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 Preliminary Amendment
The preliminary amendment submitted on 13 August 2024 has been entered. After entry of the amendment claims 1-9 are currently pending.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 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.
Claims 1, 4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kitamura et al (US Patent Application Publication No. US 2022/0213371 A1).
The reference teaches, in paragraph [0287], boron nitride particles C which have an average particle diameter of 15.0 μm or less, has an oxygen atom concentration on a surface of 1.5% or more detected by X-ray photoelectron spectroscopic analysis
The instant claims are obvious over the reference.
As for claim 1, the reference teaches an oxygen atom concentration of 1.5% or more. According to the specification in paragraph [0006] and claim 6 the boron nitride particles have a semiquantitative value calculated from an O1s peak intensity measured by X-ray photoelectron spectroscopy which is 0.6 or more. As the reference teaches an oxygen atom concentration of 1.5% or more the boron nitride particles C of the reference would appear to meet the limitation of claim 1 absent evidence showing otherwise as the range overlaps the claimed range. In the case where the claimed ranges "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), see MPEP 2144.05. Therefore since the oxygen concentration would meet that of an embodiment of the invention the particles would therefore appear to meet the properties of claim 1.
As for claim 4, as the average particle diameter is 15.0 μm or less it would therefore meet the limitation of this claim.
As for claim 6, the reference teaches a concentration that overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 7, the composition may be used as a filler.
As for claim 8, paragraph [0050] teaches a composition comprising resin and boron nitride particles.
Allowable Subject Matter
Claims 2-3, 5 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to teach or render obvious all of the cumulative limitations set forth in the independent claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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August 26, 2026
