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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/30/2026 has been entered.
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Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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 4/30/2026 have been fully considered but they are not persuasive.
Applicant generally argues the claimed black material content of 0.01-7 wt% is critical, referring to examples 15 (0.01 wt%), 19 (5.02 wt%), 20 (9.98 wt%) and comparative example 2 (0 wt%) of the specification. Applicant’s comparison between Examples 19 and 20 has been considered, but is not found persuasive. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Here, the perceived small differences in Heat Resistance, Ts, Tmax, and Dmax within Table 2 is not seen to be significant to the extent that they can be regarded as unexpected. While Applicant refers to ¶ 49-51 for discussion of the importance of Tmax, Dmax, and Ts, the values reported within the Table with respect to those with black material above 7 wt% are well within the most preferred values set forth within the paragraphs and avoid unfavorable effects described therein. With respect to Comparative Example 2, Masuda teaches the oily mixture can contain dispersed dyes or pigments, inclusive of carbon black with hydrophobized surface, suggesting the presence of carbon black within the shells for reasons outlined in the rejections above. It is unclear how or why the improved characteristics associated with the inclusion of carbon black would not already be present is such embodiments.
Even arguendo the range was shown to be critical, the claims at issue is not commensurate in scope with the evidence relied upon in support of the allegation of unexpected results. Evidence is only provided for carbon black and solvent black 7, whereas the broad genus “black material” is set forth within the claims. Evidence is only shown for specific acrylic monomers whereas the claims pertain to nitrile monomers / carboxy monomers generically.
Applicant generally argues the position of black material depends on the affinity of the carbon black with the monomers, noting the examples use a dispersant to ensure the carbon black disperses uniformly within the oily mixture. This is not found persuasive as Masuda unambiguously suggests hydrophobized carbon blacks dispersed within the oily mixtures and not un-treated relatively hydrophilic carbon blacks. Various known methods of hydrophobizing carbon blacks for dispersing in oily mixtures are known (see ¶ 88 of Masuda). Treating carbon blacks with a dispersant is seen to be a means of achieving a hydrophobized surface that is used within the examples of the specification. See for instance Lee (ACS Appl. Mater. Interfaces 2014, 6, 14345-14352).
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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