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 .
Response to Amendment
1. Applicant’s amendment and accompanying remarks filed 1/2/26 have been fully considered and entered. Claims 6 and 7 have been amended. Applicant’s amendments are found sufficient to overcome the 112 2nd paragraph rejections set forth in the Action dated 10/1/25. As such, these rejections are hereby withdrawn. Applicant’s amendments to claims 6 and 7 are also found sufficient to overcome the obviousness type rejections made over claims 6-8 as set forth in the Action dated 10/1/25. Specifically, the cited combination of prior art does not specifically teach the claimed hollow tubular boron nitride particle. As such, the obviousness type rejections of claims 6-8 made over the combination of Kim et al., US 20180079945 A1 in view of JP 2020132670 A is hereby withdrawn. However, upon further consideration the following new ground of rejections are set forth herein below with respect to claims 6-8.
Response to Arguments
2. With regard to the obviousness type rejections of claims 1-5 made over the combination of Kim et al., US 20180079945 A1 in view of JP 2020132670 A, Applicants assert that the references either alone or in combination fail to teach or suggest the claimed crushing strength of claim 1. Applicants argue a lack of motivation to combine references on the grounds that the primary reference of Kim et al., does not teach the crushing strength of the boron nitride particles and the secondary JP reference teach that the crushing strength should be “high” to suppress the collapse of the boron nitride agglomerated powder during kneading with resin and to facilitate control of orientation. Applicants assert that this teaching is contrary to the claimed crushing strength of less than 7 MPa. Applicants further assert that Kim et al., does not teach or suggest intentionally crushing the thermally conductive particles, and there is no motivation in Kim et al., to set the crushing strength of the thermally conductive particles to less than 7 MPa. In response, these arguments are not found persuasive.
With regard to the claimed crushing strength, the secondary published JP reference was relied upon to evidence that the claimed crushing strength of boron nitride agglomerated powder is known. The secondary published JP reference teach that the crushing strength of the boron nitride agglomerated powder may be from 1.0 to 15 MPa (see translated document). Specifically, the published JP secondary reference teach an insulating sheet which has sufficient thermal conductivity and insulating property and is particularly excellent in at least one of thermal conductivity and insulating property (see translated document). The published JP secondary reference specifically teach a coating liquid containing an epoxy resin, a curing agent, a boron nitride agglomerated powder, and a solvent is applied into a sheet and then heated to obtain a resin sheet having a void ratio of 15% or more wherein the crushing strength of the boron nitride agglomerated powder may be 1.0 to 15 MPa (see translated document). The published JP secondary reference further teaches that the crushing strength of the boron nitride agglomerated powder is not particularly limited, and may be, for example, 0.5 to 20 MPa. When the crushing strength of the boron nitride agglomerated powder is 0.5 MPa or more, it is possible to suppress the disintegration of the boron nitride agglomerated powder when kneading with the resin, and it becomes easy to control the orientation, so that it is easy to maintain the thermal conductivity. Still further, if the crushing strength of the boron nitride agglomerated powder is 20 MPa or less, the agglomerated powder is easily deformed during press molding of the resin sheet, which makes it easier for the boron nitride agglomerated powders to come into contact with each other, and the thermal conductivity is improved more efficiently. From such a viewpoint, the crushing strength of the boron nitride agglomerated powder is preferably 1.0 to 15 MPa (see translated document). Based on this explicit disclosure the Examiner is of the position that the published secondary JP reference does not teach away from having a crushing strength of less than 7 MPa. Rather, the Examiner is of the position that the published secondary reference evidence the advantages to a having crushing strength of 20 MPa or less. Namely, so that the agglomerated powder is easily deformed during press molding of the resin sheet making it easier for the boron nitride agglomerated powders to come into contact with each other thus efficiently improving the thermal conductivity. Given the advantages of having a crushing strength between 1.0 and 15 MPa and that the claimed crushing strength of less than 7 MPa falls approximately in the middle of the preferred range of the published JP secondary reference, the Examiner is of the position that a person of ordinary skill in the art would recognize that the crushing strength of the boron nitride can be set to a strength of less than 7 MPa to a achieve a balance between controlling the orientation of the boron nitride powder and efficiently improving the thermal conductivity. As set forth in MPEP 2144.05, in the case where the claimed range "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to Applicant’s arguments that the combination of cited prior art either alone or in combination does not teach suggest intentionally crushing the thermally conductive particles, and thus there is no motivation in Kim et al., to set the crushing strength of the thermally conductive particles to less than 7 MPa, the Examiner respectfully points out that Applicants do not limit the claims and/or recite any limitations pertaining to “intentionally crushing the thermally conductive particles”. As such, this argument is not commensurate in scope with the claims. With regard to Applicant’s arguments that there is no motivation in Kim et al., to set the crushing strength of the thermally conductive particles to less than 7 MPa, the Examiner maintains such motivation is found by the teachings of published JP secondary reference as set forth above. For these reasons, the Examiner maintains the sufficient motivation exists to combine the cited references and the cited references render claims 1-5 obvious.
Claim Rejections - 35 USC § 103
3. 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.
4. Claim(s) 1-5 stand 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 claim 3, 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 claim 5 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).
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 and the above arguments). For these reasons, the Examiner is of the position that the combination of cited prior art renders the rejected claims obvious.
5. Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al., US 20180079945 A1 in view of Liu et al. U.S. App. Pub. No. 2019/0276310.
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). 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). Said boron nanotubes are present in the composition in amount ranging from 0-30 wt. % (paragraph 0054). With regard to claim 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).
Kim et al., does not specifically teach that the boron nitride nanotubes are hollow; however, boron nitride nanotubes are thought of as hollow tubes (https://www.nanorh.com/product/boron-nitride-nanotubes/ ). The published patent application issued to Liu et al., teach a method of making a hexagonal boron nitride involving a carbon templating material (Abstract) wherein the morphology of the hexagonal boron nitride material is based on the carbon templating material including fibers and nanotubes. (par. [0037]). The fibers are hollow (i.e. define a central space surrounded by the boron nitride material) (par. [0014]) and have diameters of 10 nanometers to 50 micrometers with ratios of length to diameter of 2 or more (par. [0018]), which would include diameter lengths of 80 or more, 125 or more and 150 or more overlapping with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Liu et al., that the boron nitride material exhibits improved electrical insulation, corrosion resistance and good high-temperature performance (par. [0002]). It would be obvious to a person of ordinary skill in the art to form the sheets of Kim et al., with the hollow boron nitride nanotubes/fibers of Liu et al motivated by the desire to impart electrical insulation, corrosion resistance and good high-temperature.
With regard to claim 7, Kim et al., in view of Liu et al., does not teach the claimed orientation index; the Examiner is of the position that since the prior art of Kim et al., in view Liu et al., teach the claimed sheet comprising the claimed primary boron nitride particles, tubular (hollow) boron nitride particles and resin the claimed “orientation index” would be expected. Applicants are invited to prove otherwise.
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/041830 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter sought is encompassed by the subject matter of copending Application No. 18/041830 (reference application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
7. 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LYNDA SALVATORE/Primary Examiner, Art Unit 1789
Prosecution Insights