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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group II, claims 2-5 in the reply filed on 05/22/2026 is acknowledged. The traversal is on the ground that the reference as cited in the office action does not teach the newly added common technical feature as presently claimed. This is not found persuasive because, as set forth in the following rejection part in this office action, the newly cited reference teaches the common technical features as claimed. Therefore, the restriction requirement is still deemed proper and is therefore made FINAL. Accordingly, claims 1 and 6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 2-5 are currently under examination on the merits.
Claim Rejections - 35 USC § 102
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.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 2-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yuki et al (JP 6348610B, of record, see IDS 07/15/2025, ‘601 hereafter).
Regarding claims 2-5, ‘601 discloses a boron nitride particle composed of a plurality of boron nitride pieces which are chemically bond to each other (primary particles, Figs. 1 , 2 and 4, [0009], [0012]-[0013], the particles may be chemically bond with each other by Boron compound residue [0031], Table 2, B2O3), wherein the boron nitride pieces have an most preferred average particle diameter being 1 to 3 micron with aspect ratio with thickness of 5 to 20, thus render the thickness of the particles in a range of 0. 05 to 0.6 microns, which overlaps or falls within the instantly claimed range of less than 0.25 microns ([0013], Table 2, Examples 1-3 and Comparative Example 3, thickness could be 1 micron/5=0.20 micron). ‘601 also discloses that the boron nitride particle has an average pore diameter being around 77 to 400 nanometer satisfying instantly claimed range being 0.40 micron or less ([0019], Examples 1-3 and Comparative Example 3), an BET specific surface area being 15 to 27 m2/g ([0012], Table 2, Examples 1-3 and Comparative Example 3), satisfying instantly claimed range of 4.6 m2/g or more, and a crushing strength of 7.0 MPa or higher satisfying instantly claimed range of 8 MPa or higher ([0014], Table 2, Comparative Example 3, 9.2 MPa).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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