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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
3. This application is a 371 of PCT/JP2021/039457 10/26/2021.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application JAPAN 2020-182283 10/30/2020 filed on 04/13/23.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 06/09/23, 01/21/25, and 04/15/25 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election without traverse of claims 6-11 in the reply filed on 01/23/26 is acknowledged.
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 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 6, 8, 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshiwara (US 2010/0144924).
Regarding claims 6, 8, Yoshiwara discloses a hollow particle which comprises a shell containing a hydrocarbon polymer such as cycloolefin and a hollow portion surrounded by the shell and which have a void ratio of 50 to 80% by volume, fall into instant claim range of 50% or more, and wherein a relative permittivity at frequency 1 GHz is 3.5 or less (para [0018]-[0025], [0059], [0062], [0092] [0161]-[0162], table 1, Ex 2-5), encompassing claim 8 range of 1.5 or less at frequency 1 GHz.
A prima facie case of obviousness exists for the hollow particle, wherein Yoshiwara discloses the relative permittivity at frequency 1 GHz is 3.5 or less, encompassing the requirement of claim 8. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05). It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Yoshiwara does not disclose the measurement of relative permittivity at 1 MHz (regarding claim 6).
However, it has been noted that applicants in specification discloses relative permittivity measurement at frequency 1 MHz or at alternate frequency 1 GHz (para [0208]). With all five examples and the three comparative examples the relative permittivity values are same at frequency 1 MHz and at alternate frequency 1 GHz for specific examples.
Since, the instant invention discloses same relative permittivity values at frequency 1 MHz and 1 GHz, and the claimed relative permittivity value at frequency 1GHz is obvious over Yoshiwara for the claimed composition, the permittivity values at frequency 1 MHz would necessarily be the same as claimed. If there is any difference between the product of Yoshiwara and the product of the instant claims, the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Regarding claim 10, Yoshiwara discloses the void ratio of 50 to 80% by volume (para [0092]), overlapping instant claim range of 60% or more.
A prima facie case of obviousness exists for the hollow particle, wherein Yoshiwara discloses the void ratio of 50 to 80% by volume, overlapping the requirement of claim 10. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05). It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claim 11, Yoshiwara discloses the particle diameter 0.1 to 5 µm (para [0091]), overlapping instant claim range of between 1 µm or more and 10 µm or less.
A prima facie case of obviousness exists for the hollow particle, wherein Yoshiwara discloses the particle diameter 0.1 to 5 µm, overlapping the requirement of claim 11. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05). It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Claims 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshiwara (US 2010/0144924) in view of Miyamoto (US 6146749).
Regarding claims 6-8, Yoshiwara discloses a hollow particle which comprises a shell containing a hydrocarbon polymer such as cycloolefin and a hollow portion surrounded by the shell and which have a void ratio of 50 to 80% by volume, fall into instant claim range of 50% or more, and wherein a relative permittivity at frequency 1 GHz is 3.5 or less (para [0018]-[0025], [0059], [0062], [0092], [0161]-[0162], table 1, Ex 2-5), encompassing claim 8 range of 1.5 or less at frequency 1 GHz.
A prima facie case of obviousness exists for the hollow particle, wherein Yoshiwara discloses the relative permittivity at frequency 1 GHz is 3.5 or less, encompassing the requirement of claim 8. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05). It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Yoshiwara does not disclose the measurement of relative permittivity at 1 MHz is 1.5 or less (regarding claim 6) and dielectric dissipation factor at 1 MHz is 0.010 or less (regarding claim 7).
However, Miyamoto discloses a hollow particle which comprises a shell containing a hydrocarbon polymer such as polypropylene and a hollow portion surrounded by the shell and wherein a dielectric constant (read on relative permittivity) at frequency 1 MHz is 2.5 or less and dielectric loss tangent (read on dielectric dissipation factor) at frequency 1 MHz is 0.01 or less (column 2, lines 26-48, column 3, lines 60-67, column 4, lines 53-, column 5, lines -11, column 6, lines 1-4, column 7, lines 23-24), encompassing claim 6 range of 1.5 or less and read on claim 7 range of 0.01 or less, wherein the composition is insulating material with a low dielectric constant and low dielectric loss tangent which exhibit superior insulation characteristics (column 9, lines 42-54).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify the Yoshiwara with a dielectric constant at frequency 1 MHz of 2.5 or less and dielectric loss tangent at frequency 1 MHz of 0.01 or less, as taught by Miyamoto. The rationale to do so would have been motivation provided by of Miyamoto that to do so would provide the insulating material with a low dielectric constant and low dielectric loss tangent to exhibit superior insulation characteristics.
A prima facie case of obviousness exists for the hollow particle, wherein modified Yoshiwara discloses a dielectric constant at frequency 1 MHz of 2.5 or less, encompassing the requirement of claim 6. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05). It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claim 9, Yoshiwara does not disclose the dielectric dissipation factor at 1 GHz is 0.010 or less.
Since, the claimed dielectric loss tangent (read on dielectric dissipation factor) at frequency 1 MHz is met and the claimed dielectric constant (read relative permittivity value) at frequency 1GHz and/or 1MHz is obvious over prior arts, the dielectric loss tangent (dielectric dissipation factor) value at frequency 1 GHz would necessarily be the same as claimed. If there is any difference between the product of Yoshiwara and the product of the instant claims, the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Regarding claim 10, Yoshiwara discloses the void ratio of 50 to 80% by volume (para [0092]), overlapping instant claim range of 60% or more.
A prima facie case of obviousness exists for the hollow particle, wherein Yoshiwara discloses the void ratio of 50 to 80% by volume, overlapping the requirement of claim 10. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05). It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claim 11, Yoshiwara discloses the particle diameter 0.1 to 5 µm (para [0091]), overlapping instant claim range of between 1 µm or more and 10 µm or less.
A prima facie case of obviousness exists for the hollow particle, wherein Yoshiwara discloses the particle diameter 0.1 to 5 µm, overlapping the requirement of claim 11. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05). It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Conclusion
References Matsushita Electric Works (WO 2004/067638), Nippon Synthetic Chemical (JP 2017-119843), JSR Corp (JP 2000-315845), Matsushita Electric Works (JP 2006-8750), Konica Minolta (JP 2016-210902), Uniplatek (KR 2015-0137783), Sanyo Chemical Industries (JP 2008-231241), and Sekisui Chemical (JP 2008-115280) were cumulative in nature to the above rejection and thus not set forth.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766