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
1. 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.
2. Claims 6-8 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.
3. With regard to claim 6, claim 6 is indefinite because it is not clear how the “some of the plurality of boron nitride primary particles are located within the tubular boron nitride particles” Applicants are not claiming a hollow tubular boron nitride particle. In addition, the term “some” is considered a relative term. The term “some” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 8 is rejected for its dependency on claim 6.
4. With regard to claim 7, it is not clear what has the claimed orientation index or what the claimed orientation index represents
Claim Rejections - 35 USC § 103
5. 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.
6. Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al., US 20180079945 A1 in view of JP 2020132670 A.
With regard to claim 1, the published patent application issued to Kim et al., teach a resin composition comprising conductive boron nitride particles (reads on primary boron nitride particle), boron nitride nanotubes (reads on tubular) wherein said boron nitride nanotubes are in the form of aggregated powder and an epoxy resin (abstract, paragraphs 0031, 0034-0043, 0048-0052 and 0091). With regard to claim 2, said boron nanotubes are present in the composition in amount ranging from 0-30 wt. % (paragraph 0054). With regard to claims 3 and 8, Kim et al., teach that the conductive boron nitride particles have a diameter ranging from .1-150 microns (meets the claimed length) and an aspect ratio ranging from 1-300 (paragraphs 0034-0036). With regard to claim 4, Kim et a., does not explicitly teach the claimed strength of the boron nitride nanotubes. However, the Examiner is of the position that absent any other distinguishing limitations as side from “tubular” it is expected that boron nitride nanotubes of Kim et al., would exhibit the claimed strength. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). With regard to claims 5 and 6, Kim et al., teach forming sheets, heat releasing articles such as those comprising a substrate and thermally conductive film and adhesive film (paragraphs 0075-0077). In view of the 112-2nd paragraph rejection above it is expected that the during the process of forming the composition some of the boron nitride particles would be present within the boron nitride nanotubes. Applicants are invited to prove otherwise. With regard to claim 7, Kim et al., does not teach the claimed orientation index. In view of the 112-2nd paragraph rejection above, the Examiner is of the position that since the prior art of Kim et al., teach the claimed sheet comprising the claimed primary boron nitride particles, tubular boron nitride particles and resin the claimed “orientation index” would be expected.
Kim et al., does not teach the claimed crushed strength or strength of the boron nitride as set forth in claims 1 and 5. However, absent evidence to the contrary, the Examiner is of the position that the boron nitride agglomerated powder of Kim et al., would exhibit the claimed crushing strength. To support this supposition the Examiner cites the published JP application that teach the crushing strength of boron nitride agglomerated powder may be from 1.0 to 15 MPa (see translated document. For these reasons, the Examiner is of the position that the combination of cited prior art renders the rejected claims obvious.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789