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
Response to Election/Restrictions
1. Applicant’s election without traverse of Group I, claims 1-5, in the reply filed on 08/17/2026 is acknowledged.
2. Claims 6-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/17/2026.
Status of Application
3. This application is a 371 of PCT/JP2022/021916, which was filed on 05/30/2022.
Claims 1-14 were originally presented in this application for examination.
Claims 1-14 are currently pending in this application for examination.
Priority
4. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The foreign documents JP2021-093061 and JP2021-093063 (filed on 06/02/2021) have been received in this application.
Specification
5. The examiner has not checked the specification to the extent necessary to determine the presence of all possible minor errors (grammatical, typographical, and idiomatic). Cooperation of the applicant(s) is requested in correcting any errors of which applicant(s) may become aware of in the specification, in the claims and in any further amendment(s) that applicant(s) may file.
Applicant(s) is also requested to complete the status of the copending applications referred to in the specification by their Attorney Docket Number or Application Serial Number, if any.
The status of the parent application(s) and/or any other application(s) cross-referenced to this application, if any, should be updated in a timely manner.
Claim Rejections - 35 USC § 112 (Second Paragraph)
6. 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 applicant regards as his invention.
Claims 1-5 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The phrase “by a wet method” in the claims is unclear as to what is intended. Even though the instant claims are drawn to a product and that specific process steps for preparing the product by the wet method are not required in the claims, the claims themselves must be clearly pointed out.
Claim Rejections - 35 USC § 103
7. 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.
Claim(s) 1, 2, & 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takeda et al. (US 2021/0163288 A1), hereinafter “Takeda et al.” in view of Inaki et al. (US 2022/0263112).
The claimed invention relates to a hexagonal boron nitride powder having a particle size distribution by a wet method in which the proportion of particles within a particle diameter range of 2.0 to 20 µm is not less than 50 vol%, and having a particle diameter dG by a grind gauge measurement of not more than 44 µm (as recited in claim 1).
Regarding claims 1, 2, & 4, Takeda et al. discloses a hexagonal boron nitride powder having an average particle diameter of 2.0 to 30 um (see page 6, claims 1-2), which means D50 is 2.0 to 30 um which encompass the instantly claimed particle size distribution of 2.0 to 20 um, 5.0 to 20 um, respectively.
Even though the reference does not disclose a particle diameter dG measured by using a grind gauge measurement instrument/method (JISK5600-2-5 according to the instant spec. [0013]), it is considered obvious to utilize such instrument/method to measure the particle diameter of the reference product with unexpected results because such instrument/method is known in the art for measuring fine particles, as evidenced by Inaki et al. (see Abstract; p. 17, claim 1).
Claims 1, 2, & 4 are unpatentable as being obvious over Takeda et al. in view of Inaki et al.
B. Claim(s) 1, 2, & 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ikeda et al. (US 2022/0041445 A1), hereinafter “Ikeda et al.” in view of Inaki et al. (US 2019/0389725).
The claimed invention relates to a hexagonal boron nitride powder having a particle size distribution by a wet method in which the proportion of particles within a particle diameter range of 2.0 to 20 µm is not less than 50 vol%, and having a particle diameter dG by a grind gauge measurement of not more than 44 µm (as recited in claim 1).
Ikeda e al. discloses hexagonal boron nitride powder, comprising hexagonal boron nitride agglomerate particles each including agglomerated hexagonal boron nitride primary particles having a long diameter of not less than 0.6 um and not more than 4.0 um and an aspect ratio of not less than 1.5 and not more than 5.0 (see page 10, claim 1). The hexagonal boron nitride powder has a D95, as measured via a particle size distribution measurement, of 5 um and 15 um (see page 10, claim 3).
Regarding claims 1, 2, & 4, Ikeda et al. discloses a hexagonal boron nitride powder having a D95 of 5 um to 15 um (see page 10, claim 3), which falls within the instantly claimed particle size distribution of 2.0 to 20 um, 5.0 to 20 um, respectively.
Even though the reference does not disclose a particle diameter dG measured by using a grind gauge measurement instrument/method (JISK5600-2-5 according to the instant spec. [0013]), it is considered obvious to utilize such instrument/method to measure the particle diameter of the reference product with unexpected results because such instrument/method is known in the art, as evidenced by Inaki et al. (see Abstract; p. 17, claim 1).
Claims 1, 2, & 4 are unpatentable as being obvious over Ikeda et al. in view of Inaki et al.
Allowable Subject Matter
8. Claims 3 & 5 are objected to as being dependent upon a rejected base claim, however they would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims.
Takeda et al. and Ikeda et al. teach the claimed hexagonal boron nitride powder having the claimed particle size distributions as recited in the instant claim 1, however the references do not teach the claimed ratio dG/D100 of the particle diameter of 1.0 to 1.6 and 1.0 to 2.3, respectively.
There would be no motivation to combine the teachings of the prior art references together to arrive to the claimed invention.
Conclusion
9. Claims 1-14 are pending. Claims 1-5 are rejected. Claims 6-14 are withdrawn. No claims are allowed.
Contacts
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner CAM N. NGUYEN whose telephone number is (571)272-1357. The examiner can normally be reached on M-F (8:30 am – 5:00 pm) at alternative worksite or at cam.nguyen@uspto.gov.
Examiner interviews are available via telephone, in-person, 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://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer, can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Cam N. Nguyen/Primary Examiner, Art Unit 1736
/CNN/
September 17, 2026
Prosecution Insights