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.
Terminal Disclaimer
The terminal disclaimer filed on 10 July 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent issued from Application No. 18/567,533 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The prior non-statutory double patenting rejections are withdrawn.
Amendments
Applicant’s amendments to the claims filed on 10 July 2026 have been entered and considered for this action.
Information Disclosure Statements
The Information Disclosure Statements filed on 8 July 2026 and 26 August 2026 have been received and considered by the Examiner.
Claim Rejections - 35 USC § 112
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 1-6 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.
Independent claims 1 and 4 each recite the limitation “an absolute value of a difference in the attenuation rate between the positive charge and the negative charge is less than 0.005.” However, the difference in attenuation rates is a quantity that must have units, but no units on this quantity are included in the claims or in the specification. From Equations 1 and 2 ([0017] and [0040]), it appears that the appropriate units for charge attenuation rate as calculated are (time)-1/2, but it is not clear what units of time are used in the data reported in Table 2. The metes and bounds of the claim are therefore indefinite and the claims are rejected.
Claims 2-3 and 5-6 depend upon claims 1 or 4 and are likewise rejected.
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 and wherein the absolute value of the difference in attenuation rates between the positive charge and the negative charge are less than 0.005.
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.
Response to Arguments
Applicant’s arguments, see pages 4-6 of the reply filed 10 July 2026, with respect to the rejection of claims 1-6 under 35 USC § 102 and 103 have been fully considered but are not persuasive.
Applicant’s argues on pages 4-5 that because the procedures of Yokota and the instant invention are not identical that Yokota’s hBN will not inherently have the properties of charge attenuation instantly claimed. This argument is not persuasive.
The method of forming hBN taught by Yokota need not be identical in every respect in order for the material to inherently posses the claimed property. The methods of Yokota and the instant invention remain substantially similar, and the prior conclusion that the claimed properties would be inherent in Yokota’s sample is not improper.
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 proof 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. Additionally, arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
Because Applicant has not supplied any evidence that the product of Yokota would not possess the instantly claimed features, the finding of inherency and the prior rejections are maintained.
It is additionally noted that the new limitations introduced to claims 1 and 4 lack units, and it is therefore impossible to ascertain how strict of a limitation they actually present. Furthermore, even Comparative Example 1 with its “very poor” spreadability, has an absolute value of the difference in attenuation rate of 0.006 (Table 1), which falls only just barley outside the claimed range.
Regarding the argument that one of ordinary skill in the art would not select Comparative Example 3 for applying in cosmetic formulations, as suggested by Koshida, it is acknowledged that Comparative Example 3 does not have the properties that Yokota sought for a high thermal conductivity filler. However, the application taught by Koshida is different, as Koshida seeks only to exploit the lubricating properties of hBN in their products ([0002]), with no noted concern for its thermal properties. Therefore, while Yokota can be considered as teaching away from thermal applications, they do not teach away from cosmetic applications, and one of ordinary skill would still find it obvious to use such a material in the products suggested by Koshida with a reasonable expectation of success.
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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