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 of Group I, claims 1-5, in the reply filed on 04/16/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/16/2026.
In the amendments filed on 04/16/2026, Claims 1, 3-6, and 8-12 are pending. Claims 1, 4, 6, and 9 are amended. Claims 2 and 7 are canceled. Claims 6 and 8-10 are withdrawn. Claims 11 and 12 are new. Since claims 11 is drawn to the sheet according to claim 6, and since claim 6 is in the withdrawn group of claims, claim 11 is withdrawn from further consideration. Since claim 12 is drawn to the composition according to claim 1, and since claim 1 is in Group I, claim 12 is placed in Group 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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 recites the limitation “wherein the first hollow particles have an expansion initiation temperature of 260°C or lower” in lines 1-2, which fails to include all the limitations of the claim upon which it depends because claim 1, from which it depends, recites the limitation “wherein the first hollow particles have an expansion initiation temperature of 160°C or higher” in lines 6-7. The range recited in claim 3 overlaps with, but is not entirely within, the range recited in claim 1. The Office suggests that Applicant amend the claim 3 limitation to “wherein the first hollow particles have an expansion initiation temperature of 160°C or higher and 260°C or lower”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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], wherein the heat-expandable microspheres comprise a thermoplastic resin shell and a thermally-vaporizable blowing agent encapsulated therein [0014], wherein the hollow resin particles are manufactured by expanding the heat-expandable microspheres [0021], wherein the fine-particle-coated hollow resin particles comprise the hollow resin particles and a fine particle coating the outer surface of the shell of the hollow resin particles [0022], wherein the expansion initiation temperature of the heat-expandable microspheres is not specifically restricted and 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 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], wherein the hollow resin particles are manufactured by thermally expanding the heat-expandable microspheres [0178] at a temperature preferably ranging from 70 to 450° C [0180], wherein the base component is not specifically restricted, and includes, for example, thermosetting resins, such as unsaturated polyester resins, 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 having 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 use Tayagaki’s hollow resin particles and Tayagaki’s fine-particle-coated hollow resin particles in Tayagaki’s composition, such that Tayagaki’s hollow resin particles and Tayagaki’s fine-particle-coated hollow resin particles are different from each other. 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. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing lightweight properties and excellent material properties to Tayagaki’s composition, for preventing scattering of Tayagaki’s hollowing resin particles, for improving their handling property, and for improving their dispersibility 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], that the hollow resin particles are manufactured by expanding the heat-expandable microspheres [0021], that the fine-particle-coated hollow resin particles comprise the hollow resin particles and a fine particle coating the outer surface of the shell of the hollow resin particles [0022], that the hollow resins particles are lightweight and exhibit excellent material properties when contained in a composition [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, wherein the first hollow particles having an expansion initiation temperature of 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 the expansion initiation temperature of Tayagaki’s heat-expandable microspheres that are expanded during manufacture of Tayagaki’s hollow resin particles to be not lower than 160° C and to have an upper limit of 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 obtainment of the effect of Tayagaki’s invention and/or for optimizing resistance to rupturing or denting of Tayagaki’s hollowing resin particles because Tayagaki teaches that the expansion initiation temperature of the heat-expandable microspheres is not specifically restricted and 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], that the object of their invention is to provide heat-expandable microspheres processable into hollow resin particles having a shell that can resist rupturing or denting due to a high pressure load and applications thereof [0012], and that their invention solves the problem [0013], which means that the expansion initiation temperature of Tayagaki’s heat-expandable microspheres that are expanded during manufacture of Tayagaki’s hollow resin particles in ° C would have affected obtainment of the effect of Tayagaki’s invention and/or resistance to rupturing or denting of Tayagaki’s hollowing resin particles.
Regarding claim 4, Tayagaki teaches that the maximum expansion temperature of the heat-expandable microspheres is not specifically restricted, and should preferably 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], and 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 the present invention [0140], 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 the maximum expansion temperature of Tayagaki’s heat-expandable microspheres that are expanded during manufacture of Tayagaki’s hollow resin particles to be not lower than 220° C and to have an upper limit of 250° C. The proposed modification would read on wherein the first hollow particles have a maximum expansion temperature of 220°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 obtainment of the effect of Tayagaki’s invention and/or for optimizing resistance to rupturing or denting of Tayagaki’s hollowing resin particles because Tayagaki teaches that the maximum expansion temperature of the heat-expandable microspheres is not specifically restricted, and should preferably 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 the present invention [0140], that the object of their invention is to provide heat-expandable microspheres processable into hollow resin particles having a shell that can resist rupturing or denting due to a high pressure load and applications thereof [0012], and that their invention solves the problem [0013], which means that the maximum expansion temperature of Tayagaki’s heat-expandable microspheres that are expanded during manufacture of Tayagaki’s hollow resin particles in ° C would have affected obtainment of the effect of Tayagaki’s invention and/or resistance to rupturing or denting of Tayagaki’s hollowing resin particles.
Regarding claim 5, Tayagaki teaches that the maximum expansion temperature of the heat-expandable microspheres is not specifically restricted, and should preferably 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], and 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 the present invention [0140], 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 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 the maximum expansion temperature of Tayagaki’s heat-expandable microspheres that are expanded during manufacture of Tayagaki’s hollow resin particles to be not lower than 90° C and to have an upper limit of 290° C. The proposed modification would read on wherein the first hollow particles have a maximum expansion temperature of 90°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 obtainment of the effect of Tayagaki’s invention and/or for optimizing resistance to rupturing or denting of Tayagaki’s hollowing resin particles because Tayagaki teaches that the maximum expansion temperature of the heat-expandable microspheres is not specifically restricted, and should preferably 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 the present invention [0140], that the object of their invention is to provide heat-expandable microspheres processable into hollow resin particles having a shell that can resist rupturing or denting due to a high pressure load and applications thereof [0012], and that their invention solves the problem [0013], which means that the maximum expansion temperature of Tayagaki’s heat-expandable microspheres that are expanded during manufacture of Tayagaki’s hollow resin particles in ° C would have affected obtainment of the effect of Tayagaki’s invention and/or resistance to rupturing or denting of Tayagaki’s hollowing resin particles.
Regarding claim 12, Tayagaki teaches that the heat-expandable microspheres comprise a thermoplastic resin shell and a thermally-vaporizable blowing agent encapsulated therein [0014], that the hollow resin particles are manufactured by expanding the heat-expandable microspheres [0021], that the hollow resin particles manufactured by expanding the heat-expandable microspheres usually comprise a gaseous blow agent in their hollow parts, though a part of the blowing agent in the hollow parts can be liquid [0127] , and that the hollow resin particles usually comprise a gaseous blowing agent in their hollow cores, although part of the blowing agent in the hollow parts can be liquid [0182], 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 part of Tayagaki’s blowing agent in hollow parts of Tayagaki’s hollow resin particles to be liquid. 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 the heat-expanding properties of Tayagaki’s hollow resin particles because Tayagaki teaches that that the hollow resin particles are manufactured by expanding the heat-expandable microspheres [0021], that the hollow resin particles manufactured by expanding the heat-expandable microspheres usually comprise a gaseous blow agent in their hollow parts, though a part of the blowing agent in the hollow parts can be liquid [0127], and that the hollow resin particles usually comprise a gaseous blowing agent in their hollow cores, although part of the blowing agent in the hollow parts can be liquid [0182].
Response to Arguments
Applicant’s arguments, see p. 5-9, filed 04/16/2026, with respect to the rejection of claim 1 under 35 U.S.C. 102(a)(1) as being anticipated by Meguriya et al. (JP 2004-026875 A) 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.
Applicant’s arguments, see p. 5-9, filed 04/16/2026, with respect to the rejection of claims 3-5 under 35 U.S.C. 102 as being anticipated by Meguriya et al. (JP 2004-026875 A) as applied to claim 1, and furth as evidenced by Nouryon (Nouryon, “Product Specification Expancel Microspheres”, February 2019) 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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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
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