DETAILED ACTION
Applicant’s reply, filed 22 August 2025 in response to the non-final Office action mailed 22 May 2025, has been fully considered. As per Applicant’s filed claim amendments claims 1-5 and 7-17 are pending, wherein: claims 1 and 13-15 have been amended, claims 2 and 9 are as originally filed, claims 3-5, 7-8 and 10-12 are as previously presented, claims 16-17 are new, and claim 6 has been cancelled by this amendment.
Claim Rejections - 35 USC § 102
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.
Claims 1-5, 7 and 13-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (CN 110117732 A; using Clarivate Analytics machine translation for English language citations).
Regarding claims 1-5 and 13-17, Liu teaches hollow glass micro-beads/spheres coated with a protective layer of MgO (abstract; pg1-2). Liu further teaches a method by which the hollow micro-bead is first cleaned by acid and alkali washing steps, followed by treating with a coupling agent (instant hollow particle having polar group on surface) and magnesium carbonate, followed by calcining to obtain a MgO-coated hollow micro-beads (pg3)(instant thermally conductive layer; instant magnesium oxide; instant covers the surface; instant film attached to the surface).
Liu teaches the steps of (1) acid cleaning and (2) alkali washing to remove impurities and to strengthen the hydroxylated surface of the hollow micro-bead to improve surface adsorption of the silane coupling agent (pg3)(instant polar group; instant acidic). Liu teaches the step of (3) separating and drying and filtering to obtain a desired diameter/size, followed by step (4) coupling with a silane coupling agent in order to improve the magnesium ion adsorption ability of the hollow micro-bead and reduce agglomeration (pg3-4)(instant polar group; instant acidic; instant via siloxane bond). Liu then teaches the step of (5) coating with magnesium carbonate by generating the magnesium carbonate in situ and combining with the hollow micro-beads to obtain magnesium carbonate coated micro-beads which are then subjected to step (6) calcining to obtain hollow micro-beads coated with a protective layer of MgO (pg4).
Regarding claim 7, Liu teaches the MgO coated hollow micro-beads as set forth above. Liu is silent as to the specific gravity of 1.5 or lower. However, it is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Claims 1-11 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown (US 6,171,651).
Regarding claims 1-4, 6 and 13-15, Brown teaches aluminum hydroxide coated hollow glass microspheres, suitable for use as light weight reinforcements for plastic materials (abstract; col 1 ln 10-14). Brown teaches that the hollow glass microspheres are preferably either aluminum silicate glass or soda lime borosilicate glass (col 2 ln 23-38) (instant hollow particle having a polar group on its surface; instant acidic group (claim 2); instant siloxane bond (claim 3)).
Brown teaches the steps of a) forming an aqueous solution of an organic complexing agent, selected from organic acids, and an acidic aluminum salt (instant metal alkoxide (claim 14)), b) raising the pH by addition of an inorganic base, c) adding the glass microspheres and forming a suspension, d) subjecting to hydrothermal treatment in an oxidizing atmosphere (instant oxidized with oxygen, instant metal hydroxide or metal oxide (claim 15)), and e) separating the resultant aluminum hydroxide coated glass microspheres (col 1 ln 60 to col 2 ln 65). Brown teaches the aluminum hydroxide is in the boehmite form (instant thermally conductive layer; instant film attached to the surface; instant different material (claim 4); instant compound containing Al (claim 6)) and strongly adheres to the microsphere surface, and may be further calcined to aluminum oxide (col 3-4; examples)(instant method of claim 13).
Regarding claim 5, Brown teaches the microspheres of claim 1 and further teaches the use of hollow microspheres of aluminum silicate glass or soda lime borosilicate glass (instant hollow particles having polar groups on the surface) and further teaches suspending the microspheres into a basic solution comprising an inorganic base, an aluminum salt and an organic acid complexing agent (see above).
As claim 5 is a product-by-process claim, patentability of said claim is based on the recited product and does not depend on its method of production. Since the product in claim 5 is the same product disclosed by Brown the claim is unpatentable even if the Brown product was made by a different process. (see In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); see MPEP 2113). Further the conditions of Brown necessarily will result in a glass surface that has been treated with a polar group.
Regarding claim 7, Brown teaches the microspheres as set forth in claim 1 above and teaches low density aluminum hydroxide composite hollow glass microspheres having densities of 1 g/cm3 (example 1) and 0.76 g/cm3 (example 2). Brown does not specifically teach a specific gravity. However, it is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Regarding claims 8-9, Brown teaches the microspheres as set forth in claim 1 above and further teaches incorporation into synthetic resins to form light weight glass-reinforced plastic composite materials (col 1 ln 10-13; col 2 ln 11-19; col 3 ln 23-29).
Regarding claims 10-11, Brown teaches the reinforced plastic composite materials as set forth in claim 8 above and teaches the microspheres are low density aluminum hydroxide composite hollow glass microspheres having densities of 1 g/cm3 (example 1) and 0.76 g/cm3 (example 2). Brown does not specifically teach a specific gravity (claim 10) or thermal conductivity (claim 11). However, it is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
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.
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.
Claims 8-12 are rejected under 35 U.S.C. 103 as being unpatentable Liu et al. (CN 110117732 A; using Clarivate Analytics machine translation for English language citations) in view of Ju et al. (CN 103554644 A; using Clarivate Analytics machine translation for English language citations).
Regarding claims 8-9 and 12, Liu teaches the MgO coated micro-beads/spheres as set forth in claim 1 above and teaches the produced fine powders have wide applications including in composite materials (pg1-2; pg4). Liu does not specifically teach a matrix material (claim 8) comprising an organic polymer (claim 9) or as a wire harness (claim 12).
However, Ju teaches it is known to fabricate automotive wiring harnesses from composite polymer materials comprising hollow glass microspheres (abstract; [0002]). Ju and Liu are analogous art and are combinable because they are concerned with the same technical field, composite materials comprising hollow glass microspheres of wide application. At the time of filing a person having ordinary skill in the art would have found it obvious to use the MgO coated micro-beads/spheres of Liu in the polymer composites, and the related end-use as wire harness composites, of Ju and would have been motivated to do so as Liu teaches use in wide application including composites and further as Ju teaches a known and advantageous use of hollow microspheres is incorporation into polymer composites and wire harness end-uses.
Regarding claims 10-11, Liu in view of Ju render obvious the composites as set forth in claim 8 above. Liu, or Liu in view of Ju, does not specifically teach a specific gravity (claim 10) or thermal conductivity (claim 11) as instantly claimed. However, it is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Brown (US 6,171,651) in view of Ju et al. (CN 103554644 A; using Clarivate Analytics machine translation for English language citations).
Brown teaches the reinforced plastic composite materials as set forth in claim 8 above and teaches their use in mass transportation applications (col 1 ln 10-14). Brown does not specifically teach wire harnesses. However, Ju teaches it is known to fabricate automotive wiring harnesses from composite polymer materials comprising hollow glass microspheres (abstract; [0002]). Ju and Brown are analogous art and are combinable because they are concerned with the same technical field, namely polymer composites comprising hollow glass microspheres suitable for use in mass transportation. At the time of filing a person having ordinary skill in the art would have found it obvious to use the hollow glass microspheres in the wire harness composites of Ju and would have been motivated to do so as Brown teaches use in synthetic polymer composites and further as Ju teaches wire harness forming composite materials are known to comprise hollow glass microspheres.
Response to Arguments/Amendments
The 35 U.S.C. 102(a)(1) rejection of claims 1-5, 7-11 and 13 as anticipated by Wu (CN 107936752 A) is withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 102(a)(1) rejection of claims 1-11 and 13-15 as anticipated by Brown (US 6,171,651) and the 35 U.S.C. 103 rejection of claim 12 as unpatentable over Brown in view of Ju et al. (CN 103554644 A) are maintained.
Applicant argues that Brown is concerned with aluminum hydroxide coated particles and not aluminum oxide coated particles and further argues Example 1, wherein Applicant admits aluminum oxide coated particles are obtained, is mere residue. The is not found persuasive as i) Brown does not state ‘residue’ but rather a calcination step demonstrating converting the aluminum hydroxide/boehmite coating to an aluminum oxide coating resulting in a particle having greater density and ii) even if the calcined particles of Brown do merely have a residual coating, the instant claims fail to recite a patentably distinct difference, such as an amount of aluminum oxide, a thickness of the coating of aluminum oxide, etc., to differentiate from the particles of Brown.
Applicant argues, with respect to instant claim 1, that any polar groups inherently present on a glass surface would be of much lower density than polar groups introduced via a silane coupling agent. This argument is not persuasive as there is no recitation of density, either way, of the polar groups. Rather the instant claims merely recites that ‘a polar group’ be present. As such, any amount or density or population of polar groups reads on the instant claim.
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.
Correspondence
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767