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 .
This action is responsive to Applicant’s amendment/remarks filed 06/01/2026.
Claims 1-4 are currently pending.
Response to Amendment
The rejection of claim 2 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
The 102 and 103 rejections over or based-on Otsuka et al. (WO 2016/092952 A1) are withdrawn in view of the above amendment. The independent claim has been amended to limit the BET specific surface area of the boron nitride powder to 4.6 to 12 m2/g. Otsuka et al. teach a hexagonal boron nitride (hBN) powder containing an aggregate of hexagonal boron nitride primary particles that has a BET specific surface area of 15-25 m2/g (abstract and claim 1), which, while this fell within the prior claimed open-ended range of 4.6 m2/g or more, is outside the presently claimed closed-ended range of 4.6 to 12 m2/g. Otsuka et al. fail to further teach or suggest any reason to deviate below their BET specific surface area to closer approach the claimed range while also obtaining the other instantly recited properties (average pore diameter, average diameter of boron nitride pieces/primary particles, etc.). See also Applicant’s persuasive arguments on p.4-5 of the remarks filed 06/01/2026.
However, upon careful consideration the 103 rejections over Sawamura et al. (JP 2015-195292 A) and Sawamura et al. further in view of Takeda et al. (WO 2020/004600 A1) as previously set forth in the Office action mailed 03/11/2026 are generally maintained and has been revised below to reflect the changes in claim scope made by Applicant’s present claim amendments.
Claim Interpretation
The Office makes the following notes about claim interpretation. The claims recite, inter alia, a boron nitride powder that is an aggregate of boron nitride particles wherein each of the boron nitride particles is composed of a plurality of boron nitride pieces. While the term “aggregate” in the art can mean that particles are attached/bound to one another, this is not the case, here. The 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 essentially one in the same per the specification. Furthermore, the specification discloses crushing strength was measured by taking 20 individual boron nitride particles from each of the obtained boron nitride powders from the examples ([0070]+), which indicates the boron nitride particles are not attached/bound to one another but are instead loose and separable; individual boron nitride particles could not be obtained/isolated in the manner disclosed for the measurement if they were bound to each other to constitute the boron nitride powder.
Accordingly, the term “aggregate” as is used in the claims (“a boron nitride powder that is an aggregate of boron nitride particles”) means a collection of particles constituting a body, mass, or amount; in other words, the boron nitride powder is merely a collection, i.e., plurality, of the boron nitride particles (that are each composed of a plurality of boron nitride pieces). In other words, the boron nitride particles are essentially secondary particles composed of primary particles (the boron nitride pieces) and the boron nitride powder is a plurality of these boron nitride particles collected/present together. Additionally, while the “aggregate” recited in the preamble refers to a collection/plurality of boron nitride particles, the structure of each boron nitride particle (each being composed of a plurality of boron nitride pieces per claim 1, and chemically bonded to each other per claim 2) is what is known in the art as an “aggregate” of particles (the boron nitride pieces) that are attached/bound to one another. See also the Nahas et al. reference of record (cited below in the Prior Art Cited But Not Applied section).
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, 2, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Sawamura et al. (JP 2015-195292 A) optionally in view of Takeda et al. (WO 2020/004600 A1, utilizing US 2021/0261413 A1 as an English language equivalent). An English language machine translation of Sawamura et al. is attached to the Office’s previously supplied copy of the reference, and citations are 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). Each of Sawamura et al.’s boron nitride secondary particles of aggregated primary particles reads on the claimed boron nitride particle composed of a plurality of boron nitride pieces that are chemically bonded/bound to each other. As these is a plurality the boron nitride secondary particles (the grammar of the reference indicates there are “boron nitride secondary particles”), this plurality of boron nitride secondary particles reads on the claimed boron nitride powder that is an aggregate (i.e., collection/plurality) of boron nitride particles. In other words, Sawamura et al.’s primary particles read on the claimed boron nitride pieces, Sawamura et al.’s secondary particles (of aggregated primary particles) read on the claimed boron nitride particles, and Sawamura et al.’s plurality of secondary particles reads on the claimed boron nitride powder.
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 m2/g or more and 20 m2/g or less and a narrowest/most preferable specific surface area range of 3.5 m2/g or more and 14 m2/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 of 4.6 m2/g or more and 12 m2/g or less.
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 disclosed 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 m2/g or more and 12 m2/g or less 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.
Regarding average thickness of the boron nitride pieces, Figure 3(a) of Sawamura et al. is a SEM photograph showing an exemplary boron nitride secondary particle that is an aggregate composed of boron nitride primary particles bound together (see, e.g., p.24 of the machine translation for the drawing description and the actual Figure in the original document). The boron nitride primary particles are plate-shaped (p.7 of the machine translation and the actual Figure). The major axis of the plate-shaped boron nitride primary particles is usually about 0.5 to 10 micrometers, preferably 0.6 to 5 micrometers, more preferably 0.8 to 3 micrometers, and still more preferably 1.0 to 3 micrometers (p.7 of the machine translation). Figure 3(a) of Sawamura et al. has a scale bar in the lower right corner of 100 nm, i.e., 0.10 micrometers, and clearly shows the thickness of the plate-shaped boron nitride primary particles have a thickness less than the scale bar, i.e., less than 0.1, which meets the claimed average thickness of the boron nitride pieces being 0.30 micrometers or less, as claimed.
In the event Sawamura et al.’s Figure is somehow deficient in meeting the claimed average thickness of boron nitride pieces (primary particles), Takeda et al. is similarly drawn to aggregated boron nitride primary particles and powders thereof 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). The aspect ratio is preferably 11 to 18 and more preferably 12 to 15 (Id./para. 0030).
Thus, at the time of the effective filing date it would have also been obvious to a person of ordinary skill in the art to provide the boron nitride primary particle aspect ratio(s) taught by Takeda et al. to Sawamura et al.’s boron nitride primary particles in order to obtain/improve the crushing strength of boron nitride secondary particles composed of aggregates of the boron nitride primary particles with a reasonable expectation of success. Providing Takeda et al.’s preferred aspect ratio (ratio of major/minor axis lengths, i.e., ratio of diameter/thickness) of 11 to 18 to Sawamura et al.’s major axis ranges for the plate-shaped boron nitride primary particles results in thickness ranges of about 0.028-0.91 micrometers for the most broad about 0.5 to 10 micrometers major axis range (i.e., the min and max values from dividing the end points of the range by 11 and 18), about 0.033-0.46 micrometers for the preferred 0.6 to 5 micrometers major axis range, about 0.044-0.27 micrometers for the more preferred 0.8 to 3 micrometers major axis range, and about 0.056-0.27 micrometers for the most preferred 1 to 3 micrometers major axis range. The first two calculated thickness ranges overlap the claimed average thickness, and the final two calculated thickness ranges fall within the claimed average thickness.
As to claim 2, Sawamura et al.’s boron nitride secondary particles of aggregated primary particles cited above reads on the claimed limitations that each of the boron nitride particles is composed of a plurality of boron nitride pieces (Id.) wherein in each of the boron nitride particles, the plurality of boron nitride pieces are chemically bonded/bound to each other. See also the Figures of the reference. Additionally, in the present art(s), the term “aggregate” (used in the context of primary particles aggregated into secondary particles as in Sawamura et al. and Takeda et al.) 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) 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. optionally in view of Takeda et al. is/are relied upon as set forth above. Unlike the above 103 rejection of 1, 2, and 4 that optionally relies on Takeda et al., reliance on Takeda et al. nonoptional under this heading.
The above combination of Sawamura et al. and Takeda et al. meets the claimed average crushing strength of 8 MPa or higher.
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). As already cited above, 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 (Id., 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. In other words, provision of Takeda et al.’s primary particle aspect ratio to Sawamura et al.’s boron nitride primary particles in order to obtain/improve the crushing strength of boron nitride secondary particles composed of aggregates of the boron nitride primary particles as proposed in the optional rationale of claim 1 arrives at and meets the claimed 8.0 MPa minimum crushing strength.
Response to Arguments
Applicant's arguments filed 06/01/2026 have been fully considered but they are not persuasive.
Applicant argues Sawamura et al. (JP 2015-195292 A) fails to disclose or suggest controlling thickness of primary particles (the boron nitride pieces) to a specific thin dimension as claimed such that a person of ordinary skill in the art would not have been motivated by Sawamura et al. to arrive at the presently claimed invention.
In response, this argument is not persuasive because Figure 3(a) of Sawamura et al. sufficiently depicts such a primary particle thickness. Figure 3(a) of Sawamura et al. is a SEM photograph showing an exemplary boron nitride secondary particle that is an aggregate composed of boron nitride primary particles bound together (see, e.g., p.24 of the machine translation for the drawing description and the actual Figure in the original document). The boron nitride primary particles are plate-shaped (p.7 of the machine translation and the actual Figure). The major axis of the plate-shaped boron nitride primary particles is usually about 0.5 to 10 micrometers, preferably 0.6 to 5 micrometers, more preferably 0.8 to 3 micrometers, and still more preferably 1.0 to 3 micrometers (p.7 of the machine translation). Figure 3(a) of Sawamura et al. has a scale bar in the lower right corner of 100 nm, i.e., 0.10 micrometers, and clearly shows the thickness of the plate-shaped boron nitride primary particles have a thickness less than the scale bar, i.e., less than 0.1, which meets the claimed average thickness of the boron nitride pieces being 0.30 micrometers or less, as claimed.
Also, Applicant’s arguments with respect to Sawamura et al. allegedly being deficient in disclosing a thickness for their boron nitride primary particles is moot because the argument does not apply to all of the references being used in the current rejection. The newly claimed boron nitride pieces thickness limitation is alternatively rejected over Sawamura et al. in view of Takeda et al. in the event Sawamura et al.’s figure is found deficient. See the new 103 rejection above.
Applicant further argues the combination of the specific BET specific surface area range and the thin average thickness of the boron nitride pieces is a structural feature that enables efficient formation of thermal conduction paths that is not a mere optimization of numerical values or a routine design choice but rather reflects a specific structural configuration that achieves the advantageous effects described in the specification.
In response, Sawamura et al.’s BET specific surface area overlaps that claimed. Additionally, Sawamura et al. and Sawamura et al. in view of Takeda et al. teach, meet and/or overlap the claimed average thickness of the boron nitride pieces. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). However, Sawamura et al. nevertheless teach heat dissipation sheets formed of the boron nitride secondary particles achieve high thermal conductivity and withstand high voltage while ensuring reliability at high temperature of a power device (abstract). Sawamura et al.’s heat dissipation sheets effectively bonds the boron nitride particles together to form a heat path and easily forms heat conduction paths (see, e.g., p.20 of the machine translation).
Additionally, the advantageous effects described in the specification are of little probative value in the determining patentability of claims since the comparative showing in the specification does not involve a comparison of Applicant’s invention with the closest applied prior art. See In re De Blawe, 222 USPQ 191 (FED. Cir. 1984), and In re Fenn, 208 USPQ 470 (CCPA 1981).
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” (used in the context of primary particles aggregated into secondary particles) 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). Note that Nahas et al. also contrasts this with the term “agglomerate” as understood to mean a collection of particles that are weakly bonded (para. 0022).
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.
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.
Correspondence
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 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
July 6, 2026
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