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 § 103
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kuramoto(JP2020/147474) (for applicant’s convenience Machine translation has been used for citations) in view of YUKUTAKE (US2022/0119619).
Kuramoto teaches polyhedral aluminum nitride powder having average particle size of 20 to 200 µm, preferably 30 to 100 µm and having at least two flat surfaces (i.e. smooth surface), wherein the ratio (L/D) of the minor axis (D) to the major axis (L) of the aluminum nitride powder (A) is 0.8 to 1.2 (claim 1, para. [0015], [0040]). Since the aluminum nitride particles average size being 20 to 200 µm, it is evident that such particle having a major axis of being 5 µm or more (e.g. such as 20 µm).
As for the claimed “under observation with a scanning electron microscopic at 500x magnification”, this is just a process of observing flat surfaces, Kuramoto already aluminum nitride particle having at least two flat surfaces.
Regarding claim 1, Kuramoto does not expressly teach the claimed oxygen content.
YUKUTAKE teaches aluminum nitride particles having oxygen content from 0.01% to 1.6% by mass (para. [0039], [0050]) for desired high thermal conductivity. It would have been obvious for one of ordinary skill in the art to adopt such oxygen content as shown by YUKUTAKE to modify the aluminum nitride powder of Kuramoto because by doing so can help provide desired aluminum nitride powder with higher thermal conductive properties as suggested by YUKUTAKE (para. [0039]).
Regarding claim 2, Kuramoto does not expressly teach the proportion of polyhedral particles in aluminum nitride powder being 70% or more. However, Kuramoto teaches using polyhedral aluminum nitride particles
with a planar structure having at least two flat surfaces, and combining it with a filler having specific physical properties--even if the filler has relatively low thermal conductivity-- for maintaining a sufficiently high thermal conductivity of the resin composition obtained by filling polyhedral aluminum nitride particles
into a resin (para. [0006]). Therefore, it would have been obvious for one of ordinary skill in the art to adopt all polyhedral aluminum nitride particles ( i.e. 100% of proportion) in the aluminum nitride powder for help provide polyhedral aluminum nitride powder (particles) for filling a resin composition with high thermal conductivity as suggested by Kuramoto (para. [0006]). It would have been obvious for one of ordinary skill in the art to adopt a same proportion of polyhedral aluminum nitride particle in the aluminum nitride powder as that of instantly claimed via routine optimization for help providing an aluminum nitride powder having all polyhedral aluminum nitride particle via routine optimization (see MPEP §2144. 05 II) for filling a resin composition with high thermal conductivity as suggested by Kuramoto (para. [0006]).
As for the claimed “wherein the proportion of the polyhedral particles is calculated ….. of all aluminum nitride particles”, it is noted that such limitation just a calculation method, i.e. a product by process limitation, even though product-by-process limitations are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See § MPEP 2113). In this case, applied references already teaches aluminum nitride powder having same or substantially the same proportion of the polyhedral particles as discussed above.
Regarding claim 3, Kuramoto does not expressly teach “SEM image at 2000x of a cross-section of the polyhedral particles, for 10 particles arbitrarily selected, the average value (Ma) of the maximum value M of the perpendicular distance between the outer line corresponding to the smooth surface and the straight line connecting the ends of the outer line is 0.15 µm or less”, however, it is noted that such recited SEM image is being used for analyzing smoothness of the surfaces (see instantly published application para. US2025/0257195 [0035]), Kuramoto teaches a polyhedral with at least two flat surfaces (claim 1, para. [0014], Fig. 1) wherein Kuramato disclosed flat surfaces are same or substantially the same as that of instantly claimed, therefore, same or substantially the same surface smoothness as observed of as that of instantly claimed is expected. Furthermore, such claimed limitation of “SEM image at 2000x of a cross-section of the polyhedral particles, for 10 particles arbitrarily selected, the average value (Ma) of the maximum value M of the perpendicular distance between the outer line corresponding to the smooth surface and the straight line connecting the ends of the outer line is 0.15 µm or less” appears to be a shape feature of the aluminum nitride particles, the court held that the configuration is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed aluminum nitride particles was significant (see MPEP 2144. 04 IV. B).
Regarding claim 4, Kuramoto teaches such aluminum nitride powder being used as resin fillings (claim 3-4 and examples).
Response to Arguments
Applicant's amendments filed on 12/31/2025 have been acknowledged thus and previous 112 rejections have been withdrawn.
Applicant's arguments filed on 12/31/2025 have been fully considered but they are not persuasive. In response to applicant’s arguments about Kuramoto disclosed process of making aluminum nitride involves a decarbonization step under oxygen atmosphere (para. [0040]) while instant invention involves removing oxygen from the aluminum nitride, it is noted that instant claims directed to an aluminum nitride with 0.5% or less (by mass) oxygen but not the argued process, the examiner recognized that Kuramoto does not expressly teach the claimed oxygen content, therefore, applied secondary reference Yukutake to remedy such deficiency as set forth in the rejections. In response to applicant’s arguments about Yukutake disclosed aluminum nitride having d50 of approximately 1 micron, Yukutake expressly teaches the aluminum nitride having particle size from 0.2 to 200 µm, more preferably from 10 to 50 µm (para. [0045]). In response to applicant’s arguments about incorporating Yukutake disclosed low oxygen content of 0.01 to 1.6% by mass would not lead Kuramoto disclosed aluminum nitride having no more than 0.5% by mass oxygen content because Kuramoto requiring decarbonization under oxygen, Kuramoto does not limit oxygen not being low, or removed from its aluminum nitride particles at all. On the contrary, Yukutake teaches aluminum nitride particles with a low oxygen content of 0.01% to 1.6% by mass would lead to an aluminum nitride particle with desired high thermal conductivity. Hence, it would have been obvious for one of ordinary skill in the art to adopt such oxygen content as shown by Yukutake to modify the aluminum nitride powder of Kuramoto to b obtain an aluminum nitride powder with such low oxygen content because by doing so can help provide desired aluminum nitride powder with higher thermal conductive properties as suggested by Yukutake (para. [0039]). Therefore, such arguments are not found convincing.
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 JUN LI whose telephone number is (571)270-5858. The examiner can normally be reached IFP.
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, Ching-Yiu (Coris) Fung can be reached at 571-270-5713. 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.
/JUN LI/Primary Examiner, Art Unit 1732