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 .
Claims 1-7, 17-28 are pending and are under examination on the merits.
Claim 1 is amended.
Claims 8-16 are newly canceled.
Claims 17-28 are newly added.
Election/Restrictions
Applicant’s election of Group I claims 1-7 in the reply filed on 7/7/25 now encompasses claims 1-7 and new claims 17-28.
Applicant elected the following species on 7/7/25:
Monomer (A): bis-(polyoxyethylene polycyclic phenylether) methacrylate sulfate salt
Monomer (B): phosphate monomers
Inorganic compound: metal hydroxides
These species were previously examined and rejected; applicant’s new narrowing of scope requiring the presence of Monomer (A) in the claim set of 12/31/25 results in an expanded search beyond the elected species- for monomer (A) only, to include polyoexyethylene propenyl alkylphenyl ether.
Claim Rejections - 35 USC § 112
The rejection in the previous action of claims 1-7 under 35 U.S.C. 112(b) on the basis of confusion as to if monomers (A) and (B) are part of the “polymerizable component” is withdrawn in view of applicant’s amendment to the end of claim 1.
The rejection in the previous action of claims 1-7 under 35 U.S.C. 112(b) on the basis of “total sulfuric acid value” is withdrawn in view of applicant’s amendment to the corresponding portion of claim 1.
The rejection in the previous action of claims 1-7 under 35 U.S.C. 112(b) on the basis of “total phosphoric acid value” is withdrawn in view of applicant’s amendment to the corresponding portion of claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection in the previous action of claim(s) 1-7 under 35 U.S.C. 103 as being unpatentable over JP2003220329 by Omura et al in view of US 20140364521 by Tayagaki et al as evidenced by “Synthesis, Properties and Applications of Anionic Phosphate Ester Surfactants: A Review” by Arora et al is amended below to reflect applicant’s amendment- a further reference has been added:
Claims 1-7, 17-28 are rejected under 35 U.S.C. 103 as being unpatentable over JP2003220329 by Omura et al in view of US 20140364521 by Tayagaki et al as evidenced by “Synthesis, Properties and Applications of Anionic Phosphate Ester Surfactants: A Review” by Arora et al in further view of US 5332854 by Yokota et al.
Omura describes a process for producing thermally expandable microcapsules (microspheres, paragraph 1).
Regarding claim 1, Omura describes a process for producing thermally expandable microcapsules (translation paragraph 1) comprising a thermoplastic resin shell and thermally vaporizable blowing agent encapsulated in the shell (paragraph 2).
Omura describes preparing an aqueous suspension (“dispersion medium” paragraph 8 which is aqueous – paragraph 22) in which oil droplets of a mixture containing blowing agent and a polymerizable component are dispersed (paragraph 8, blowing agent is “volatile expanding agent” and polymerizable component is “polymerizable monomer”).
Omura describes the elected species “metal hydroxide” as a dispersion stabilizer (paragraph 23) but is silent as to the size of the metal hydroxide, i.e. instant “fine particles”. The “fine particles” is addressed via secondary reference Tayagaki below.
For monomer (A), Omura describes polyoxyethylene dialkyl allyl ether sulfate ammonium, polyoxyethylene dialkenyl allyl ether sulfate ammonium and sodium (paragraph 29) and polyoxyethylene-propenyl alkyl phenyl ether sulfate (paragraph 30) which read on instant monomer (A). The specific formula is addressed via secondary reference Yokota below.
For monomer (B), Omura describes the presence of polyoxyethylene alkyl ether phosphate esters (paragraph 29), a surfactant which is chemically bonded (i.e. polymerized, paragraph 13, 27) in the process of making the thermally expandable microspheres. “Polyoxyethylene alkyl ether phosphate esters” reads on instantly elected monomer (B).
Omura is silent as to the phosphate content of polyoxyethylene alkyl ether phosphate esters and the sulfuric content of the ether sulfates.
Regarding the phosphate content of polyoxyethylene alkyl ether phosphate esters, first it is noted that these molecules are instantly preferred for monomer (B) (instant published specification paragraph 94). The structure of a phosphate ester is as follows:
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In polyoxyethylene alkyl ether phosphate esters, the R in the above figure is a polyoxyethylene alkyl ether chain. Thus the mass of phosphate relative to the rest of the polyoxyethylene alkyl ether is in a definitive minority, meeting the instant “0%-50%”. See also Arora p.266-267 section 2.1-2.3 which describe ethoxylated (polyoxyethylene) phosphate esters wherein the “R” portion clearly comprises more than half the molecular weight of the molecule (e.g. Fig.2 p.267).
Regarding the sulfate content, Omura is silent as to the specific structure of polyoxyethylene-propenyl alkyl phenyl ether sulfate (paragraph 30), which is necessary to calculate the “total sulfuric acid value”.
Yokota describes a specific polymerizable surfactant.
Yokota describes the following structure for the surfactant (col 2 ln 27):
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In this formula, R1 is an alkyl, alkenyl or aralkyl group containing 6 to 18 carbon atoms; R2 is a hydrogen atom or an alkyl, alkenyl or aralkyl group containing 6 to 18 carbon atoms; R3 is a hydrogen atom or a propenyl group; A is an unsubstituted or substituted alkylene group of 2 to 4 carbon atoms; n is an integer of 1 to 200; M means an alkali metal, an ammonium ion or an alkanolamine residue (col 2 ln 40).
Yokota exemplifies nonylpropenylphenol-ethylene oxide adduct (10) sulfate ammonium salt (col 4 Example 1 ln 35-37); i.e. when R1 is nonyl, R2 and R3 are H, A is alkylene group of 2 and n is 10. This structure has a molecular weight of 802 g/mol. The sulfate group SO3 has a molecular weight of 80 g/mol, so the percent sulfate according to the instant claim phrase is 10% in Yokota’s Example 1.
Yokota states that his surfactant is highly copolymerizable with polymerizable monomers and as such is readily incorporated into the polymer structure with less residual free emulsifier in the product. Yokota also describes increased stability of emulsion polymerization (col 4 ln 4-19). Thus it would be obvious to one of ordinary skill to use Yokota’s specific nonylpropenylphenol-ethylene oxide (10) adduct sulfate ammonium salt where Omura more broadly describes polyoxyethylene-propenyl alkyl phenyl ether sulfate because it is highly copolymerizable with polymerizable monomers, increases stability of emulsion polymerization and results in less residual free emulsifier in the product.
Tayagaki describes heat-expandable microspheres.
Tayagaki addresses Omura’s silence as to the “fine particle” state of metal hydroxide dispersion stabilizers. Similar to the instant specification and Omura, Tayagaki describes production of heat-expandable microspheres from an aqueous suspension of oil droplets which contain blowing agent and polymerizable component (paragraph 15, 58). Tayagaki describes the presence of a fine particle metal compound as a dispersion stabilizer (paragraph 59) which includes a metal hydroxide (paragraph 60). Tayagaki states that when the metal compound is in colloid particle (a subcategory of “fine particle”) form, it can effectively stabilize dispersed oil globules (paragraph 65). Thus it would be obvious to one of ordinary skill to use colloid (fine) particles of metal hydroxide where Omura is silent as to the metal hydroxide size in order to effectively stabilize dispersed oil globules.
Regarding claim 2, nonylpropenylphenol-ethylene oxide (10) adduct sulfate ammonium salt has an aromatic ring i.e. “phenol” (paragraph 29).
Regarding claim 3, Omura describes 0.1-10 parts by weight of the oily component (paragraph 31).
Regarding claim 4, Tayagaki describes colloidal particles (paragraph 65).
Regarding claim 5, 24, 27, 28 Omura describes metal hydroxide, specifically magnesium hydroxide (paragraph 23).
Regarding claim 6, Omura describes magnesium hydroxide in an alkaline (e.g. pH 7-14) environment (paragraph 22).
Regarding claim 7, Omura describes adding the reactive surfactant (monomer (B) and monomer (A)) to the oily mixture (paragraph 32).
Regarding claims 17, 18 and 22, Yokota describes nonylpropenylphenol-ethylene oxide (10) adduct sulfate ammonium salt, an alkylene oxide adduct wherein the carbon number is 2 (col 4 Example 1 ln 35-37). Yokota also describes propylene oxide (3 carbons) in an embodiment (col 2 ln 40).
Regarding claims 19, 20 and 25, Yokota exemplifies nonylpropenylphenol-ethylene oxide (10) adduct sulfate ammonium salt, which has a molecular weight of 197 g/mol. The sulfate group SO3 has a molecular weight of 80 g/mol, so the percent sulfate according to the instant claim phrase is 10% in Yokota’s Example 1.
Regarding claim 21, 23, 26, Omura describes adding 0.1-10 parts surfactant per 100 parts of the oily mixture (paragraph 31), which overlaps with the claimed ranges. 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), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Omura describes values overlapping with the claimed range.
Response to Arguments
Applicant’s argument p.9 paragraph 3-4 of Remarks submitted 12/31/25 has been considered but is not persuasive. Applicant states that "Omura does not disclose or suggest the claimed monomer (A)". This is not convincing because Omura's disclosure also reads on monomer (A), which is now required to be present, as evidenced by new reference US 5332854 by Yokota et al applied in rejection above.
Applicant's argument p.9 final paragraph-p.10 paragraph 2 has been considered but is not persuasive. Applicant states that Tayagaki requires the use of amphoteric surfactant and thus is incombinable with Omura. This is not found convincing because Tayagaki is merely relied upon to provide the size of metal hydroxide particles already present in Omura where Omura is silent as to the size of the metal hydroxide particles. Tayagaki, like Omura, describes the production of heat-expandable microspheres from an aqueous suspension of oil droplets which contain blowing agent and polymerizable component. That Tayagaki may emphasize different surfactants than instant does not detract from the motivation to choose the size particles disclosed in Tayagaki. Tayagaki states that colloid (fine) particles effectively stabilize oil globules (paragraph 65), therefore it is obvious to use colloid-size particles in Omura.
Applicant’s argument p.10 end of page has been considered but is not persuasive. Applicant states that Omura exemplifies nonionic surfactants and that in the instant examples, nonionic surfactants exhibit inferior blowing agent encapsulations. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant' s showing of allegedly unexpected results does not satisfy these requirements. Fundamentally, the scope of the claims is very broad and the examples are much too insufficient to establish support for the broad claims. The only limitation in the independent claim on “monomer (A)” is a sulfuric acid value, which can be zero, and the only limitation on “monomer (B)” is a phosphoric acid value, which can also be zero. No specific identities or amounts or even limitation on what the “polymerizable component” or “thermally vaporizable blowing agent” is present. As such, applicants’ few examples – which have specific identities and amounts of all ingredients- cannot possibly meet the “commensurate in scope” aspect.
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 CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766