DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 04/13/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 102 (New, Necessitated by Amendment)
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 4, first column, agglomerates of hexagonal boron nitride particles with values of D10 = 10.83 µm, D50 = 25.85 µm, and D90 = 102.38 µm [0075] [0023]. The D90/D10 ratio is 9.45, the D90/D50 ratio is 3.96, and the D50/D10 ratio is 2.39.
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.
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].
Response to Arguments
Applicant' s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection (Table 4, first column, Sane) does not rely on the embodiment applied in the prior rejection of record (Table 6C, Example 3, Sane) for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 103 (Maintained)
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, 3-4 and 7 are rejected under 35 U.S.C. 103 as being as being obvious over Sane et al. (US 2006/0121068 A1).
Regarding claim 1, 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, the D90/D50 ratio is 2.27, and the D50/D10 ratio is 2.98.
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.
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 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].
Response to Arguments
Applicant's arguments filed 04/13/2026 have been fully considered but they are not persuasive.
Applicant argues at pg. 6 and 7 that Sane (at Table 6C, Example 3) has a D50/D10 ratio of 2.98 which exceeds the upper limit of 2.8 required by the amended claim 1, therefore, the D50/D10 requirement of claim 1 is not met.
The Examiner disagrees because 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. In the instant case, the D50/D10 ratio of 2.98 is sufficiently close to the ratio of 2.8 required by the amended claim 1 to be prima facie obvious.
Claims 1, 3-4 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).
Regarding claim 1, 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, the D90/D50 ratio is 1.8, and the D50/D10 ratio is 2.5.
Meneghetti is not believed to be anticipatory because Meneghetti discloses a D90/D50 ratio of 1.8 whereas the claim recites the D90/D50 ratio is 2.0 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.
As evidenced by PolarTherm PTX25 is hexagonal boron nitride powder (pg. 1).
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 3 is rendered prima 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 prima facie obvious because Meneghetti discloses that boron nitride particles can be used in makeup materials [0003].
Response to Arguments
Applicant's arguments filed 04/13/2026 have been fully considered but they are not persuasive.
Applicant argues at pg. 6 and 7 that Meneghetti has a D90/D50 ratio of 1.80 which is below the lower limit of 2.0 required by the amended claim 1, therefore, the D90/D50 requirement of claim 1 is not met.
The Examiner disagrees because 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. In the instant case the D90/D50 ratio of 1.80 is sufficiently close to the ratio of 2.0 required by the amended claim 1 to be prima facie obvious.
Claim Rejections - 35 USC § 103 (New, Necessitated by Amendment)
Claims 1 and 3-4 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 and 3, Ikeda discloses hexagonal boron nitride agglomerate particles each including agglomerated hexagonal boron nitride primary particles (abstract). In Comparative Example 5 (Table 2, [0128]), the particles have a D10 value of 1.5 µm, a D50 value of 3.8 µm, and a D90 value of 10.2 µm (D90/D10 ratio is 6.80; D90/D50 ratio is 2.68; D50/D10 ratio is 2.53). 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 (a D10 value of 1.5 µm is less than 2 µm or more required by claim 1).
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].
Response to Arguments
Applicant' s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection (Comparative Example 5, Ikeda) does not rely on the embodiments applied in the prior rejection of record (Comparative Example 2, Example 3, Ikeda) for any teaching or matter specifically challenged in the argument.
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.
Correspondence
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASHLEE E WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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