DETAILED ACTION
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.
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 .
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 § 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 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 1, 3-5, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tayagaki et al. (WO 2019/150951 A1, US 2021/0363320 A1 is English language equivalent and is used for citation).
Regarding claims 1 and 3, Tayagaki teaches a composition comprising a base component and at least one selected from the group consisting of heat-expandable microspheres, hollow resin particles, and fine-particle-coated hollow resin particles [0023, 0218], wherein the heat-expandable microspheres comprise a thermoplastic resin shell and a core encapsulated therein [0054], wherein the heat-expandable microspheres have a core-shell structure, and the whole of a microsphere is thermally expandable and is wholly expandable by heating [0054], wherein the heat-expandable microspheres comprising the thermoplastic resin shell produce hollow resin particles having a very thin shell [0059], wherein the expansion initiation temperature of the heat-expandable microspheres should preferably be not lower than 70° C [0137], wherein the upper limit of the expansion initiation temperature of the heat-expandable microspheres should preferably be 250° C [0137], wherein the maximum expansion ratio of the heat-expandable microspheres should range from 10 to 200 times [0147], wherein the hollow resin particles and fine-particle-coated hollow resin particles can have further expansion performance [0203], wherein the further expansion ratio of the hollow resin particles and fine-particle-coated hollow resin particles should preferably range from 5 to 85% [0204], wherein the base component is thermosetting resins that are unsaturated polyester resins and epoxy resins [0219], which reads on a composition comprising first hollow particles being thermally expandable hollow particles and/or second hollow particles being hollow particles other than the first hollow particles, and a polymerizable compound, wherein the first hollow particles have an expansion initiation temperature of 70°C or higher and 250°C or lower.
Tayagaki does not teach a specific embodiment of the composition comprising first hollow particles being thermally expandable hollow particles and second hollow particles being hollow particles other than the first hollow particles. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select at least two selected from Tayagaki’s group consisting of heat-expandable microspheres, hollow resin particles, and fine-particle-coated hollow resin particles, such that at least one is Tayagaki’s heat-expandable microspheres, and at least one is Tayagaki’s hollow resin particles or Tayagaki’s fine-particle-coated hollow resin particles. The proposed modification would read on the 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. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying the resistance to deformation against a high pressure load and/or lightweight properties of Tayagaki’s composition and/or for modifying scattering of Tayagaki’s particles, handling properties of Tayagaki’s particles, and/or dispersibility of Tayagaki’s particles in Tayagaki’s base component because Tayagaki teaches that the composition comprises at least one selected from the group consisting of heat-expandable microspheres, hollow resin particles, and fine-particle-coated hollow resin particles [0023, 0218], that the heat-expandable microspheres contributed to the manufacture of hollow resin particles having a shell that can resist deformation against a high pressure load [0025], that the hollow resin particles have a shell that can resist deformation against a high pressure load [0026], that the fine-particle-coated hollow resin particles have a shell that can resist deformation against a high pressure load [0027], that the hollow resin particles have a shell that is not ruptured by a high pressure load and are more durable against deformation [0105], that the improved rigidity of the shell makes the hollow resin particles more durable against stress and friction to which the hollow resin particles are subjected when mixed with a base component [0105], that the heat-expandable microspheres have high durability against a high pressure load [0150], that the hollow resin particles are lightweight and exhibit excellent material properties when contained in a composition or formed article [0178], and that the fine particles coating the hollow resin particles prevents scattering of the hollow resin particles to improve their handling property and improves their dispersibility in a base component [0193].
Tayagaki does not teach with sufficient specificity that the first hollow particles have an expansion initiation temperature of 160°C or higher and that the first hollow particles have an expansion initiation temperature of 160°C or higher and 260°C or lower. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize Tayagaki’s initiation temperature of Tayagaki’s heat-expandable microspheres to be not lower than 160° C and not higher than 250° C. The proposed modification would read on wherein the first hollow particles have an expansion initiation temperature of 160°C or higher and 250°C or lower as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing resistance to deformation against a high pressure load of Tayagaki’s composition and/or for optimizing an ability of Tayagaki’s heat-expandable particles to expand when heated to a desired temperature because Tayagaki teaches that the expansion initiation temperature of the heat-expandable microspheres should preferably be not lower than 70° C [0137], that the upper limit of the expansion initiation temperature of the heat-expandable microspheres should preferably be 250° C [0137], that an expansion initiation temperature of the heat-expandable microspheres less than 70° C or higher than 250° C cannot attain the effect of their invention [0138], and that the advantageous effects of their invention include that the composition comprises at least one selected from the group consisting of the heat-expandable microspheres, hollow resin particles, and fine-particle-coated hollow resin particles, and which can resist deformation against a high pressure load [0028], which means that Tayagaki’s initiation temperature of Tayagaki’s heat-expandable microspheres in ° C would have affected resistance to deformation against a high pressure load of Tayagaki’s composition and/or an ability of Tayagaki’s heat-expandable particles to expand when heated to a desired temperature.
Regarding claim 4, Tayagaki teaches that the maximum expansion temperature of the heat-expandable microspheres should be not lower than 90° C [0139], and that the upper limit of the maximum expansion temperature of the heat-expandable microspheres should preferably be 300° C [0139], which reads on wherein the first hollow particles have a maximum expansion temperature of 90°C or higher and 300°C or lower.
Tayagaki does not teach with sufficient specificity that the first hollow particles have a maximum expansion temperature of 220°C or higher. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize Tayagaki’s maximum expansion temperature of Tayagaki’s heat-expandable microspheres to be not lower than 220° C and not more than 300° C. The proposed modification would read on wherein the first hollow particles have a maximum expansion temperature of 220°C or higher and 300°C or lower as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing resistance to deformation against a high pressure load of Tayagaki’s composition and/or for optimizing an ability of Tayagaki’s heat-expandable particles to expand when heated to a desired temperature because Tayagaki teaches that the maximum expansion temperature of the heat-expandable microspheres should be not lower than 90° C [0139], that the upper limit of the maximum expansion temperature of the heat-expandable microspheres should preferably be 300° C [0139], that a maximum expansion temperature of the heat-expandable microspheres lower than 90° C or higher than 300° C can fail to attain the effect of their invention [0140], and that the advantageous effects of their invention include that the composition comprises at least one selected from the group consisting of the heat-expandable microspheres, hollow resin particles, and fine-particle-coated hollow resin particles, and which can resist deformation against a high pressure load [0028], which means that Tayagaki’s maximum expansion temperature of Tayagaki’s heat-expandable microspheres in ° C would have affected resistance to deformation against a high pressure load of Tayagaki’s composition and/or an ability of Tayagaki’s heat-expandable particles to expand when heated to a desired temperature.
Regarding claim 5, Tayagaki teaches that the maximum expansion temperature of the heat-expandable microspheres should be not lower than 90° C [0139], and that the upper limit of the maximum expansion temperature of the heat-expandable microspheres should preferably be 300° C [0139], which reads on wherein the first hollow particles have a maximum expansion temperature of 90°C or higher and 300°C or lower.
Tayagaki does not teach with sufficient specificity that the first hollow particles have a maximum expansion temperature of 160°C or higher and 290°C or lower. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize Tayagaki’s maximum expansion temperature of Tayagaki’s heat-expandable microspheres to be not lower than 160° C and not more than 290° C. The proposed modification would read on wherein the first hollow particles have a maximum expansion temperature of 160°C or higher and 290°C or lower as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing resistance to deformation against a high pressure load of Tayagaki’s composition and/or for optimizing an ability of Tayagaki’s heat-expandable particles to expand when heated to a desired temperature because Tayagaki teaches that the maximum expansion temperature of the heat-expandable microspheres should be not lower than 90° C [0139], that the upper limit of the maximum expansion temperature of the heat-expandable microspheres should preferably be 300° C [0139], that a maximum expansion temperature of the heat-expandable microspheres lower than 90° C or higher than 300° C can fail to attain the effect of their invention [0140], and that the advantageous effects of their invention include that the composition comprises at least one selected from the group consisting of the heat-expandable microspheres, hollow resin particles, and fine-particle-coated hollow resin particles, and which can resist deformation against a high pressure load [0028], which means that Tayagaki’s maximum expansion temperature of Tayagaki’s heat-expandable microspheres in ° C would have affected resistance to deformation against a high pressure load of Tayagaki’s composition and/or an ability of Tayagaki’s heat-expandable particles to expand when heated to a desired temperature.
Regarding claim 12, Tayagaki teaches that the heat-expandable microspheres comprise a thermoplastic resin shell and a thermally-vaporizable blowing agent encapsulated therein [0014], and that the blowing agent includes (iso)decane, (iso)undecane, (iso)dodecane, or (iso)tridecane [0125], which optionally reads on wherein a liquid is enclosed in a hollow portion of the first hollow particles as claimed.
Tayagaki does not teach a specific embodiment wherein a liquid is enclosed in a hollow portion of the first hollow particles. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Tayagaki’s blowing agent in Tayagaki’s heat-expandable microspheres to be (iso)decane, (iso)undecane, (iso)dodecane, or (iso)tridecane. The proposed modification would read on wherein a liquid is enclosed in a hollow portion of the first hollow particles as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying an ability of Tayagaki’s heat-expandable microspheres to expand when heated to a desired temperature and/or for optimizing resistance to deformation against a high pressure load of Tayagaki’s composition because Tayagaki teaches that the heat-expandable microspheres comprise a thermoplastic resin shell and a thermally-vaporizable blowing agent encapsulated therein [0014], that the blowing agent includes (iso)decane, (iso)undecane, (iso)dodecane, or (iso)tridecane [0125], that the blowing agent vaporizes by heating and the blowing agent encapsulated in the thermoplastic resin shell of heat-expandable microspheres makes the whole of a microsphere thermally expandable [0124], and that the heat-expandable microspheres contribute to the manufacture of hollow resin particles having a shell that can resist deformation against a high pressure load [0025].
Response to Arguments
Applicant’s arguments, see p. 5-11, filed 08/12/2026, with respect to the rejection of claim 3 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, have been fully considered and are persuasive. The rejection of claim 3 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, has been withdrawn.
Applicant’s arguments, see p. 5-11, filed 08/12/2026, with respect to the rejection(s) of claims 1, 3-5, and 12 under 35 U.S.C. 103 as being unpatentable over Tayagaki et al. (WO 2019/150951 A1, US 2021/0363320 A1 is English language equivalent and is used for citation) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Tayagaki et al. (WO 2019/150951 A1, US 2021/0363320 A1 is English language equivalent and is used for citation) with a different reasoning.
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.
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.
/DAVID T KARST/Primary Examiner, Art Unit 1767
Prosecution Insights