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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 15, 2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendments filed on January 15, 2026 have been entered. Claims 1-2, 6-12, 14 and 16-18 are pending in the application.
Claim Rejections - 35 USC § 103
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 7, 9-11, 14, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (JP 2010/235883 A, using the machine translation for the citations below) in view of Otsuki (JP 2011/057829 A, using the machine translation for the citations below), as evidenced by McGuiness-Hickey (Polymer Glass Transition Temperature - Material Properties, Impact, 2023, HZO, p. 1-5).
Regarding Claims 1 and 16-18: Kobayashi teaches a vibration-damping composition (para. 0001) comprising one or more acrylic copolymers (para. 0011-0013) and a filler comprising calcium carbonate, mica, and inorganic hollow particles (para. 0010), such as glass balloons (para. 0019).
However, Kobayashi is silent to the relationship between the glass transition temperatures and molecular weights of the acrylic copolymers.
Otsuki teaches a vibration-damping composition (para. 0001) comprising at least two polymers with different weight average molecular weights, which results in a better vibration damping performance (para. 0008). The polymers are preferably acrylic copolymers (para. 0034), wherein one copolymer has a glass transition temperature of 0 to 20°C, and the other has a glass transition temperature of -30 to -10°C (para. 0045). The two glass transition temperatures allow for the composition to have good performance over a practical temperature range (para. 0043). Otsuki further teaches that one polymer has a weight-average molecular weight of 500-20,000 (para. 0014) and the other has a weight-average molecular weight of 40,000-600,000 (para. 0013). The disclosed molecular weights overlap the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a low MW polymer with an overlapping molecular weight to improve damping performance (para. 0014) and a high MW polymer with an overlapping molecular weight to reduce cracking and blistering (para. 0013).
While Otsuki does not explicitly teach that the polymer with a higher glass transition temperature also has a higher molecular weight, McGuiness-Hickey teaches that polymers with a higher molecular weight tend to also have a higher glass transition temperature (p.2, Basics of Glass Transition). Because the core and shell are the same type of polymer (acrylic copolymers), one of ordinary skill in the art would be able to surmise that the polymer with a higher glass transition temperature also has a higher molecular weight.
Otsuki further teaches that the ratio of the low MW polymer to the high MW polymer is 5:95-40:60 (para. 0021). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping ratio of the two polymers and would have been motivated to do so since Otsuki teaches this range results in good interaction between the polymers and high mobility of the polymer chains (para. 0012).
Otsuki and Kobayashi are analogous art because they are directed toward the same field of endeavor, namely vibration damping compositions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the two copolymers taught by Otsuki as the acrylic copolymers in the composition of Kobayashi, and they would have been motivated to do so in order to achieve superior damping performance over a wide temperature range.
Not disclosed is the specific gravity. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 2: Kobayashi teaches that the total filler amount (calcium carbonate, mica, and glass bubbles) is 66-68 wt%, based on the sum of the fillers and the resin (para. 0006), and that an additional ingredient (thermally expandable microcapsules) are present at 0.1-5 phr (para. 0024). Based on calculations, the composition comprises approximately 32-34 wt% of acrylic copolymer resin. Kobayashi further teaches 5-50 phr of the glass bubble (para. 0020), 5-50 phr of the calcium carbonate (para. 0018), and 50-200 phr of the mica (para. 0018). Based on calculations, the composition contains 1.6-17 wt% of the glass bubble, 1.6-17 wt% of the calcium carbonate, and 17-68 wt% of the mica. These amounts overlap the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use overlapping amounts of glass bubbles, calcium carbonate, and mica, and they would have been motivated to do so in order to optimize the vibration damping properties of the composition.
Regarding Claim 7: Kobayashi teaches that the glass bubbles have a particle size of 30-150 microns (para. 0019). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a glass bubble with an overlapping particle size and they would have been motivated to do so since the claimed size is readily commercially available.
Regarding Claim 9: Kobayashi teaches that the calcium carbonate has an average particle size of 0.5-25 microns (para. 0018). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use calcium carbonate with an overlapping particle size and would have been motivated to do so since the claimed size is readily commercially available.
Regarding Claim 10: Kobayashi teaches that the mica has an average particle size of 10-50 microns (para. 0017). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use mica with an overlapping particle size and would have been motivated to do so since the claimed size is readily commercially available.
Regarding Claim 11: Kobayashi teaches colorants, dispersants, and viscosity modifiers (para. 0026).
Regarding Claim 14: Not disclosed is the loss factor at 20°C and 40°C. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Furthermore, Kobayashi teaches that a high loss factor is highly preferable (para. 0030). The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (JP 2010/235883 A, using the machine translation for the citations below) in view of Otsuki (JP 2011/057829 A, using the machine translation for the citations below), as evidenced by McGuiness-Hickey (Polymer Glass Transition Temperature - Material Properties, Impact, 2023, HZO, p. 1-5), Tomoe Engineering Co., Ltd (Cenolite (ceramic balloon), Accessed 2 July 2025), and Ricca Chemical Company (Density and Specific Gravity, Archived 13 Feb 2019).
Kobayashi teaches that the glass bubbles may be Cenolite FS-150 (para. 0036), which Tomoe Engineering Co., Ltd teaches has a density of 0.95 g/cc (p.2, true density). Although the specific gravity is not disclosed, Ricca Chemical Company teaches that density and specific gravity are often numerically equal (p.1, para. 2).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (JP 2010/235883 A, using the machine translation for the citations below) in view of Otsuki (JP 2011/057829 A, using the machine translation for the citations below), as evidenced by McGuiness-Hickey (Polymer Glass Transition Temperature - Material Properties, Impact, 2023, HZO, p. 1-5), Tomoe Engineering Co., Ltd (Cenolite (ceramic balloon), Accessed 2 July 2025), and Reslab (Cenolite Microspheres, Archived 28 Feb 2015).
Kobayashi teaches that the glass bubbles may be Cenolite FS-150 (para. 0036), which Tomoe Engineering Co., Ltd teaches has a high compressive strength (p.1, Features). Tomoe Engineering Co., Ltd does not teach the exact crushing strength of the glass bubbles; however, Reslab teaches that similar Cenolite microspheres have crush strengths of 350-12000 psi/2.4-83 MPa (p.1, compressive strength of R, C, and G grades). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use glass bubbles with an overlapping crush strength and would have been motivated to do so in order to prevent the bubbles from breaking during processing.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (JP 2010/235883 A, using the machine translation for the citations below) in view of Otsuki (JP 2011/057829 A, using the machine translation for the citations below), as evidenced by McGuiness-Hickey (Polymer Glass Transition Temperature - Material Properties, Impact, 2023, HZO, p. 1-5), as applied to claim 11 above, further in view of Preishuber-Pfluegl et al (US 2023/0383094 A1).
Kobayashi and Otsuki teach the limitations of claim 11, as set forth above. However Kobayashi is silent to the anti-foaming agent, as well as the amounts of all of the additives.
Preishuber-Pfluegl teaches 0.2-2 wt% of a dispersant (para. 0068) and 0-15 wt% of auxiliary agents (para. 0077), such as foam inhibitors and thickeners (para. 0079). The amounts of the foam inhibitor and thickener overlap the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use overlapping amounts of a foam inhibitor and thickener, and they would have been motivated to adjust within that range in order to achieve the desired defoaming and thickening properties. Preishuber-Pfluegl and Kobayashi are analogous art because they are directed toward the same field of endeavor, namely vibration-damping coating compositions.
Although Preishuber-Pfluegl does not teach a colorant or an amount thereof, one of ordinary skill in the art would have found it obvious to try adding it in the same amounts as the other auxiliary components for the purpose of achieving a suitable degree of aesthetic appeal.
Response to Arguments
Applicant’s arguments with respect to claims 1-2, 6-12, 14 and 16-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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