DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 in the reply filed on 2/17/2026 is acknowledged. Claims 11-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 2/17/2026.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
The abstract of the disclosure is objected to because it contains more than 150 words. Correction is required. See MPEP § 608.01(b).
Claim Objections
Claim 3 objected to because of the following informalities: a proper Markush format is “selected from the group”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites “introduced by a closed mixing system into the copolymer”, what is the copolymer? What does “into the copolymer” mean? Chemically incorporated into the copolymer, or physically mixed with the copolymer? For purposes of expediting prosecution, the limitation is interpreted as “the microspheres are mixed with acrylate-acrylonitrile copolymer and styrenated acrylic polymer by a closed mixing system”.
Claim 3 contains the trademark/trade name Expancel. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982), MPEP 2173.05(u). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name.
Claim 6 recites “functional filler”. What is it? What is a non-functional filler? Is Kaolin clay considered as a functional filler? For purposes of expediting prosecution, any fillers including kaolin clay, pigments, etc are considered as functional filler.
Claim 6 recites three ingredients, it is unclear if the composition comprises all of them or one of them. For purposes of expediting prosecution, it is interpreted as one of them.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kocurek et al (US 2017/0190864).
Claim 1, 3-6, 10: Kocurek teaches a compressible sealant composition comprising a polymeric dispersion, diluent, defoamer, surfactant, biocides, freeze/thaw additive, dispersant, microsphere Expancel 909 DET 80, a thickener, a pH modifier, a flame retardant, a filler such as talc or kaolin clay, an adhesion promoter (abstract, claims, tables 1-6). The polymer can be styrenated acrylic, acrylate acrylonitrile etc [0017, table 4, table 6]. The microsphere is mixed with other ingredients by using a peristaltic pump [0053].
The choice of polymeric chemical composition may depend upon the intended end use of the product [0018]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to choice a polymer mixture like claimed through routine experimentation to balance between cost and performance. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim 2: Kocurek teaches the density of the sealant can range from 0.51-0.99.
Claims 7-9: It is noted that “are introduced into…” is a product-by-process limitation. Case law holds that “even though product-by-process claims 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 In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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