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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-5, drawn to a composition comprising a polymerizable compound.
Group II, claim(s) 6-10, drawn to a sheet comprising a matrix polymer.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a composition comprising first hollow particles being thermally expandable hollow particles and second hollow particles being hollow particles other than the first hollow particles, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Meguriya et al. (JP 2004-026875 A, cited in IDS, machine translation in English used for citation, made of record on 07/06/2023). Meguriya teaches a heat-expandable organopolysiloxane composition comprising expanded organic resin microscopic hollow fillers and an inorganic hollow filler, wherein the expanded organic resin microscopic hollow fillers are heat-expanded (p. 1), which reads on a composition comprising first hollow particles being thermally expandable hollow particles and second hollow particles being hollow particles other than the first hollow particles as claimed.
During a telephone conversation with Alan E. Schiavelli on 01/09/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-5. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6-10 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meguriya et al. (JP 2004-026875 A, cited in IDS, machine translation in English used for citation).
Regarding claim 1, Meguriya teaches a silicone rubber composition comprising [0007] an expanded organic resin micro hollow filler expandable by heat [0008], which reads on a composition comprising first hollow particles being thermally expandable hollow particles as claimed. Meguriya teaches that the silicone rubber composition further comprising [0007] an inorganic hollow filler [0008], which reads on the composition further comprising second hollow particles being hollow particles other than the first hollow particles as claimed. Meguriya teaches that the silicone rubber composition further comprises [0007] a thermosetting organopolysiloxane composition [0008] that is an addition reaction-curable organopolysiloxane composition or an organic peroxide-curable organopolysiloxane composition and comprises an organopolysiloxane containing at least two silicon-bonded alkenyl groups in one molecule, an organohydrogenpolysiloxane containing at least two hydrogen atoms bonded to silicon atoms in one molecule, and a catalytic amount of addition reaction catalyst [0009], which reads on the composition further comprising a polymerizable compound as claimed.
Claims 2-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meguriya et al. (JP 2004-026875 A, cited in IDS, machine translation in English used for citation) as applied to claim 1, and further as evidenced by Nouryon (Nouryon, “Product Specification Expancel Microspheres”, February 2019).
Regarding claims 2-5, Meguriya teaches the composition according to claim 1 as explained above. Meguriya teaches that the expanded organic resin micro hollow filler expandable by heat [0008] is expanded thermoplastic resin hollow filler that is Expance551DE from Expancel Corporation that has a mean particle size of 40 µm [0044, 0047]. Nouryon provides evidence that Expancel 551 DE 40 d42 has a particle size D(0.5) of 25-50 µm (p. 1) and has an expansion curve that is
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(p. 12, see 551-40), which shows that it expands from about 75°C to about 194°C. Meguriya’s teachings therefore read on wherein the first hollow particles have an expansion initiation temperature of about 75°C to about 194°C, which reads on the claimed range, and which reads on wherein the first hollow particles have a maximum expansion temperature of about 194°C, which read on the claimed range.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID T KARST/ Primary Examiner, Art Unit 1767