case/antecedent basis of the terms to do not match (claim 2 recites “the boron nitride particle” singularly while claim 1 recites “A boron nitride powder” singularly and “boron nitride particles” plurally). The Office has carefully considered the specification to attempt to ascertain the scope of the claimed invention and what was meant by the claimed language . Pages 3-5 of the specification mostly set forth terminology similar to that above except the bottom of page 3 indicates the aggregate of boron nitride particles is merely a powder composed of a plurality of boron nitride particles. T he examples on pages 17-19 discuss (and the accompanying Figures show) the formation of “boron nitride particles (boron nitride powder)” (equating the two terms) containing “ a plurality of boron nitride pieces chemically bonded to each other therein ” which appears to mean the boron nitride particles and boron nitride powder are one in the same per the specification. However, this causes the claim to indefinite from an additional perspective. If claim 1 requires an aggregate of boron nitride particles (aggregated, i.e., assembled and attached/bound, boron nitride particles) and then claim 2 amounts to reciting the boron nitride powder/particles (which are one in the same per the specification) are composed of a plurality of boron nitride pieces chemically bonded to each other, it is unclear how claim 2 further limits the limitations of claim 1 (under an indefiniteness rationale rather than a clear-cut 112(d) rationale). As is known in the art, an aggregate of particles (as in claim 1) means the particles are attached/bound to one another which is nearly if not the same as the limitation in claim 2 that the powder/particles are composed of pieces chemically bonded (attached/bound) to each other. Nevertheless, f or purposes of further examination, the claim is construed as meaning the boron nitride powder (i.e., a secondary particle) is composed of a plurality of boron nitride pieces (i.e., primary particles) chemically bonded or bound to each other (i.e., an secondary, aggregated particle of primary particles). Appropriate correction/clarification is required. Claim Rejections - 35 USC § 102 & 103 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. 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. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claim s 1, 2, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Sawamura et al. (JP 2015-195292 A). An English language machine translation of the reference is attached to the Office’s supplied copy of the reference, and citations will be with respect to this translation unless specified otherwise. As to claim 1, Sawamura et al. teach boron nitride secondary particles of aggregated primary particles having voids formed when the primary particles are aggregated (bottom of p.3 under section 1-1). This reads on a boron nitride powder that is an aggregate of boron nitride particles as claimed. Regarding specific surface area, Sawamura et al. teach the boron nitride secondary particles have a broadest specific surface area (measured by a BET point method with nitrogen as the adsorption gas) range of 1 m 2 /g or more and 20 m 2 /g or less and a narrowest/most preferable specific surface area range of 3.5 m 2 /g or more and 14 m 2 /g or less (middle of page 6 under section 1-2 in a “Specific surface area” subsection) ; the disclosed specific surface area ranges overlap the claimed range as they all encompass/overlap a specific surface area of 4.6 m 2 /g or more. Regarding pore diameter, Sawamura et al. teach the boron nitride secondary particles have a broadest a pore diameter range of 10 nm or more and 10 microns or less and a narrowest/most preferable pore diameter range of 50 nm or more and 3 microns or less (bottom of p.5 under section 1-2 in a “Pore diameter” subsection); the disclose d pore diameter ranges overlap the claimed range as they all encompass/overlap an average pore diameter of 0.65 microns or less. While the cited teachings of Sawamura et al. fail to meet the claimed specific surface area and average pore diameter ranges under the meaning of anticipation, the cited teachings of Sawamura et al. nevertheless meet the claimed limitations under a strong prima facie case of obviousness as the disclosed specific surface area ranges overlap the claimed range as they all encompass/overlap a specific surface area of 4.6 m 2 /g or more and the disclosed pore diameter ranges overlap the claimed range as they all encompass/overlap an average pore diameter of 0.65 microns or less. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). If the above rationale was not enough, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive at the claimed ranges/magnitudes of specific surface area and average pore diameter from the cited teachings of the reference in order to obtain boron nitride secondary particles useful for the purpose(s) thereof disclosed in Sawamura et al. (for example, obtaining heat dissipation sheets with high thermal conductivity utilizing the boron nitride secondary particles per the abstract) with a very reasonable expectation of success. As to claim 2, Sawamura et al.’s boron nitride secondary particles of aggregated primary particles cited above reads on the claimed limitations that the boron nitride powder/particle is composed of a plurality of boron nitride pieces that are chemically bonded/bound to each other. See also the Figures of the reference. Additionally, in the present art(s), the term “aggregate” is conventionally understood to mean a collection of particles comprising boron nitride being assembled together and strongly bonded in a rigid fashion which constitute said powder. As to claim 4, Sawamura et al. teach a resin composition comprising the boron nitride powder and a resin. See the abstract, p.3, p.13, p.15, etc. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sawamura et al. (JP 2015-195292 A) as applied to claim s 1, 2, and 4 above, and further in view of Takeda et al. (WO 2020/004600 A1, utilizing US 2021/0261413 A1 as an English language equivalent) . The disclosure of Sawamura et al. is relied upon as set forth above. Sawamura et al. teach the boron nitride secondary particles have a high fracture strength and/or high particle strength (middle of p.5 and the middle of p.21) and have a resistance to collapsing (bottom of p.6 and middle of p.13), implying the presence of a high crushing strength, but fail to teach or quantify the magnitude of the strength. However, Takeda et al. similarly teach aggregate boron nitride particles comprising a crushing strength is 8.0 MPa or more where the crushing strength is set to avoid problems of the aggregate boron nitride particles, such as collapse of the aggregates during kneading with a resin or during pressing that causes a decrease in thermal conductivity to occur, when the crushing strength is less than 8.0 MPa (abstract and para. 0028). Takeda et al. teach the crushing strength is obtained by adjusting the aspect ratio of the primary particles that constitute the aggregate and parameters and during a crystallization process (para. 0030 and 0079). Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the crushing strength property/magnitude of Takeda et al. to Sawamura et al.’s boron nitride secondary particles in order to obtain collapse resistant, thermally conductive boron nitride secondary particles or even simply practice Sawamura et al.’s collapse resistant, thermally conductive boron nitride secondary particles with a reasonable expectation of success. Claim s 1 -4 are rejected under 35 U.S.C. 102 (a)(1,2) as being anticipated by Otsuka et al. (WO 2016/092952 A1) . An English language machine translation of the reference is attached to the Office’s supplied copy of the reference, and citations will be with respect to this translation unless specified otherwise. As to claim 1, Otsuka et al. teach a hexagonal boron nitride (hBN) powder containing an aggregate of hexagonal boron nitride primary particles (abstract), which reads on a boron nitride powder that is an aggregate of boron nitride particles as claimed. The powder has a BET specific surface area of 15-25 m 2 /g (abstract and claim 1 ), which is within the claimed range of 4.6 m 2 /g or more. Otsuka et al. teach the average pore diameter of the powder is preferably from 80 to 400 nm (bottom of p.4 and claim 6 ), i.e., 0.08 to 0.40 microns, which is within the claimed range of 0.65 microns or less. These express teachings and claims anticipate the claimed limitations. Also note the working examples of hBN powder of aggregate hBN primary particles powders disclosed in the reference as Table 2 in the original document : The first column of the Table translates to the working example number and type (the first three are Inventive Examples 1, 2, and 3 and the next three are Comparative Examples 1, 2, and 3). The “BET” column in m 2 /g is very clearly specific surface area of the respective example, and the column in “nm” translates to average pore diameter. Example 1 exemplifies a hBN powder of aggregate hBN primary particles powders with a specific surface area of 22.2 m 2 /g and an average pore diameter of 100 nm, i.e., 0.1 microns, Example 2 exemplifies a hBN powder of aggregate hBN primary particles powders with a specific surface area of 17.0 m 2 /g and an average pore diameter of 0.122 microns, Example 3 exemplifies a hBN powder of aggregate hBN primary particles powders with a specific surface area of 15.0 m 2 /g and an average pore diameter of 0.132 microns, and Comparative Example 3 exemplifies a hBN powder of aggregate hBN primary particles powders with a specific surface area of 27.0 m 2 /g and an average pore diameter of 0.077 microns. These examples anticipate the claimed limitations. As to claim 2, Otsuka et al.’s hexagonal boron nitride powder containing an aggregate of hexagonal boron nitride primary particles cited above reads on the claimed limitations that the boron nitride powder/particle is composed of a plurality of boron nitride pieces that are chemically bonded/bound to each other. See also the Figures of the reference. Additionally, in the present art(s), the term “aggregate” is conventionally understood to mean a collection of particles comprising boron nitride being assembled together and strongly bonded in a rigid fashion which constitute said powder. As to claim 3, the reference’s Table 2 cited above also reports the compressive fracture/ destruction strength of the hBN powder of aggregate hBN primary particles (see the column with the units MPa). Comparative Example 3 exemplifies a hBN powder of aggregate hBN primary particles powders with, in addition to a specific surface area of 27.0 m 2 /g and an average pore diameter of 0.077 microns as cited above, a compression fracture/destruction strength of 9.2 MPa, which anticipates the claimed limitations. As to claim 4, Otsuka et al. teach a resin composition comprising the boron nitride powder and a resin. See the abstract, p. 10, etc. Additionally, the reference’s Table 2 cited above also reports the thermal conductivity of a resin composition comprising the hBN powder of aggregate hBN primary particles with a resin. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Otsuka et al. (WO 2016/092952 A1), optionally in view of Takeda et al. (WO 2020/004600 A1, utilizing US 2021/0261413 A1 as an English language equivalent). The disclosure of Otsuka et al. is relied upon as set forth above. The above 102 rejection of claim 3 over Otsuka et al. relies on an anticipatory disclosure of a comparative example rather than Otsuka et al.’s inventive teachings and/or inventive examples. Otsuka et al.’s inventive examples 1, 2, and 3 have compression fracture/destruction strengths of 7.8 MPa, 4.8 MPa, and 3.5 MPa, below the claimed range and do not sufficiently anticipate the claimed limitations. While Otsuka et al.’s invention or inventive examples fails to meet the claimed crushing strength of 8 MPa or higher under the meaning of anticipation, Otsuka et al. nevertheless teach their aggregate boron nitride powder of boron nitride primary particles have a most preferabl e compressive fracture strength, i.e., crushing strength, of 7 MPa or more (p.3 under the “Aggregates” subsection), which overlaps the claimed crushing strength of 8 MPa or higher. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). If this was not enough, Otsuka et al. further teach it is important for the aggregate to have a sufficient strength so that it does not break in the process of compounding with a resin (p.2) , and Takeda et al. similarly teach aggregate boron nitride particles comprising a crushing strength is 8.0 MPa or more where the crushing strength is set to avoid problems of the aggregate boron nitride particles, such as collapse of the aggregates during kneading with a resin or during pressing that causes a decrease in thermal conductivity to occur, when the crushing strength is less than 8.0 MPa (abstract and para. 0028). Takeda et al. teach the crushing strength is obtained by adjusting the aspect ratio of the primary particles that constitute the aggregate and parameters and during a crystallization process (para. 0030 and 0079). Thus, alternative/optional to the rationale to Otsuka et al. alone as set forth above, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide the crushing strength property/magnitude of Takeda et al. to Otsuka et al.’s boron nitride aggregate powder in order to obtain collapse resistant, thermally conductive boron nitride aggregate powder or even simply practice Otsuka et al.’s thermally conductive boron nitride secondary particles having an improved compression fracture strength with a reasonable expectation of success. Prior Art Cited But Not Applied The following prior art is made of record and not relied upon but is considered pertinent to Applicant's disclosure and the cited prior art references of record relied upon above : Nahas et al. (US 2018/0362726 A1) is a cited reference of interest similarly drawn to powder composed of aggregates based on boron nitride (abstract) where it is disclosed, in the present art(s), the term “aggregate” is conventionally understood to mean a collection of particles comprising boron nitride being assembled together and strongly bonded in a rigid fashion which constitute said powder (para. 0021). The remaining references listed on Forms 892, 1449, and PCT 210 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above. C orrespondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00 a-5:00p EST. Examiner interviews are available via telephone 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 s ://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272- 2817 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MATTHEW R DIAZ/ Primary Examiner, Art Unit 1761 /M . R . D . / March 9, 20 26
Read full office action

Prosecution Timeline

Sep 22, 2023
Application Filed
Mar 09, 2026
Non-Final Rejection — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
53%
Grant Probability
98%
With Interview (+45.1%)
2y 10m
Median Time to Grant
Low
PTA Risk
Based on 515 resolved cases by this examiner. Grant probability derived from career allow rate.

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