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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1–9 are rejected under 35 U.S.C. 112(a) for lack of adequate written description and lack of enablement.
The claims recite a composition comprising a boron nitride hexagonal lattice structure in which boron atoms and nitrogen atoms are present in a B:N molar ratio of:
1:4–1:8, or
4:1–8:1.
The specification does not reasonably convey to one of ordinary skill in the art that Applicant was in possession of boron nitride hexagonal lattice structures across the full scope of the claimed extreme off-stoichiometric ratios while maintaining a hexagonal boron nitride lattice structure.
The specification generally discusses defect-engineered h-BN materials produced from varying NaBH4:NaNH2 precursor feed ratios and states that:
“the h-BN with higher ratio of N:B exhibited enhanced catalytic activity”
and that:
“the density of B and N defects significantly changed with different synthetic conditions”
However, the specification does not adequately demonstrate that the final h-BN lattice itself possesses actual B:N molar ratios of:
1:4–1:8, or
4:1–8:1.
Instead, the disclosure primarily describes precursor feed ratios and defect regulation. See, e.g., Fig. 1 illustrating:
“Feeding ratio from 1 to 9” and “Defects regulation in h-BN lattice.”
Moreover, the specification does not sufficiently teach how one would make and use stable hexagonal boron nitride lattice structures across the full claimed scope of such extreme non-stoichiometric compositions without undue experimentation. Conventional h-BN is approximately 1:1 stoichiometric, and the specification does not adequately explain how a hexagonal boron nitride lattice is maintained throughout the full claimed ranges.
Accordingly, the specification fails to provide adequate written description support and enabling disclosure commensurate in scope with the claimed invention.
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 4 and 9 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.
Claims 4 and 9 recite: “1:5:1:7”
The metes and bounds of these limitations are unclear because it is not apparent whether Applicant intended:
“1:5–1:7,”
“1:5 to 1:7,”
or another ratio format.
Accordingly, claims 4 and 9 are indefinite.
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Weston et al. (“Native Point Defects and Impurities in Hexagonal Boron Nitride”) in view of Murzakhanov et al. (“Creation of Negatively Charged Boron Vacancies in Hexagonal Boron Nitride Crystal by Electron Irradiation”), further in view of Hazin et al. (US 2020/0030781 A1), and further in view of Lin et al. (“Defect Functionalization of Hexagonal Boron Nitride Nanosheets”).
Weston teaches native point defects including boron vacancies, nitrogen vacancies, antisite defects, and defect-containing hexagonal boron nitride lattice structures (Weston: Sections II-III and Fig. 1).
Murzakhanov teaches a composition comprising a hexagonal boron nitride (“hBN”) lattice structure containing point defects and boron vacancy defects. Specifically, Murzakhanov teaches that: “hBN is the ultra-wide (UW) bandgap (≈6 eV) material which can host a large variety of atomic impurities (or point defects)” (Murzakhanov, p. 2, left col., lines 18-20). Murzakhanov further teaches: “the negatively charged boron vacancy (VB−), a missing boron atom having three equivalent nitrogen atoms as the nearest neighbors” (Murzakhanov, p. 2, left col., lines 30-33). Murzakhanov additionally teaches deliberate creation of vacancy defects in hBN: “electron irradiation can be reliably used to create these centers in hBN” (Murzakhanov, Abstract, lines 19-21). These teachings correspond to vacancy defects within a hexagonal boron nitride lattice structure.
Hazin teaches nonstoichiometric boron nitride compositions having variable nitrogen-to-boron molar ratios. Specifically, Hazin teaches BNx compositions wherein:“x is the molar ratio of nitrogen to boron and ranges from 0 to 1” (Hazin, ¶[0029]). Hazin further teaches: “hexagonal boron nitride (h-BN) particles are suitable types of BN” (Hazin, ¶[0033]). The disclosed BNx compositions encompass B:N molar ratios overlapping the claimed 4:1–8:1 range.
Lin teaches intentional introduction of defect sites into h-BN structures. Specifically, Lin teaches: “ball-mill to intentionally introduce defect sites” (Lin, p. 17434, left col., lines 17-18). Lin further teaches: “a direct correlation between increasing defect site concentrations of the h-BN nanosheet samples and improved reaction efficiency” (Lin, p. 17434, left col., lines 19-22) and: “ordered, triangular-shaped h-BN vacancy defect structures” (Lin, p. 17434, right col., lines 7-9)
Weston, Murzakhanov, Hazin, and Lin collectively teach vacancy defects within hexagonal boron nitride lattice structures corresponding to nonstoichiometric boron/nitrogen atomic distributions.
Weston, Murzakhanov, Hazin, and Lin do not expressly teach the claimed nitrogen-rich B:N molar ratio range of 1:4–1:8. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize the relative concentration of boron and nitrogen vacancy defects, including through adjustment of precursor stoichiometry and defect density, because the prior art recognized that defect concentration and stoichiometry affect the optical, electronic, and catalytic properties of h-BN materials. See Murzakhanov, p. 2, left col., lines 18-33 ; Hazin, ¶[0029] ; and Lin, p. 17434, left col., lines 19-22 . Optimizing defect concentration and relative boron/nitrogen stoichiometry would have been a matter of routine optimization of result-effective variables.
Claims 5–9 are rejected under 35 U.S.C. 103 as being unpatentable over Weston et al. in view of Murzakhanov et al., Hazin et al., and Lin et al., as applied to claims 1–4 above, and further in view of Lubatti et al. (FR1475367).
Lubatti teaches production of boron nitride by nitridation of boron-containing precursor mixtures under elevated temperature conditions and inert/reactive gaseous atmospheres. Specifically, Lubatti teaches nitridation in ammonia atmosphere and heating under nitrogen atmosphere (Lubatti, page 1, left column through page 2, left column). Lubatti further teaches nitridation temperatures of: “600° à 1000° C, de préférence 750° C” (Lubatti, page 2, left column) and alternatively: “800° à 1200° C, de préférence à 1000° C” (Lubatti, page 3, item d).
Lubatti additionally teaches varying precursor ratios during boron nitride synthesis: “le rapport en poids ... peut être de 1:1 à 0,3:1” and “de préférence de 1:0,5” (Lubatti, page 1, left column near bottom; page 3, item e).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to prepare the defect-containing h-BN compositions of claims 1-4 using boron- and nitrogen-containing precursor mixtures under elevated temperature and inert/reactive atmosphere nitridation conditions while varying precursor stoichiometry to obtain desired defect concentrations and material properties, because Lubatti teaches that boron nitride synthesis conditions, including precursor ratios and nitridation temperatures, may be varied during boron nitride formation, and Weston, Murzakhanov, Hazin, and Lin collectively teach that boron/nitrogen stoichiometry and defect concentrations within hexagonal boron nitride lattice structures affect material properties. See Lubatti, page 1, left column through page 2, left column ; Murzakhanov, p. 2, left col., lines 18-33 ; Hazin, ¶[0029] ; and Lin, p. 17434, left col., lines 19-22 .
Election/Restrictions
Applicant’s arguments traversing the restriction requirement have been fully considered but are not persuasive.
Although Groups I–III are related, the claimed inventions are distinct under 35 U.S.C. §121 because they are directed to different statutory classes and require materially different fields of search and examination. Group I is directed to boron nitride compositions comprising defect-containing hexagonal lattice structures, Group II is directed to methods of making such compositions using specific precursor systems and synthesis conditions, and Group III is directed to hydrogenation processes utilizing the compositions.
Applicant’s assertion that the claims share common subject matter does not preclude restriction. The composition of Group I can be made by materially different processes than those recited in Group II, and the process of Group II can produce materially different boron nitride materials depending upon precursor stoichiometry, heating conditions, and defect formation conditions. Likewise, the compositions of Group I can be utilized in materially different catalytic processes beyond the hydrogenation methods recited in Group III. Further, examination of the groups requires materially different prior art searches. Examination of Group I requires prior art directed to boron nitride compositions, lattice defects, vacancy defects, and defect characterization, while examination of Group II requires prior art directed to boron nitride synthesis chemistry, precursor processing, nitridation, and thermal treatment methods. Examination of Group III requires prior art directed to catalytic hydrogenation processes, reactor conditions, and catalytic use processes in Class 585. Accordingly, examination of the claims as a single invention would impose a serious search and examination burden.
Applicant’s citation to In re Kuehl is acknowledged; however, overlap in disclosure and support under 35 U.S.C. §112 does not negate distinctness for restriction purposes where the claimed inventions are directed to distinct statutory classes requiring materially different examination.
The requirement is still deemed proper and is therefore made FINAL.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAM M NGUYEN whose telephone number is (571)272-1452. The examiner can normally be reached Mon - Frid.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-273-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAM M NGUYEN/ Primary Examiner, Art Unit 1771
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