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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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).
Claim Rejections - 35 USC § 103
Claim(s) 1-4, 7-10, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masuda (US 2009/0149559 A1) in view of Wismer (U.S. Pat. No. 4,572,869).
Regarding Claims 1-3, 10, and 12, Masuda teaches thermally expandable microcapsule comprising shell and blowing agent as a core agent encapsulated by shell, prepared via polymerizing an aqueous dispersion whose oily mixture contains polymerizable material and blowing agent (Abstract). Masuda teaches the further incorporation of dispersion stabilizer such as silica (¶ 131-133). Masuda teaches embodiments with nitrile monomer and carboxy group-containing monomer, the nitrile monomer being present from 20-95 wt% and the carboxy group-containing monomer being present from 10-80 wt% (¶ 69), suggesting overlapping ranges. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Masuda suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Masuda. See MPEP 2123.
Although the particular embodiments of Masuda’s examples do not contain black material, Masuda teaches the oily mixture can contain dispersed dyes or pigments, inclusive of carbon black with hydrophobized surface (¶ 85-88). Accordingly, it would have been obvious to one of ordinary skill in the art to further incorporate dyes/pigments into the oily mixtures creating Masuda’s expandable microcapsules, thereby predictably affording microcapsules of a desired color such as black. Since both oily mixture and pigment are described as being hydrophobic, it stands to reason the hydrophobized dyes/pigments of Masuda would intrinsically be present at/within the shell of the resulting microcapsule in the absence of evidence to the contrary.
Although Masuda does not describe preferred contents / ratios of carbon black material / pigment, Wismer is also directed toward expandable microcapsules with pigment particles incorporated in the microcapsular structure (Abstract). Wismer indicates the relative quantity of pigment used depends on the desire degree of coloration/opacity desired (Col. 9, Line 53 to Col. 10, Line 9). The observed optical density value is a measure of the amount of black pigment and degree of coloration achieved by black material. Accordingly, the relative quantities of pigment material is a known result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). 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.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal quantities of carbon black pigment within the scope of the present claims so as to produce desired degree of colorations / optical density.
Regarding Claim 4, the disclosure of Masuda meets the limitations of claim 4 since the disclosure of carbon black pigment material meets the Markush limitation of claim 2 and claim 4 only serves to limit the black dye species thereof.
Regarding Claims 7-9, Masuda teaches the further incorporation of dispersion stabilizer such as silica in amounts spanning 0.1-20 pbw per 100 pbw of polymerizable component (¶ 131-133). Blowing agent contents of roughly 25 pbw per 100 pbw of polymerizable component are described (Table 1). Accordingly, Masuda suggests overlapping concentration ranges. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Masuda suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Masuda. See MPEP 2123. The disclosure of Masuda meets the limitations of claim 8 since the disclosure of silica meets the Markush limitation of claim 6 and claim 8 only serves to limit the magnesium species thereof.
Response to Arguments
Applicant's arguments filed 1/5/2026 have been fully considered but they are not persuasive.
The rejections pertaining to Ponticello, Teratani, and Wismer are withdrawn in view of Applicant’s amendment.
With respect to Masuda, Applicant argues the claims require black material to be within the shell whereas Masuda describes adhering fillers to the outer surface of the shell of the microspheres at ¶ 148. This is not found persuasive as Masuda additionally describes pigments can be included directly into the microsphere structure when the microspheres are created, specifically where the oily mixture can contain dispersed dyes or pigments, inclusive of carbon black with hydrophobized surface (¶ 85-88). These hydrophobized pigments are different from the later mentioned fillers within Maduda’s disclosure. The Examiner maintains that since both oily mixture and pigment are described as being hydrophobic, it stands to reason the hydrophobized dyes/pigments of Masuda would intrinsically be present at/within the shell of the resulting microcapsule in the absence of evidence to the contrary.
With respect to the combination of Masuda and Wismer, Applicant argues Wismer describes a preference for the microcapsules to have whiteness. This is not found persuasive as Wismer is not relied upon for creating white capsules, but rather for its teachings with respect to the quantity of pigment being a known result effective variable for the purpose of achieving a given degree of coloration/opacity.
Applicant further argues Wismer teaches adjusting pigment contents for a different purpose (Wismer for adjusting a degree of coloration vs reducing white spots in resulting foams). The examiner disagrees. The prior art establishes one of ordinary skill understood that to achieve a certain degree of coloration, the quantity of pigment needs to be adjusted. Stated otherwise, in the case of adding black material, the appearance of undesired whiteness would logically lead to the conclusion that more black material would be required.
Applicant argues when the black material is present within the shell, the particles are less likely to fall off, thus allowing the foam to have a good appearance. This is not found persuasive. Masuda is already seen to imply pigments/dyes within the shells of the microcapsules. It is unclear how or why such benefits would not also result within the bounds of Masuda’s disclosure.
Applicant argues incorporation of the black material in quantities of 0.01-30 wt% gives unexpected results, namely increased strength, reduced fusion, and increased light-shielding/appearance. Applicant does not refer to any experimental data, but rather refers to a statement within ¶ 15 of the specification. Applicant’s allegation of unexpected results is not found persuasive. To be of probative value, allegations of unexpected results must be established by factual evidence. MPEP 716.01(c)(1). The examples presented only range from 0.01-10 wt% and all comparative examples show 0 wt% of black material. Factual evidence showing the specific claimed range of 0.01-30 wt% to be critical is not found. See also MPEP 716.02(d)(II). Also, evidence is only provided for carbon black and solvent black 7, whereas the broad genus “black material” is set forth within the claims.
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.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759