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 .
This application is in response an Election/Restriction filed on 07/14/2026.
Claims 1-16 are pending. Applicant has elected with traverse Group II, claim 2, and claims 1, 3-16 are withdrawn as non-elected group I, III-XIII claims.
Election/Restrictions
Applicant's election with traverse of Group II, claim 2 in the reply filed on 07/14/2026 is acknowledged. The traversal is on the ground(s) that applicant has requested rejoinder of at least claims 10, 12, 14 which depend from claim 2. This is not found persuasive because Group II, claim 2 discloses a porous spherical silica composition while Groups VIII, claim 10, discloses a polish comprising porous spherical silica, Group X, claim 12, discloses cosmetic comprising porous spherical silica and Group XII, claim 14, discloses resin composition comprising porous spherical silica wherein these group only share this technical feature of porous spherical silica composition and this technical feature of porous spherical silica composition does still not make a contribution over the cited prior art taught by Hogblom et al (US PGPUB No.: 2020/0376464 A1) in view of Watanabe et al (WO2016072456) under the 103 rejection and further Groups I, III-XIII are different in scope and requires searches in separate classes and subclasses. The examiner respectfully submits that such searches would impose serious burden of time on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1, 3-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups I, III-XIII, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/14/2026.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Currently abstract is more than 150 words in length. It is suggested to have the abstract within the range of 50 to 150 words in length.
Claim Rejections - 35 USC § 112
6. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
7. Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites the limitation of “the particles” in line 8. There is insufficient antecedent basis for this limitation in the claim. Further, it is not clear if “the particles” refer to “the number of particles” or “ ten particles”. Examiner has interpreted “the particles” as “the number of particles” for examining purpose. Clarification is requested.
Claim Rejections - 35 USC § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
8. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hogblom et al (US PGPUB No.: 2020/0376464 A1, IDS cited reference by applicant) in view of Watanabe et al (WO2016072456, previously cited reference).
Hogblom discloses a porous spherical silica, wherein a 50% cumulative diameter (D50) of volume based particle size distribution measured by a Coulter counter method is in a range of 0.5-100 um (paragraph 0031), a ratio (D10/D90) of a 10% cumulative diameter (D10) of the distribution to a 90% cumulative diameter (D90) of the distribution is at least 0.3 (i.e., 0.1-2.30, paragraph 0028), a pore volume by a BJH method is 0.5 mL/g to 8 mL/g (i.e., 0.81 to 1.2 mL/g, paragraph 0022), a mode pore radius by the BJH method is 5 nm to 50 nm (i.e., 210-500 angstrom, paragraphs 0023-0025), a specific surface area by a BET method is 50 m2/g to 500 m2/g (see paragraph 0024), and an alkali metal content is at most 50 ppm (paragraphs 0019-0020). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Hogblom does not explicitly disclose or suggest porous silica having an arithmetic mean value of "compressive test forces when specimens are found to break" is 1.0x101 mN to 1.0x102 mN, the specimens being ten particles, the compressive test forces being obtained according to a method specified in JIS Z8844.
However, Watanabe discloses porous spherical silica having pore volume from 1.0-2.0 ml/g, median diameter (d50) in range from 0.5-25 um and compressive force of 0.5 gf to 2.5 gf (equal to 4.9 mN to 24.5 mN, reads on range from 1.0x10-1 mN to 1.0x101 mN, paragraphs 0007, 0037-0038). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Given Hogblom and Watanabe are both related to porous silica particles, therefore it would have been obvious to one of the ordinary skill in the art before the effective filing date of applicant invention to modify the porous silica of Hogblom to include the compressive force of Watanabe which would provide sufficient scrubbing feeling even when rubbed with weak rubbing force and capable of suppressing a hysteresis feeling as taught by Watanabe (see paragraph 0008).
Although Hogblom and Watanabe do not explicitly teach “compressive test forces being obtained according to method specified in JIS Z8844 when loading speed is 0.4462 mN/sec“ as presently claimed, it is noted that the present claims are drawn to product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Hogblom and Watanabe already teaches a same or substantially the same porous spherical silica as that of instantly claimed.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SMITA S PATEL whose telephone number is (571)270-5837. The examiner can normally be reached on 9AM-5PM EST M-W.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached on 5712705713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SMITA S PATEL/Primary Examiner, Art Unit 1732 08/18/2026
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