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 § 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 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sherman et al. (US 2017/0268088) in view of Cook (US 5,672,433) and Kondoh et al. US 2005/0016638).
Considering claim 1, Sherman teaches a moldable Mg-based composite alloy that includes one or more additives (abstract) where the additive is an insoluble particle uniformly dispersed in the metal or base metal alloy through thixomolding, etc. (Paragraph 19) (e.g. a thioxtropically molded product of a Mg-based matrix). The insoluble particles may include boron nitride, etc. (Paragraph 32) and have a size of less than about 1 µm (Paragraph 24) with an average size of at least about 10 nm and in an amount of at least about 0.1 vol.% (Paragraph 30). The magnesium-based composite has improved thermal properties and mechanical properties (Paragraph 16). However, Sherman does not teach the claimed c-BN or w-BN.
In a related field of endeavor, Cook teaches composite metal matrix materials comprising a reinforcement material infiltrated with a matrix of Mg or Mg-alloy (abstract). The reinforcement material may be a high thermal conductivity material including cubic boron nitride (c-BN), SiC, etc. where use of c-BN affords the highest thermal conductivity (Column 3 lines 37-48).
In a related field of endeavor, Kondoh teaches Mg-based composites (abstract) having excellent mechanical properties (abstract). The Mg matrix comprises Mg2Si grains (Paragraph 7) (e.g. second particles) in not less than 3 wt.% of the composite (Paragraph 19) and further contains MgO and/or SiO2 grains (e.g. third particles) (Paragraph 61) which improve upon the mechanical characteristics of the composite (Paragraph 224).
As both Sherman and Cook teach thermally conductive Mg-matrix materials they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Sherman with the c-BN material taught by Cook as this is known to afford high thermal conductivity and to modify the teachings of Sherman with the Mg2Si and MgO grains as taught by Kondoh as this is known to improve upon the mechanical characteristics and one would have had a reasonable expectation of success. The particle diameter and open-ended volume fraction disclosed by modified Sherman overlaps the average particle diameter and area fraction and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 2, Sherman teaches where the particles may have an average size greater than 400 nm (Paragraph 30) (e.g. >0.4 µm). See MPEP 2144.05.
Considering claim 4, Sherman teaches where the particles are uniformly dispersed throughout the composite (Paragraphs 19 and 164) and is considered to meet the claimed aggregated portion number density due to the conditional limitation of “when a site…” and the teaching of uniform dispersion by Sherman overlapping the lower limit of 1000 ppm or less (e.g. ~zero). See MPEP 2111.01 and 2144.05, respectively.
Considering claim 5, Kondoh teaches where the Mg2Si content is not less than 3 wt.% of the composite (Paragraph 19) and the MgO and/or SiO2 in an amount of not less than 2.5 parts per 100 parts by weight of the Mg matrix (Paragraphs 61 and 213) encompassing about 5.5 wt.% of the combined materials and Sherman teaches where the weight content of Mg is greater than the insoluble nanoparticles (claim 2) (e.g. up to just less than 50 wt.% is optionally BN) this overlaps the claimed 1-30% area fraction. See MPEP 2144.05.
Considering claim 6, modified Sherman does not expressly teach the claimed Vickers hardness. However, as outlined above, modified Sherman teaches a substantially identical Mg-matrix material as that which is claimed and one would reasonably expect the hardness to be present in the composite of modified Sherman as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Allowable Subject Matter
Claims 7-8 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of Sherman, Cook, and Lo do not adequately teach the combination of the metal body, bonding portion with interposed particles, and material combined with the claimed disposition between the metal body and boron nitride particles as well as between adjacent boron nitride particles.
Response to Arguments
Applicant's arguments filed 19 March 2026 regarding 35 USC 103 rejections have been fully considered but they are not persuasive. Applicant argues that the combination of Sherman, Cook, and Kondoh do not teach three particle portions of a 1st of c-BN or w-BN, a 2nd of Mg2Si, and a 3rd of MgO (remarks p.5, last paragraph) where each portion is separate (remarks p.6, 1st paragraph), and distinct such that each portion comprises the materials as main components (remarks p.7, 2nd paragraph).
This is not persuasive as Sherman teaches a Mg-based alloy with Mg matrix (Paragraph 19) comprising BN insoluble particles (Paragraph 32), Cook teaches where c-BN particles in a Mg-alloy matrix afford the highest thermal conductivity (Column 3 lines 37-48), and Kondoh teaches the inclusion of Mg2Si grains (Paragraph 19) which are evenly dispersed (Paragraph 222) and MgO grains (Paragraph 61) which are evenly dispersed and improves upon the mechanical characteristics of the composite (Paragraph 224). As such, the prior art adequately suggests the use of three separate particles. Further, as these materials are taught for each type of particle, each particle is considered “a main component” of said material.
Regarding the argued separate and distinct portions for each of the particles, this is not persuasive as these are not recited features and therefore applicant’s arguments are not commensurate with that which is claimed. See MPEP 2145 (VI). The instant claims use the open-language transitional phrase “comprising” and only require 1st – 3rd particle portions where each particle portion as claimed is the main component. Even if applicant’s arguments were commensurate, the transitional phrase does not preclude the presence of any other particle within any particular portion and therefore an evenly dispersed mixture of matrix and 1st – 3rd particles satisfies the claimed molded product. See MPEP 2111.03. Further, the instant claims are silent regarding any particular size of each of the portions which therefore encompasses portions only of the size of each of the 1st – 3rd particles. As such, the prior art meets that which is claimed.
Applicant’s arguments, see remarks p.7, filed 19 March 2026, with respect to 35 USC 103 rejections of claims 7-8 have been fully considered and are persuasive. The rejection of claims 7-8 has been withdrawn. As outlined above, the prior art does not adequately teach the amended claims.
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.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784