DETAILED ACTION
Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/05/2026 has been entered.
Previous Rejections
Applicants' arguments, filed 08/05/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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
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 Tanimoto et al. (ACS Appl. Mater. Interfaces 2013, 5, 4374−4382).
Claim 1 is anticipated because Tanimoto discloses aggregated hexagonal boron nitride (hBN) powder in Table 1 (pg. 4376) where example A(12.0) is disclosed to have a D10 of 4.3 µm, a D50 of 12.0 µm, and a D90 of 27.0 µm, wherein the values refer to the diameter of the secondary (aggregate) particles which are formed from hBN “primary particles” (pg. 4376). The D90/D10 ratio is 6.28, the D90/D50 ratio is 2.25, and the D50/D10 ratio is 2.79.
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 “volume-based particle sizes 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 aggregate particles with the same sizes (i.e., D10, D50, and D90 values), the properties the applicant discloses and/or claims (these volume-based particle sizes when measured through a laser diffraction/light scattering method) are reasonably expected to be necessarily present.
Regarding claims 4 and 7, the limitations of “for a raw material for a cosmetic preparation” and “a cosmetic preparation” are an intended use of the particles. As these terms do not provide structural limitations and merely state the purpose or the intended use of the invention, they do not carry patentable weight. The claimed “hexagonal boron nitride powder according to claim 1” is anticipated by Tanimoto (Example A(12.0) in Table 1) and therefore, claims 4 and 7 are also anticipated.
Response to Arguments
Applicant' s arguments with respect to claim(s) 1, 4, and 7 have been considered but are moot because the new ground of rejection (Tanimoto) does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 4 and 7 are rejected under 35 U.S.C. 103 as being as being obvious over Tanimoto et al. (ACS Appl. Mater. Interfaces 2013, 5, 4374−4382) in view of Nakagawa et al. (US 2021/0253425 A1).
Claim 1 is anticipated by Tanimoto, as discussed above.
Regarding claims 4 and 7, Tanimoto 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, Tanimoto will be interpreted as if it is not anticipatory.
In that case, Tanimoto could be construed as not clearly and unequivocally disclosing the claimed invention because Tanimoto does not disclose that the particles are “for a raw material for a cosmetic preparation”, as recited in claim 4, or that the powder is “a cosmetic preparation”, as recited in claim 7.
Nakagawa discloses a hexagonal boron nitride powder for cosmetic use [abstract] [0020]. Nakagawa teaches that hexagonal boron nitride powder has extremely excellent lubricity [0002] and that since hexagonal boron nitride is chemically stable and does not adversely affect the human body, it is widely used as a lubricant in cosmetics [0002] [0003] [0020].
Since Tanimoto 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 Nakagawa teaches the use of hexagonal boron nitride particles for cosmetic applications [abstract] [0020]. The ordinarily skilled artisan would have been motivated to include the particles in a cosmetic preparation because Nakagawa teaches that hexagonal boron nitride powder has extremely excellent lubricity [0002] and that since hexagonal boron nitride is chemically stable and does not adversely affect the human body, it is widely used as a lubricant in cosmetics [0002] [0003] [0020].
Response to Arguments
Applicant' s arguments with respect to claim(s) 4 and 7 have been considered but are moot because the new ground of rejection (Tanimoto in view of Nakagawa) does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/ASHLEE E WERTZ/Examiner, Art Unit 1612
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