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 .
Election/Restrictions
Applicant’s election without traverse of Group VI with the glass microspheres and
PNG
media_image1.png
46
70
media_image1.png
Greyscale
species in the reply filed on June 03, 2026 is acknowledged.
Claims 1-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 03, 2026.
Claim Rejections - 35 USC § 102
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.
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 13, 14, 16 and 20 are rejected under 35 U.S.C. 102(a1) and (a2) as being anticipated by US 2009/0011216 (Suzuki).
Suzuki discloses a foam molded product comprising:
a polymer made by polymerizing dicyclopentadiene alone or with a norbornene comonomer [0035] (meets Applicants’ polymer made by addition polymerization of at least one cycloolefin comprising a ring containing a single carbon-carbon double bond);
a polymerization catalyst [0038] (meets Applicants’ addition polymerization catalyst); and
thermally expandable polymeric microspheres [0042]/[0046] (meet Applicants’ expanded polymeric microspheres) (e.g., abstract, [0025], [0035], [0040], [0052], [0068-0069], examples, claims).
As to claim 13, Suzuki expressly sets forth (Examples 1-4) a foam molded product comprising:
a polymer made by polymerizing dicyclopentadiene and ethylidene norbornene [0069] (meets Applicants’ polymer made by addition polymerization of at least one cycloolefin comprising a ring containing a single carbon-carbon double bond);
a tungsten-based polymerization catalyst [0038] (meets Applicants’ addition polymerization catalyst); and
thermally expandable polymeric microspheres (meets Applicants’ expanded polymeric microspheres).
As to claim 14, Suzuki discloses the polymer made by polymerizing dicyclopentadiene alone or with a norbornene comonomer is preferably crosslinked. [0004]/[0016]/[0034].
As to claim 16, Suzuki expressly uses ethylidene norbornene.
As to claim 20, Suzuki discloses the same method steps for producing the foam molded articles (e.g., examples).
Claim Rejections - 35 USC § 102/103
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.
Claims 13, 14, 16 and 18-20 are rejected under 35 U.S.C. 102(a10 and (a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2010/0144924 (Yoshiwara) as evidenced by JP 2014178595 A (Fujii).
Yoshiwara discloses a composite comprising:
a polymer obtained by polymerizing a cycloolefin monomer having a ring structure with a carbon-carbon double bond [0018] (meets Applicants’ polymer made by addition polymerization of at least one cycloolefin comprising a ring containing a single carbon-carbon double bond);
a polymerization catalyst [0026] (meets Applicants’ addition polymerization catalyst); and
hollow particles inclusive of hollow glass particles [0075] (meets Applicants’ hollow glass microspheres) (e.g., abstract, [0001], [0013], [0018-0026], [0059-0075], examples, claims).
As to claim 13, Yoshiwara expressly sets forth (Example 1) a composite comprising:
a polymer made by polymerizing 2-norbornene (NB) and tetracyclo[6.2.1.13,6.02,7 ]dodec-4-ene (TCD) [0183] (meets Applicants’ polymer made by addition polymerization of at least one cycloolefin comprising a ring containing a single carbon-carbon double bond);
a polymerization catalyst [0182] (meets Applicants’ addition polymerization catalyst); and
Shirasu balloons, which as evidenced by Fujii are hollow glass balloons (meets Applicants’ hollow glass microspheres).
The composite would be expected to be a foam composite given the presence of the hollow particles.
As to claim 14, Yoshiwara discloses the polymer is crosslinked [0011].
As to claim 16, Yoshiwara discloses 2-norbornene.
As to claim 18, given that Yoshiwara’s composite is similarly-constituted, it would be expected that such would have a similar dielectric constant. This is particularly so given that Yoshiwara discloses the composites have a low dielectric constant [0009].
As to claim 19, Yoshiwara discloses the composite is preferably laminated on a substrate [0147].
As to claim 20, Yoshiwara discloses the same method steps for producing the (foam) composite (e.g., examples).
Yoshiwara anticipates the above-rejected claims in that it is reasonably believed that the exemplified Shirasu balloons are hollow glass balloons, as evidenced by Fujii. In the alternative, it would have been within the purview of Yoshiwara’s inventive disclosure [0075], and obvious to one having ordinary skill in the art, to use hollow glass balloons as viable hollow inorganic particles with the reasonable expectation of success.
Claim Rejections - 35 USC § 103
Claims 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0144924 (Yoshiwara) as evidenced by JP 2014178595 A (Fujii) described hereinabove.
As to claim 15, it would have been within the purview of one having ordinary skill in the art to select the type and amount of cycloolefin monomers per Yoshiwara in accordance with the desired glass transition temperature.
As to claim 17, it is within the purview of Yoshiwara’s inventive disclosure [0046], and obvious to one having ordinary skill in the art, to further include a plasticizer for its expected additive effect and with the reasonable expectation of success.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0011216 (Suzuki) described hereinabove.
As to claim 15, it would have been within the purview of one having ordinary skill in the art to select the type and amount of cycloolefin monomers per Suzuki in accordance with the desired glass transition temperature.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0011216 (Suzuki) in view of US 2010/0144924 (Yoshiwara), both described hereinabove.
As to claim 17, it would have been within the purview of one having ordinary skill in the art to further include additives that are conventionally used in similar-such crosslinkable compositions, e.g., plasticizers as taught by Yoshiwara, for their expected additive effect and with the reasonable expectation of success.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No 12,466,162. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented article comprises a composite foam comprising the same presently claimed materials (cycloolefin-based polymer, addition polymerization catalyst and hollow glass microspheres).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
Prosecution Insights