DETAILED ACTION
Summary
This is a non-final rejection for application 18/027,473. The amendment in the RCE dated 17 June 2026 is acknowledged.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 17 June 2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on 17 June 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent 12,465,901 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer filed on 17 June 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent 12,215,178 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
Claim 8 is objected to because of the following informalities:
In Claim 8, on line 3, please replace “all the monomer unit” with “all the monomer units”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 2 and 8 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 and Claim 8 each recite “a hydrophilic non-crosslinkable monomer unit derived from the hydrophilic non-crosslinkable monomer”. Each claim depends upon, and therefore includes Claim 1. Claim 1 already recites that the polymer optionally contains “a non-crosslinkable monomer unit” consisting of a non-crosslinkable unit derived from a hydrophilic non-crosslinkable monomer”. It is not clear whether each claim is referring back to the same Claim 1 monomer unit component or if they are reciting an additional monomer unit component with the same monomer characteristics as the one recited in Claim 1. Examiner recommends reciting “the non-crosslinkable monomer unit derived from the hydrophilic non-crosslinkable monomer” if it is intended to refer back to the same monomer unit component.
Claim Rejections - 35 USC § 103
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over KAWASHIMA (US-4972000-A).
Regarding Claim 1, KAWASHIMA teaches hollow polymer particles with an average equivalent hollow diameter/equivalent particle diameter of 0.2-0.8 (Abstract) which since the volume is proportional to the cube of the diameter corresponds to a void ratio of 8-51.2% which overlaps the 50% or more that is recited by the claim. In Example Q-6, KAWASHIMA exemplifies an inside/outside ratio of 0.81/1.02 which when cubed calculates to a void ratio of 50.0% (Table 4). The polymer shell surrounding the void is interpreted as satisfying the recited requirement a resin, a hollow portion surrounded by the shell wherein the shell contains, as the resin, a polymer. KAWASHIMA teaches that a crosslinked polymer containing recurring units represented by formula (a) which contains an n-functional organic group (Col 5: 9-21) where n is 2 or 3. KAWASHIMA teaches that this unit comes from divinyl or trivinyl monomers (Col 5: 51-61) and teaches several specific divinyl or trivinyl monomers (a1) monomers (Col 7: 13-20) including divinylbenzene and ethylene glycol dimethacrylate and trimethylol propane trimethacrylate (Col 7: 13-20). KAWASHIMA teaches that its particles are formed by a two-step polymerization of a prepolymer (P) layer and an outer (Q) or (Q’) layer (Col 7:22-36). KAWASHIMA teaches that in its (P)-(Q’) particles, its (a1) monomers are present in an amount of 0.5-99.5 wt% in the (Q’) layer (Col 19: 45-53). KAWASHIMA teaches a weight ratio of inner (P) layers to outer layers of 5-2000 parts by weight inner layer per 100 parts outer layer for both (P)-(Q) and (P)-(Q’) particles (Col 17:40-43; Col 19: 60-63). This calculates to a 0.52-98.6wt% of (a1) monomers for the (P)-(Q) particles which overlaps the recited range of 70-100wt% with a larger overlap for the (P)-(Q’) particles because of the higher maximum for (a1) in the (Q’) layer. KAWASHIMA does not exemplify particles with 85-100 wt% of crosslinkable monomers units, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of KAWASHIMA and use amounts of crosslinkable (a1) monomer that are within the range taught in its specification that are also within the range recited by the claim. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
KAWASHIMA further teaches that its polymer contains (b1) and (c1) units (Col 6: 5-25) which have one polymerizable double bond and are interpreted as non-crosslinking, and teaches many specific (b1) units such as those derived from acrylonitrile and methacrylonitrile (Col 6: 44-45) and teaches many specific (c1) units including esters of (meth)acrylic acid such as methyl acrylate, ethyl acrylate, butyl acrylate and methyl methacrylate (Col 6: 59-61). Here, the specification of the current invention is used as evidence that the acrylonitrile, methyl acrylate, ethyl acrylate, butyl acrylate and methyl methacrylate taught by KAWASHIMA have solubilities in distilled water of more than 0.3 g/L at 20°C. (cur spec: Table 1).
KAWASHIMA does not teach whether its particles would pass the recited immersion test, but KAWASHIMA teaches and exemplifies many of the same crosslinking monomers used in the instant examples and recited in Claims 5 and 6 below including ethylene glycol dimethacrylate, divinylbenzene and trimethylol propane trimethacrylate (Col 7: 13-20; Col 26: 16-24). KAWASHIMA teaches particles with an inner particle/outer particle diameter ratio of up to 0.8 which results in a void ratio of up to 51.2% (Abstract). KAWASHIMA further teaches that its particles have excellent solvent resistance and thermal resistance (Col 7: 40-44) and teaches using the air inside its voids for the purpose of thermal insulation (Col 55: 64-66) which suggests that the trapped air does not escape when the hollow particles are used in dispersions. Given the lower density that up to 51.2% of trapped air provides, one would inherently expect that less than 5% of the stable hollow particles taught by KAWASHIMA would submerge in acetone when subjected to the recited immersion test.
Regarding Claim 2 and Claim 8, modified KAWASHIMA teaches the invention of Claim 1. KAWASHIMA further teaches that its polymer contains (b1) and (c1) units (Col 6: 5-25), and teaches many specific (b1) units such as those derived from acrylonitrile and methacrylonitrile (Col 6: 44-45) and teaches many specific (c1) units including esters of (meth)acrylic acid such as methyl acrylate, ethyl acrylate, butyl acrylate and methyl methacrylate (Col 6: 59-61). Here, the specification of the current invention is used as evidence that the acrylonitrile, methyl acrylate, ethyl acrylate, butyl acrylate and methyl methacrylate taught by KAWASHIMA have solubilities in distilled water of more than 0.3 g/L at 20°C. (cur spec: Table 1). KAWASHIMA teaches particles with a multi-layer shell of the form (P)-(Q’). (Col 7:22-36) KAWASHIMA teaches 20-99 wt% of the monomers in its inner (P) layer are the hydrophilic monofunctional monomers recited above (Col 8: 27-32). KAWASHIMA teaches that monofunctional monomers (including (b1) and (c1) monomers) are optional in the outer (Q’)-layer of its (P)-(Q’) particles (Col 18: 56; Col 18: 60). KAWASHIMA teaches 5-2000 parts of its (P) layer relative to 100 parts of its outer (Q’) layer (Col 19: 60-63). This lowers the lower-bound of hydrophilic monomers to 20*(5/(100+5)) ≈ 0.95 wt% which would allow the broad range taught by KAWASHIMA to encompass the recited range of 2-15wt%. Taking into effect that the void ratio of the final particles must be 50% or more, then KAWASHIMA teaches an inner void diameter of its inner (P) layer of 0.25-0.9 which, when cubed, calculates to a void ratio of 15.6-72.9%. This allows for a fraction of the (P) layer only as low as 0.5/0.729 ≈ 0.686 which when applied to the 20wt% lower bound of hydrophilic monomers calculates to an overall lower bound of 20*0.686 ≈ 13.72wt% which is within the range recited by the claim. It would be obvious to further modify the invention of KAWASHIMA and use amounts of hydrophilic monomer that are within the range taught in its specification that are also within the range recited by the claim. Claim 8 is also rejected because it recites the same amounts of monomer units in the polymer in the shell as Claim 2. It is presumed that the recited monomer units in the polymer in the shell are incorporated into the shell.
Regarding Claim 3, modified KAWASHIMA teaches the invention of Claim 1 where KAWASHIMA teaches that its crosslinking monomers can be divinyl or trivinyl monomers (Col 5: 51-61) and teaches several specific divinyl such as divinylbenzene and ethylene glycol dimethacrylate and a trivinyl monomers such as trimethylol propane trimethacrylate (Col 7: 13-20). KAWASHIMA is silent in its specification as to whether divinyl and trivinyl monomers can be used in combination, but KAWASHIMA exemplifies divinylbenzene (DVB), ethylene glycol dimethacrylate (EDMA) and trimethylolpropane trimethacrylate (TMPMA) (Col 26: 15-30) and teaches examples where the trifunctional TMPMA is used in Q’-particles where bifunctional DVB is used in the P-layer of the particle (Table 13 examples Q’-5, Q’7 using core particles P-4 and P-5 defined in Table 2), so KAWASHIMA exemplifies bifunctional and trifunctional monomers together in the same particle.
Regarding Claim 4, modified KAWASHIMA teaches the invention of Claim 1. KAWASHIMA does not have a general teaching for the relative amounts of its bifunctional and trifunctional crosslinking monomers, but KAWASHIMA teaches polymerization of its (P)-(Q’) particles in two stages and exemplifies cases where a bifunctional monomer is used in its (P) layer and a trifunctional monomer is used in its (Q’) layer (Table 13 examples Q’-5, Q’7 using core particles P-4 and P-5 defined in Table 2). KAWASHIMA teaches a relative amount of 5-2000 parts of its inner (P) layer relative to 100 parts of its outer (Q’) layer (Col 19:60-63). This calculates to 4.7-95.2wt% of the inner (P) layer with the remaining 4.8-95.3wt% being the outer (Q’) layer, but taking into effect that the void ratio of the final particles must be 50% or more, then KAWASHIMA teaches an void diameter of its inner (P) layer of 0.25-0.9 which, when cubed, calculates to a void ratio of 15.6-72.9%. This allows for a fraction of the (P) layer only as low as 0.5/0.729 ≈ 0.686, corresponding a maximum outer (Q’)-layer fraction of 0.314. KAWASHIMA teaches that its (Q’)-layer is broadly 0.5-100 wt% of crosslinking (a1) monomer (Col 18:46-49). For the case where the (Q’) layer is 4.8-31.4 wt% of the particle that calculates to an amount of crosslinking monomer in the (Q’)-layer of up to 31.4 wt% which overlaps the 5-50wt% which is recited for the trifunctional monomer in the claim. It would be obvious to further modify the invention of KAWASHIMA and use amounts of bifunctional and trifunctional monomers within the ranges taught in its specification that are also within the range recited by the claim.
Regarding Claim 5, modified KAWASHIMA teaches the invention of Claim 1 where KAWASHIMA teaches that its crosslinking monomers can be divinyl or trivinyl monomers (Col 5: 51-61) and teaches several specific divinyl monomers such as divinylbenzene and ethylene glycol dimethacrylate (Col 7: 13-20). KAWASHIMA exemplifies divinylbenzene (DVB), ethylene glycol dimethacrylate (EDMA) (Col 26: 15-30; Table 2).
Regarding Claim 6, modified KAWASHIMA teaches the invention of Claim 1 where KAWASHIMA teaches that its crosslinking monomers can be divinyl or trivinyl monomers (Col 5: 51-61) and teaches trivinyl monomers such as trimethylol propane trimethacrylate (Col 7: 13-20). KAWASHIMA exemplifies trimethylolpropane trimethacrylate (TMPMA) (Col 26: 15-30; Table 13).
Regarding Claim 7, modified KAWASHIMA teaches the invention of Claim 1. KAWASHIMA teaches that polymerization of its particles takes place in the presence of an emulsifier and/or dispersing agent (Col 14: 59-60). KAWASHIMA teaches that examples of emulsifiers include rosinic acid salts such as potassium rosinate and sodium rosinate and sodium or potassium salts of saturated or unsaturated higher aliphatic carboxylic acids such as potassium and sodium salts of oleic, lauric and stearic acid (Col 15: 14-19). It is presumed that some of the emulsifier may end up mixed into the polymeric shell during the polymerization. KAWASHIMA does not exemplify a rosinate or fatty acid salt emulsifier, exemplifying sodium dodecylbenzenesulfonate (DBS) and polyoxyethylene nonyl phenyl ether (POENPE) instead (Col 26: 38-39), but it would have been obvious to modify the examples of KAWASHIMA and use a rosinate salt or higher fatty acid salt as an emulsifier based on the teaching of its specification. This satisfies the requirement of metal salts of rosin acids or metal salts of higher fatty acids.
Claims 1-6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over FUTAMI (US-20020068805-A1).
Regarding Claim 1, FUTAMI teaches cationic hollow crosslinked polymer particles with a volume hollowness of 1-80% that includes 5-90wt% of structural units derived from a crosslinking monomer ([0048], [0052]). These overlap with the void ratio of 50% or more and 85-100wt% crosslinking monomer units that is recited by the claim. FUTAMI does not exemplify void ratios or an amount of crosslinking monomer within the recited range, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of FUTAMI and create particles with an amount of crosslinking units and volume hollowness/void ratio that are within the ranges taught by FUTAMI that are also within the recited range. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
FUTAMI generally teaches that its particles contain 10-95 wt% of structural units derived from other monomers that are copolymerizable with the crosslinking monomer ([0052]). FUTAMI teaches many of the specific monomers that are disclosed in the instant specification as having the recited solubility characteristics including methyl acrylate, ethyl acrylate, butyl acrylate, acrylonitrile and methyl methacrylate ([0180])(see cur spec: Table 1) for solubility properties.
FUTAMI does not perform hollow particle immersion tests on its particles, but FUTAMI teaches that its particles have a void inside each particle formed during the polymerization of the crosslinked monomer ([0212]), that its particles have high solvent resistance ([0026]) and are used to solve the problem of high specific gravity of other fillers ([0024]) which suggests that the reduced density that the void inside the particles provide is a feature of the particles of its invention. One would inherently expect that less than 5% of the stable hollow particles taught by FUTAMI would submerge in acetone when subjected to the recited immersion test.
Regarding Claim 2 and Claim 8, modified FUTAMI teaches the invention of Claim 1. FUTAMI generally teaches that its particles contain 10-95 wt% of structural units derived from other monomers that are copolymerizable with the crosslinking monomer ([0052]). FUTAMI teaches many of the specific monomers that are disclosed in the instant specification as having the recited solubility characteristics including methyl acrylate, ethyl acrylate, butyl acrylate, acrylonitrile and methyl methacrylate ([0180])(see cur spec: Table 1) for solubility properties. FUTAMI exemplifies methyl methacrylate (Table 1) but in amounts outside the recited range. The obvious modification in claim 1 which requires 85% of structural units of the crosslinking monomers effectively sets the upper bound on these monomers to 15% which satisfies the claim. Claim 8 is also rejected because it recites the same amounts of monomer units in the polymer in the shell as Claim 2. It is presumed that the recited monomer units in the polymer in the shell are incorporated into the shell.
Regarding Claim 3, modified FUTAMI teaches the invention of Claim 1. FUTAMI generally teaches crosslinking monomers with that are trifunctional and tetrafunctional ([0171]) and lists trimethylolpropane trimethacrylate as a preferred crosslinking monomer ([0171]). FUTAMI teaches an Example (1-2) which contains both divinylbenzene and trimethylolpropane trimethacrylate (Table 1).
Regarding Claim 4, modified FUTAMI teaches the invention of Claim 1. FUTAMI generally teaches crosslinking monomers with that are trifunctional and tetrafunctional ([0171]) and lists trimethylolpropane trimethacrylate as a preferred crosslinking monomer ([0171]). FUTAMI exemplifies examples which contain 13 and 33 wt% trimethylolpropane trimethacrylate (Table 1). Note that in the obvious modification where 85wt% of crosslinking monomer is used, then example 1-2 features trimethylolpropane trimethacrylate as 46% (13/28) of the crosslinking monomer.
Regarding Claim 5, modified FUTAMI teaches the invention of Claim 1. FUTAMI generally teaches divinylbenzene and ethylene glycol di(meth)acrylate ([0171]) and exemplifies divinylbenzene (Table 1).
Regarding Claim 6, modified FUTAMI teaches the invention of Claim 1. FUTAMI generally teaches pentaerythritol tetra(meth)acrylate and trimethylolpropane tri(meth)acrylate ([0171]), prefers trimethylolpropane tri(meth)acrylate ([0171]) and exemplifies trimethylolpropane tri(meth)acrylate (Table 1).
Regarding Claim 9, modified FUTAMI teaches the invention of Claim 1. FUTAMI teaches hollow particles from a single polymerization ([0052]) suggesting the that there are not multiple polymers or polymeric layers present in the hollow particles. FUTAMI teaches that seed polymers may be used [0226]) but are not required for carrying out preparation of its particles ([0275]) for This satisfies the requirement that the polymer included in the shell consists of the polymer recited in the invention of Claim 1.
Response to Arguments
Applicant's arguments filed 17 June 2026 have been fully considered but they are not persuasive.
The terminal disclaimers filed 17 June 2026 are acknowledged and the double patenting rejections have been withdrawn.
The amendments to Claim 8 and 9 have resolved informalities. One informality was not fully addressed and that objection is maintained above. The other objections have been withdrawn.
The amendment to Claim 8 addressing antecedency issues is in conflict with the amendment to Claim 1 which now recites a similar component. 112(b) rejections have been added for Claim 2 and Claim 8 regarding whether the recitations in the dependent claims are referring back to the Claim 1 component or if they are reciting new components.
Applicant argues that the rejections over KAWASHIMA and FUTAMI are overcome because the amendment to Claim 1 now excludes non-hydrophilic monomers such as styrene which are a requirement of the inventions of KAWASHIMA and FUTAMI. In response, the amendment to Claim 1 recites that the polymer optionally contains a non-crosslinkable monomer unit which is derived from a hydrophilic non-crosslinkable monomer having the recited solubility characteristic. It does not recite that recite that its excludes other non-crosslinkable monomer units. As Claim 1 is recited now, it is just a broader version of the previous Claim 2 where the hydrophilic monomer unit component is optional and does not recite amounts. If the intent is that all non-crosslinkable monomer units are derived from monomers having the hydrophilic solubility characteristic, that needs to be explicitly recited in the claims. Also, the claims are directed to a polymer contained in the shell. The prior art does not teach that any seed particles that it uses become part of the shell of its hollow particles. To the extent that the seed particles are still present in the hollow particles, they would be interpreted as part of the core of those particles and not the shell. Additionally, FUTAMI teaches that a seed polymer does not need to be used in carrying out the preparation of its hollow particles ([0275]).
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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