DETAILED ACTION
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
This office action is in response to the Amendment filed on 12/28/2025.
Claims 25-42 are presently pending; claims 34-42 are withdrawn; claims 1-24 are canceled; claims 25 and 33 are amended; claims 25-33 are under examination.
The rejections of claims 25-33 under 35 U.S.C 112(b) are withdrawn in light of the amendments to the claims.
The 35 U.S.C. 102 rejection of claims 25-33 over ISKANDER is maintained.
Claim Interpretation
For purposes of claim interpretation, “metal oxide” as recited in claims 25-33 is interpreted as meaning metal oxide or silica, as this would appear most in keeping with Applicant’s intent as discussed in the specification at paragraph [0010].
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 25-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iskander, et al., “Controllability of Pore Size and Porosity on Self-Organized Porous Silica Particles”, Nano Letters, Vol. 2, No. 4, 12 Feb 2002, pg. 389-392 (hereinafter, “ISKANDER”).
Regarding claim 25, ISKANDER teaches closed-cell metal oxide particles comprising a metal oxide matrix defining an array of closed-cells, each closed-cell encapsulating a media-inaccessible void volume, wherein an outer surface of the closed-cell metal oxide particle is defined by the array of closed-cells (see ISKANDER at Abstract, pg. 389-390, “Experiment”, and Figs. 1-2, 4 and 6, teaching porous silica particles formed by preparing an aqueous dispersion comprising polystyrene latex particles and colloidal silica particles, forming droplets and evaporating the water, then calcining the material to remove the polymer particles, resulting in silica particles having pores present inside the particles, i.e., closed-cell particles as claimed, as shown in Figs. 1-2, 4 and 6).
Regarding claim 26, ISKANDER teaches a closed-cell metal oxide particle according to claim 25, wherein the array of closed-cells is an ordered array (see ISKANDER at pg. 390-392, “Results and Discussion”, and Figs. 1-2 and 4, teaching silica particles having self-organized pores, i.e., an ordered array of closed-cells).
Regarding claim 27, ISKANDER teaches a closed-cell metal oxide particle according to claim 25, wherein the array of closed-cells is a disordered array (see ISKANDER at pg. 390-392, “Results and Discussion”, teaching silica particles wherein the pores exhibited no organization, i.e., a disordered array of closed-cells).
Regarding claim 28, ISKANDER teaches a closed-cell metal oxide particle according to claim 25, wherein the void volumes have an average diameter from about 50 nm to about 500 nm (see ISKANDER at pg. 390-391, “Results and Discussion”, and Figs. 2-5, teaching that the average pore size (i.e., void volume diameter) is identical to the average size of the polystyrene latex (PSL) particles, which is 79 nm, 136 nm or 178 nm).
Regarding claims 29-30, ISKANDER teaches a closed-cell metal oxide particle according to claim 25, wherein the metal oxide matrix comprises silica (see ISKANDER at Abstract).
Regarding claim 31, ISKANDER teaches a closed-cell metal oxide particle according to claim 25. The limitation regarding the particle being derived at least partially from polymer particles having an average diameter from about 50 nm to about 500 nm is considered product-by-process language and is not given patentable weight. “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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Further, although this limitation is not considered to limit the present product claim, ISKANDER teaches that the particles are at least partially derived from polystyrene latex (PSL) polymer particles having an average diameter of 79 nm, 136 nm or 178 nm (see ISKANDER at Abstract, pg. 389-391, “Experiment” and “Results and Discussion”, and Figs. 2-5).
Regarding claim 32, ISKANDER teaches a closed-cell metal oxide particle according to claim 25. The limitation regarding the particle being derived at least partially from metal oxide particles having an average diameter from about 1 nm to about 120 nm is considered product-by-process language and is not given patentable weight. “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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Further, although this limitation is not considered to limit the present product claim, ISKANDER teaches that the particles are at least partially derived from silica particles having an average diameter of 5 nm, 15 nm or 25 nm (see ISKANDER at pg. 390-391, “Results and Discussion”, and Figs. 2-5).
Regarding claim 33, ISKANDER teaches a closed-cell metal oxide particle according to claim 25. The limitation regarding the particle being derived from a metal oxide precursor selected from a precursor of silica, titania, alumina, zirconia, ceria, iron oxides, zinc oxide, indium oxide, tin oxide, chromium oxide, and combinations thereof is considered product-by-process language and is not given patentable weight. “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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Further, although this limitation is not considered to limit the present product claim, ISKANDER teaches that the particles are derived from a silica precursor (see ISKANDER at pg. 390, “Results and Discussion”).
Response to Arguments
Applicant's arguments filed 12/28/2025 have been fully considered but they are not persuasive.
Applicant argues:
“Iskander does not disclose a single instance of a void volume being encapsulated by a closed-cell” (see Remarks at pg. 6).
“claim 25 requires closed-cells that encapsulate “media-inaccesible” void volumes and an outer surfaced “defined by the array of closed-cells.” The specification explicitly distinguished closed-cell particles from porous particles. As described at paragraph [0059], “the porous metal oxide particle shown in Fig. 1B has pores on its exterior surface and connected pores inside” (see Remarks at pg. 6).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that ISKANDER does not teach a void volume encapsulated by a closed-cell, the Examiner respectfully disagrees. As acknowledged by Applicant, particles considered “porous” rather than “closed-cell” have exterior pores which are connected to internal pores; ISKANDER does not teach that pores on the exterior surface have connected pores inside. ISKANDER teaches internal pores which are separate from surface pores (see ISKANDER at Abstract and pg. 391-392), i.e., void volumes encapsulated by a closed-cell, and that the appearance of surface pores are close to half hemisphere (see ISKANDER at Fig. 6 and pg. 392), i.e., they are closed at the surface (as empty space within a half-hemisphere is not a surface of the particle) and do not connect to internal pores and allow media to travel into closed internal pores. ISKANDER also teaches that the particles are formed by generating liquid droplets of a dispersion comprising polymer particles (e.g., 178 nm) in silica sol (e.g., 5 nm), then drying the liquid droplets via a spray drying process to evaporate the solvent and produce a dried powder composite of silica and self-assembled polymer particles, then heating the powder at 450 °C to evaporate the polymer particles, leaving pores of the same size in their place (see ISKANDER at pg. 389-390, “Experiment” and “Results and Discussion”), which is the process used in the present invention to prepare the closed-cell metal oxide particles (see present specification at paragraphs [0005], [0021], [0060] and [0084]); MPEP § 2112.01 (I) states that where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established, and that when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. ISKANDER also teaches that the particles formed by this process can be further annealed/sintered at, e.g., 1200 °C, which smooths out the half hemisphere pores at the surface (see ISKANDER at pg. 391 and Fig. 6b). Further, it is noted that in the present application, every example of “closed-cell” particles is depicted as having voids/pores at the surface (see Figs. 1A, 2, 4, 6 and 10-11 of the present application), but this clearly does not mean that the particles do not contain internal media-inaccessible void volumes and an outer surface defined by an array of closed cells.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731