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 .
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.
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.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Aburatani et al. (WO 2021/039586 A1; published 4 March 2021, effectively filed 28 August 2019; Foreign Patent Document #2 on the IDS filed 1 May 2025). References to Aburatani in the analysis below are made to US 2022/0281744 A1 (US Patent Application Publication #1 on the IDS filed 1 May 2025), which is an English language equivalent of WO 2021/039586 A1.
Regarding claim 1, Aburatani discloses a hexagonal boron nitride powder consisting of primary particles of hexagonal boron nitride and agglomerates of the primary particles (Example 11, Table 4), wherein the primary particles have an average equivalent circular diameter of 9.2 μm (average long diameter), the primary particles have an average thickness of 1.1 μm, the ratio of the average equivalent circular diameter to the average thickness is 8.43 (aspect ratio), the average particle size is 30 μm (median diameter D1, which is a volume-based average; [0082]), the bulk density is 0.55 g/cm3 (tapped bulk density), and the elution amount of B is 10 ppm (amounted of eluted boron).
Regarding the presence of agglomerates, the fact that the average particle size is larger than the primary particle size indicates that the powders of Aburatani form agglomerates. Regarding the use of powders for a filler, Aburatani further discloses that their powders of hexagonal boron nitride are used as a compounding agent for cosmetics ([0012]), or can be mixed with epoxy resin ([0079]), each of which is interpreted as demonstrating that the boron nitride powders of Aburatani can function as a filler.
The powder of Example 11 does not have a bulk density of 0.60 g/cm3 or more and less than 1.0 g/cm3, as its bulk density lies just outside that range at 0.55 g/cm3. However, Aburatani further discloses that when the average thickness is approximately 1 μm and the average long diameter is 9 μm, the tapped bulk density may be as high as 0.6 g/cm3 (not more than 0.6 g/cm3; [0037]), which overlaps with the end point of the instantly claimed range of 0.60 g/cm3 or more and less than 1.0 g/cm3.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). In the instant case, one of ordinary skill in the art would expect powders with bulk densities of 0.55 g/cm3, 0.60 g/cm3, and 0.61 g/cm3 to all have similar properties. Therefore, the claimed range merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Response to Arguments
Applicant’s arguments, see pages 3-4 of the reply 1 September 2026, with respect to the rejection of claim 1 under 35 USC § 102 have been fully considered and are persuasive in that Aburatani does not anticipate the amended claim. Therefore, the prior rejection has been withdrawn.
However, Applicant’s arguments that Aburatani’s disclosure of a range that encompasses up to 0.6 g/cm3 (“not more than 0.6 g/cm3”; [0037]) does not teach density in the range of the instant claim is not persuasive, as the end points of the ranges suggested by Aburatani and the instant claim do overlap, establishing a prima facie case of obviousness, as analyzed above.
Therefore, the prior rejection under 35 USC § 102 has been replaced with a rejection under 35 USC § 103, but the claim remains not allowable.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
