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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-4 and 7 in the reply filed on 12/16/2025 is acknowledged.
The traversal is on the ground(s) that because the amended product claim 1 and the amended method claim 5 share the same special technical feature (a hexagonal boron nitride powder with a D10 greater than or equal to 2 µM and a D90/D10 ration greater than or equal to 4.5), which was not known in the prior art, unity of invention now exists between Group I and Group II.
The Examiner disagrees, groups I-II lack a special technical feature and do not make a contribution to the art, in view of Ikeda. Ikeda discloses hexagonal boron nitride agglomerate particles each including agglomerated hexagonal boron nitride primary particles (abstract). In Example 3 (Table 2, [0128]) the particles have a D10 value of 2.8 µm, a D50 value of 6.5 µm, and a D90 value of 11.3 µm (D90/D10 ratio is 4.03). In Comparative Example 2 (Table 2, [0128]) the particles have a D10 value of 1.8 µm, a D50 value of 5.3 µm, and a D90 value of 8.2 µm (D90/D10 ratio is 4.56). Ikeda teaches that a D10 of the hexagonal boron nitride powder is preferably not less than 2.0 µm [0030]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 A.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5 and 8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 and 7 are rejected under 35 U.S.C. 102 as being as being anticipated by Sane et al. (US 2006/0121068 A1).
Claim 1 is anticipated because Sane discloses in Table 6C, Example 3 (pg. 9), agglomerates of hexagonal boron nitride particles with values of D10 = 5.871 µM, D50 = 17.5 µM, and D90 = 39.69 µM [0090] [0083] [0023]. The D90/D10 ratio is 6.76.
If the prior art discloses a point within the claimed range, the prior art anticipates the claim. See MPEP 2131.03.
Regarding the limitation of “measured through a laser diffraction/light scattering method”, a chemical composition and its properties are inseparable. MPEP 2112.01 II. Therefore, because the prior art teaches hexagonal boron nitride particles with the same sizes (i.e., D10, D50, and D90 values), the properties the applicant discloses and/or claims (these values when measured through a laser diffraction/light scattering method) are necessarily present.
Claim 2 is anticipated because the D90/D50 ratio is 2.268 (Table 6C, Example 3, pg. 9).
Claim 3 is anticipated because D90 = 39.69 µM (Table 6C, Example 3, pg. 9).
Regarding claim 4, the limitation of “for a raw material for a cosmetic preparation” is interpreted as an intended use of the particles. The particles of Sane appear to be capable of meeting the intended use because Sane discloses that the powder is used in cosmetic applications [0059] and therefore, claim 4 is anticipated.
Claim 7 is anticipated because Sane teaches that the powder is used in cosmetic applications [0059].
Claims 1-4 and 7 are rejected under 35 U.S.C. 102 as being as being anticipated by Meneghetti et al. (US 2008/0153960 A1) as evidenced by PolarTherm (Boron Nitride Powder PTX25).
Claim 1 is anticipated because Meneghetti discloses at paragraphs [0048]-[0049] agglomerates of PTX25. Ex. 19 (Table 10) of 100% PTX 25 has a D10 value of 8 µM, a D50 value of 20 µM, and a D90 value of 36 µM. The D90/D10 ratio is 4.5.
As evidenced by PolarTherm PTX25 is hexagonal boron nitride powder (pg. 1).
If the prior art discloses a point within the claimed range, the prior art anticipates the claim. See MPEP 2131.03.
Regarding the limitation of “measured through a laser diffraction/light scattering method”, a chemical composition and its properties are inseparable. MPEP 2112.01 II. Therefore, because the prior art teaches hexagonal boron nitride particles with the same sizes (i.e., D10, D50, and D90 values), the properties the applicant discloses and/or claims (these values when measured through a laser diffraction/light scattering method) are necessarily present.
Claim 2 is anticipated because the D90/D50 ratio is 1.8 ([0048]-[0049], Ex. 19, Table 10).
Claim 3 is anticipated because D90 = 36 µM ([0048]-[0049], Ex. 19, Table 10).
Regarding claim 4, the limitation of “for a raw material for a cosmetic preparation” is interpreted as an intended use of the particles. The particles of Meneghetti appear to be capable of meeting the intended use because Meneghetti discloses that boron nitride particles can be used in makeup materials [0003] and therefore, claim 4 is anticipated.
Claim 7 is anticipated because Meneghetti discloses that boron nitride particles can be used in makeup materials [0003].
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 1-4 and 7 are rejected under 35 U.S.C. 103 as being as being obvious over Sane et al. (US 2006/0121068 A1).
Sane et al is believed to be anticipatory as described above, but in the interest of completeness of prosecution, purely arguendo, and for the purposes of this ground of rejection only, Sane will be interpreted as if it is not anticipatory.
In that case, Sane could be construed as not clearly and unequivocally disclosing the claimed invention because Sane does not disclose that the sizes are measured through a laser diffraction/light scattering method.
Sane is silent on the method used to measure the particle sizes. Nevertheless, it is prima facie obvious to one of ordinary skill in the art to determine these values empirically through methods known in the art (e.g., laser diffraction/light scattering).
Claim 1 is rendered prima facie obvious because Sane discloses in Table 6C, Example 3 (pg. 9), agglomerates of hexagonal boron nitride particles with values of D10 = 5.871 µM, D50 = 17.5 µM, and D90 = 39.69 µM [0090] [0083] [0023]. The D90/D10 ratio is 6.76.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Claim 2 is rendered prima facie obvious because the D90/D50 ratio is 2.268 (Table 6C, Example 3, pg. 9).
Claim 3 is rendered prima facie obvious because Sane discloses D90 = 39.69 µM (Table 6C, Example 3, pg. 9).
Regarding claim 4, the limitation of “for a raw material for a cosmetic preparation” is interpreted as an intended use of the particles. The particles of Sane appear to be capable of meeting the intended use because Sane teaches that the powder is used in cosmetic applications [0059] and therefore, claim 4 is prima facie obvious.
Claim 7 is rendered prima facie obvious because Sane discloses that the powder is used in cosmetic applications [0059].
Claims 1-4 and 7 are rejected under 35 U.S.C. 103 as being as being obvious over Meneghetti et al. (US 2008/0153960 A1) as evidenced by PolarTherm (Boron Nitride Powder PTX25).
Meneghetti et al is believed to be anticipatory as described above, but in the interest of completeness of prosecution, purely arguendo, and for the purposes of this ground of rejection only, Meneghetti will be interpreted as if it is not anticipatory.
In that case, Meneghetti could be construed as not clearly and unequivocally disclosing the claimed invention because Meneghetti does not disclose that the sizes are measured through a laser diffraction/light scattering method.
Meneghetti is silent on the method used to measure the particle sizes. Nevertheless, it is prima facie obvious to one of ordinary skill in the art to determine these values empirically through methods known in the art (e.g., laser diffraction/light scattering).
Claim 1 is rendered prima facie obvious because Meneghetti discloses at paragraphs [0048]-[0049] agglomerates of PTX25. Ex. 19 (Table 10) of 100% PTX 25 has a D10 value of 8 µM, a D50 value of 20 µM, and a D90 value of 36 µM. The D90/D10 ratio is 4.5.
As evidenced by PolarTherm PTX25 is hexagonal boron nitride powder (pg. 1).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Claim 2 is rendered prime facie obvious because Meneghetti discloses the D90/D50 ratio is 1.8 ([0048]-[0049], Ex. 19, Table 10).
Claim 3 is rendered prime facie obvious because Meneghetti discloses D90 = 36 µM ([0048]-[0049], Ex. 19, Table 10).
Regarding claim 4, the limitation of “for a raw material for a cosmetic preparation” is interpreted as an intended use of the particles. The particles of Meneghetti appear to be capable of meeting the intended use because Meneghetti discloses that boron nitride particles can be used in makeup materials [0003] and therefore, claim 4 is prima facie obvious.
Claim 7 is rendered prime facie obvious because Meneghetti discloses that boron nitride particles can be used in makeup materials [0003].
Claims 1-4 are rejected under 35 U.S.C. 103 as being as being obvious over Ikeda et al. (WO 2020/179662 A1; with a foreign translation provided by US 2022/0041445 A1) as evidenced by Toshima (Nikkiso MT3000).
Regarding claims 1-3, Ikeda discloses hexagonal boron nitride agglomerate particles each including agglomerated hexagonal boron nitride primary particles (abstract). In Example 3 (Table 2, [0128]) the particles have a D10 value of 2.8 µm, a D50 value of 6.5 µm, and a D90 value of 11.3 µm (D90/D10 ratio is 4.03; D90/D50 ratio is 1.74). In Comparative Example 2 (Table 2, [0128]) the particles have a D10 value of 1.8 µm, a D50 value of 5.3 µm, and a D90 value of 8.2 µm (D90/D10 ratio is 4.56; D90/D50 ratio is 1.55). Ikeda teaches that the D10 value of the hexagonal boron nitride powder is preferably not less than 2.0 µm [0030]. Ikeda teaches that the particle size distribution is measured with MT3000, available from Nikkiso Co., Ltd. [0105].
As evidenced by Toshima, MT3000, available from Nikkiso Co., Ltd. measures particle size through laser diffraction (pg. 4).
Ikeda is not believed to be anticipatory because Ikeda does not disclose a specific example with values falling within the claimed range (D10 is 2 µm or more and a D90/D10 ratio is 4.5 or more).
Nevertheless, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 A.
Regarding claim 4, the limitation of “for a raw material for a cosmetic preparation” is interpreted as an intended use of the particles. There does not appear to be anything in the teachings of Ikeda preventing the use of the particles in a cosmetic preparation, and therefore, claim 4 is prima facie obvious.
Claims 4 and 7 are rejected under 35 U.S.C. 103 as being as being obvious over Ikeda et al. (WO 2020/179662 A1; with a foreign translation provided by US 2022/0041445 A1) as evidenced by Toshima (Nikkiso MT3000) and further in view of Sane et al. (US 2006/0121068 A1).
The 35 U.S.C. 103 rejection over Ikeda as evidenced by Toshima was previously discussed.
Regarding claim 4, the limitation of “for a raw material for a cosmetic preparation” is interpreted as an intended use of the particles, as previously discussed, but in the interest of completeness of prosecution, purely arguendo, and for the purposes of this ground of rejection only, the claim will be interpreted as requiring the hexagonal boron nitride powder for a cosmetic preparation.
In that case, Ikeda does not teach the hexagonal boron nitride particles in a cosmetic preparation, as recited in claims 4 and 7.
Sane teaches agglomerates of hexagonal boron nitride particles [abstract] [0090] [0083] [0023] and teaches that boron nitride powder is useful as a filler in cosmetic applications [0059].
Since Ikeda generally teaches hexagonal boron nitride particles, it would have been prima facie obvious to one of ordinary skill in the art to include the particles within a cosmetic preparation because Sane teaches the use of hexagonal boron nitride particles for cosmetic applications. The ordinarily skilled artisan would have been motived to include the particles in a cosmetic preparation because Sane teaches that boron nitride powder is useful as a filler in cosmetics [0059].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612