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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Preliminary Amendment
Applicant’s preliminary amendments to the claims and specification filed on 6 December 2023 have been received and considered for this action.
Information Disclosure Statements
The Information Disclosure Statements filed on 15 December 2023, 8 February 2024, and 13 August 2025 have been received and considered by the Examiner.
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yokota et al. (JP 2012056818 A; Foreign patent document #2 on the IDS filed 15 December 2023). The provided English machine translation of Yokota (JP 2012056818 A) is referenced in the analysis below.
Regarding claim 4, Yokota discloses a method of producing a hexagonal nitride powder (Comparative Example 3: hBN powder was obtained in the same manner as in Example 1; [0037]) comprising:
a calcination step of firing a raw material powder containing a boron- containing compound powder (boric acid) and a nitrogen-containing compound powder (melamine) at 800°C in an atmosphere of ammonia gas to obtain a calcined product containing hexagonal boron nitride (Example 1; [0026]-[0027]);
a firing step of heating and firing a mixed powder containing the calcined product and an aid (calcium carbonate as a crystallization catalyst) at 2000 °C for 22 hours in an atmosphere of an inert gas (nitrogen; [0028]);
a purification step of pulverizing, washing, and drying a fired product obtained in the firing step to obtain a hexagonal boron nitride powder (After calcination, the sample was ground to a particle size of 150 μm or less…this was mixed with a dilute nitric acid aqueous solution, filtered, and dried; [0028]).
Though Yokota is silent with respect to the attenuation rates of the hexagonal boron nitride powder produced by this method, it is noted that the method described by Yokota is substantially identical to the method instantly disclosed for examples 1 and 2, where the crystallization aid is substituted for another that the instant disclosure also teaches will work ([0026]), where the firing time of 22 hours lies between the firing time of Example 1 (30 hours) and Example 2 (15 hours), and where the washing solution of dilute nitric acid is the same.
Therefore, it is reasonable to conclude that the material obtained by the method of Yokota will have properties that are substantially similar to those of the material obtained by the method of Example 1 and Example 2 in the instant disclosure, including an attenuation rate of a positive charge that is higher than an attenuation rate of a negative charge when the attenuation rates of the positive and negative charges are determined through charge attenuation measurement and compared with each other.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of [their] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 4380, 483-34 (CCPA 1977)), see MPEP 2112.
Regarding claims 1 and 2, because Yokota discloses a method that is substantially identical to that instantly disclosed in Examples 1 and 2, and because such a method is expected to yield a hexagonal boron nitride powder with properties substantially similar to those exhibited by Examples 1 and 2 of the instant disclosure, as analyzed for claim 4, it is reasonable to conclude that the method taught by Yokota will produce a hexagonal boron nitride powder that meets the limitations of claims 1 and 2.
It is again noted that once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant.
Regarding claim 3, Yokota teaches the hexagonal boron nitride powder of claim 1, and the remaining limitations of claim 3 merely represent an intended use of the material. Because the material of Yokota could be used as raw material for a cosmetic preparation, Yokota also anticipates claim 3.
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 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.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Yokota et al. (JP 2012056818 A; Foreign patent document #2 on the IDS filed 15 December 2023), as applied to claims 1 and 4, and further in view of Koshida et al. (JP 2012176910 A; Foreign patent document #3 on the IDS filed 15 December 2023). The provided English machine translation of Yokota (JP 2012056818 A) and Koshida (JP 2012176910 A) are referenced in the analysis below.
Regarding claim 5, Yokota teaches the hexagonal boron nitride powder of claim 1, and that their method forms an aggregate comprised of flaky particles without orientation ([0028]). Yokota does not teach a cosmetic preparation incorporating this material.
However, Koshida also teaches hexagonal boron nitride powders, and further teaches incorporating these powders into cosmetic preparations ([0001]). Koshida additionally teaches that their hexagonal boron nitride powders are prepared by firing at 2000 °C under nitrogen to crystallize the hexagonal boron nitride and form aggregates of plate-like particles (aggregate is a plate-like structure formed by stacking primary particles that have a flattened shape; [0024]), similar to Yokota. Koshida further teaches, like Yokota, that the orientation of the particles is detrimental (if [the diameter] exceeds 20 μm, orientation occurs and the density of the aggregate decreases (porosity increases), so the average major diameter of the primary particles was limited to the range of 2 to 20 μm. are not oriented; [0024]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the material prepared by the method of Yokota in a cosmetic preparation, as taught by Koshida. One of ordinary skill in the art would have been motivated to do so because Koshida teaches that similarly prepared aggregates of non-oriented, plate-like hexagonal boron nitride can be incorporated into cosmetic preparations with good properties.
Regarding claim 6, Yokota teaches the method of producing hexagonal boron nitride (hBN) powder according to claim 4, and that their method forms an aggregate comprised of flaky particles of hBN without orientation ([0028]). Yokota does not teach producing a cosmetic preparation incorporating this powder as a raw material.
However, Koshida also teaches hexagonal boron nitride powders, and further teaches a method for producing a cosmetic preparation comprising using hBN powder produced by a method similar to Yokota’s method as a raw material ([0001], [0043], and [0048]). In particular, Koshida teaches that their hexagonal boron nitride powders are prepared using a firing at 2000 °C under nitrogen to crystallize the hexagonal boron nitride and form aggregates of non-oriented, plate-like particles (aggregate is a plate-like structure formed by stacking primary particles that have a flattened shape…if [the diameter] exceeds 20 μm, orientation occurs and the density of the aggregate decreases (porosity increases), so the average major diameter of the primary particles was limited to the range of 2 to 20 μm. are not oriented ; [0024]), which is similar to the method and hBN powders of Yokota.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the material prepared by the method of Yokota as a raw material in a method for producing a cosmetic preparation, as taught by Koshida. One of ordinary skill in the art would have been motivated to do so because Koshida teaches that similarly prepared aggregates of plate-like hexagonal boron nitride that are not oriented can be incorporated into cosmetic preparations with good properties.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/567,533. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of the ‘533 application teaches the method steps of claim 4 of the instant application, and such a method will produce a hexagonal boron nitride powder with the properties required by instant claims 1, 2, and 4. Furthermore, claims 7 and 8 of the ‘533 application recite using such boron nitride in an cosmetic preparation, and hence the limitations of instant claims 3, 5, and 6 are also obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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