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.
Election/Restrictions
Applicant’s election of Group I in the reply filed on 15 September 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 15 September 2026.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 30 June 2022. It is noted, however, that applicant has not filed a certified copy of the Japanese application as required by 37 CFR 1.55. Attempts were made by to retrieve the priority document, both by the Office on 20 January 2025 as well as by the examiner on 07 October 2026, but neither were successful.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 8-12 are objected to because of the following informalities: the phrase "claim 7 or" in each claim should be --claim 7--. Appropriate correction is required.
Claim Rejections - 35 USC § 102 / 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 and 3-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Song (Material Research Express, 5, 075029, 2018).
Song is directed to improving the compatibility of boron nitride with epoxy resin by coating the boron nitride with polydopamine (Introduction). The surface of the boron nitride is coated with polydopamine then dried at 80 oC for 24 hours (Experimental, Functionalization of BN nanosheets by dopamine chemistry). The functionalized boron nitride is then added to an epoxy resin (Experimental, Preparation of epoxy/BN nanocomposites).
While Song does not report ratio HB/HA set forth in claim 1, paragraph 0039 on page 9 of the instant specification states that the ratio is a function of the heat treatment temperature. The results set forth in Table 1 on page 21 of the specification do not report values of the ratio at a heat treatment of 80 oC for 24 hours, however, values are reported after 24 hours of heat treatment at 100 oC (0.674) and 200 oC (0.702) as well as "no heat treatment" (0.654) - which would be understood by one of ordinary skill in the art to be equivalent to "heat treatment" at room temperature, i.e., 25 oC. This can be illustrated in graphical form as:
[Chart]
From this, one of ordinary skill in the art would expect boron nitride coated with polydopamine that is subsequently heat treated at 80 oC for 24 hours to have an HB/HA ratio of about 0.671.
Regarding claim 3, one of ordinary skill in the art would expect the area of a peak corresponding to nitrogen atoms of primary amino groups to an area of the entire N 1s spectrum to be a material property. Since the base material (i.e., boron nitride) and the coating (i.e., polydopamine) of Song are the same as that used by the applicant, and the method used by Song for applying the coating appears to be the same as that used by the applicant (compare the "Experimental-Functionalization of BN nanosheets by dopamine chemistry" section of Song to paragraphs 0057-0058 on pages 12-13 of the specification), one of ordinary skill in the art would expect the material of Song to inherently satisfy the limitations of claim 3.
Claim Rejections - 35 USC § 103
Claims 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 2021/0147646) in view of Song (Material Research Express, 5, 075029, 2018).
Liu is directed to a prepreg, a laminated board, and a printed circuit board comprising an epoxy resin composition (paragraph 0003). The laminated board includes a metal foil layer disposed on at least one surface of the prepreg (paragraph 0010). The epoxy composition may comprise an inorganic filler, such as boron nitride (paragraph 0039).
Liu does not teach coating the boron nitride with polydopamine having an HB/HA ratio as recited in claim 1 (from which claims 8-12 depend).
Song is directed to improving the compatibility of boron nitride with epoxy resin by coating the boron nitride with polydopamine (Introduction). The surface of the boron nitride is coated with polydopamine then dried at 80 oC for 24 hours (Experimental, Functionalization of BN nanosheets by dopamine chemistry) before adding it to the epoxy resin (Experimental, Preparation of epoxy/BN nanocomposites).
It would have been obvious to one of ordinary skill in the art to treat the boron nitride filler of Liu according to the process set forth by Song to improve the compatibility of the boron nitride and epoxy resin.
Regarding claim 9, the metal foil reads on a support film.
Regarding claim 12, the metal foil that is subsequently patterned to form a printed circuit layer (paragraph 0022) reads on a wiring.
Allowable Subject Matter
Claim 2 is 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.
Claim 2 is directed to a composite material comprising a base material and polydopamine adhered to the base material, wherein the ratio HB/HA is equal to or greater than 0.70 and equal to or less than 0.90.
Song, for the reasons set forth above, represents the closest prior art. However, Song does not teach or fairly suggest that their polydopamine coated boron nitride has an HB/HA ratio that satisfies claim 2. Moreover, one of ordinary skill in the art would have no reason to believe that the material of Song would inherently meet this limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached on 571 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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