DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on June 8, 2026 has been fully considered. The amendment to instant claim 1 and addition of new claims 6-7 are acknowledged. Specifically, claim 1 has been amended to recite a volume average particle diameter being more than 10 micron to 50 micron or less. In light of the amendment, the previous rejections not cited below are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Futami et al (US 2002/0068805).
4. Futami et al discloses hollow crosslinked polymer particles having particle size of 10 micron, volume hollowness of 1-80%, produced by copolymerization of:
a) 5-90%wt of a cross-linkable monomer;
b) 95-10%wt of structural units copolymerizable with the crosslinking monomer a) ([0048]-[0052], [0142]),
wherein the cross-linkable monomer a) includes trivinyl monomers, including trimethylolpropane trimethacrylate ([0171], i.e. methacryloyl group, to instant claim 4) and the copolymerizable monomer b) includes diolefins such as butadiene ([0180]).
5. Though Futami et al discloses the particle diameter being 10 micron, wherein the claimed particle diameter is more than 10 micron, it is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties; that is the values of 10.02 or 10.1 micron are more than 10 micron as required by instant claims, but still is very close to the value of 10 micron as disclosed by Futami et al. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
6. It is noted that instant specification recites both the polybutadiene and trimethylolpropane trimethacrylate as the cross-linkable monomers used in the present invention ([0050]-[0051] of instant specification).
6. Though Futami et al does not explicitly and with sufficient specificity recite the use of both butadiene and trimethylolpropane trimethacrylate as the comonomers a) and b), based on the teachings of Futami et al, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of butadiene and trimethylolpropane trimethacrylate as the comonomers a) and b) to form the hollow particles having the average particle diameter of 10 micron or 10.1 micron as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
7. The ranges of the amounts of used butadiene (i.e. bi-functional monomer) and trimethylolpropane trimethacrylate (tri-functional methacryloyl monomer) are overlapping with those as claimed in instant invention (as to instant claims 2-3).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
8. As to instant claim 6, the hollow particles of Futami et al are produced by a method comprising suspension polymerization of a mixture of polymerizable monomers, initiator, dispersion stabilizer and aqueous medium ([0230]-[0240]), further inert solvent ([0215]), e.g. since such solvent is cited as being subtracted from the final product ([0215]), it would be obvious to a one of ordinary skill in the art that such solvent should be present during polymerization. It is further noted that instant claim 6 is a product-by-process claim. Case law holds that “even 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 the 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” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
9. Since the hollow particles of Futami et al are produced from the same combination of di-functional and tri-functional monomers used in amount of about 100%, having average particle diameter of 10 micron, which value is very close to such values of 10.1 or 10.01 micron as required by in instant invention, and having volume hollowness of as high as 80%, therefore, the hollow particles of Futami et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including void ratio determined according to a method as disclosed in instant invention, shell thickness, percentage of particles having dent with a size of as high as 50%, and the number of the hollow particles having a communication hole or shell defect of 5 or less per 100 of the observed particles (as to instant claims 1, 5, 7) will be the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since inventive Example 3 of instant specification having particle size of 10 micron, also shows shell thickness of 0.69 micron and percentage of particles having a dent with size of 5-50% of the particle diameter is less than 5%, i.e. less than 5 particles per 100 particles, as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
10. It is further noted that instant specification does not provide sufficient evidence of criticality in the particle diameter being more than 10 micron, and the HSP distance between a hydrophobic solvent and the cross-linkable monomer during polymerization being 5.40-6.50, since Comparative example 5 of instant specification shows the average diameter of particles as being 7 micron (outside of the claimed range), HSP distance between the cross-linkable monomer and hydrophobic solvent of 3.93 (outside of the claimed range), but still showing void ratio of 65% and percentage of particles having dent of less than 5% and shell thickness of 0.48 micron (see Table 2 of instant specification), i.e. all the cited properties within the claimed ranges.
11. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hirata (WO2020/261926, Hirata’916).
It is noted that while the rejection is made over WO2020/261926 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 12,202,916 is relied upon. All citations to paragraph numbers, etc., below refer to US 12,202,916.
12. Hirata’916 discloses hollow resin particles having volume average particle diameter of 1-25 micron (col 16, lines 60-65), void ratio of 80% or more (col. 17, lines 26-28), and circularity of as high as 0.995 (col. 17, lines 49-51), produced by polymerization of 80-98 pbw of bifunctional and tri-functional crosslinkable monomers (col. 9, lines 20-30), specifically exemplified hollow particles produced by copolymerization of 65 pbw of ethylene glycol dimethacrylate and 30 pbw of trimethylolpropane trimethacrylate (col. 18, lines 40-44, as to instant claims 2-4). Hirata’916 explicitly teaches the hollow particles being produced in the presence of the bifunctional cross-linkable monomer along with tri- and higher functional cross-linkable monomers (col. 9, lines 37-40, 52-55; col. 10, lines 29-35).
13. Though Hirata’916 exemplifies the hollow particles having size of less than 10 micron, and does not exemplify the particles having size of more than 10 micron and up to 25 micron, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
14. As to instant claim 6, the hollow particles are produced by a process comprising i) preparing a mixture of monomers including ethylene glycol dimethacrylate, trimethylpropane trimethacrylate, initiator, cyclohexane solvent, surfactant and water phase, ii) suspending said mixture to form monomer droplets including said solvent in water, followed by iii) suspension polymerization and iv) solvent removal steps (col. 18, lines 38-col. 19, line 7). Since the crosslinkable monomers include ethylene glycol dimethacrylate, trimethylpropane trimethacrylate and the solvent includes cyclohexane, which components are the same as those cited in inventive Examples 1 and 3 of instant specification, therefore, the HSP distance between said monomers and the cyclohexane will intrinsically and necessarily be 5.99 as well (see Table 1 of instant specification). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
It is further noted that instant claim 6 is a product-by-process claim. Case law holds that “even 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 the 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” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
15. Though Hirata’916 does not explicitly teach some of the claimed properties of the hollow particles, since the hollow particles of Hirata’916 are produced from the same combination of di-functional and tri-functional monomers used in amount of about 95%wt, having average particle diameter of as high as 25 micron, as claimed in instant invention, and having void ratio of 80% or more, and produced by suspension polymerization in the presence of cyclohexane hydrophobic solvent and dispersion stabilizer, as claimed and disclosed in instant invention, therefore, the hollow particles of Hirata’916 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including the shell thickness, the number of hollow particles having a shell defect of 5 or less per 100 of the observed particles (i.e. 5% or less of the particles with shell defect) and the percentage of particles having dent with a size of as high as 50% (as to instant claims 1, 5, 7), that are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since Hirata’916 explicitly teaches the particles having circularity of as high as 0.995, i.e. essentially round/spherical. The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed hollow particles, if not taught, may be very well met by the hollow particles of Hirata’916, since the hollow particle of Hirata’916 are essentially the same as Applicants’ particles, and produced by essentially the same process at that claimed and disclosed in instant invention, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
16. It is further noted that instant specification does not provide sufficient evidence of criticality in the particle diameter being more than 10 micron, and the HSP distance between a hydrophobic solvent and the cross-linkable monomer during polymerization being 5.40-6.50, since Comparative example 5 of instant specification shows the average diameter of particles as being 7 micron (outside of the claimed range), HSP distance between the cross-linkable monomer and hydrophobic solvent of 3.93 (outside of the claimed range), but still showing void ratio of 65% and percentage of particles having dent of less than 5% and shell thickness of 0.48 micron (see Table 2 of instant specification), i.e. all the cited properties within the claimed ranges.
17. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Futami et al (US 2002/0068805) in view of Hirata et al (WO2020/066705, Hirata’594).
It is noted that while the rejection is made over WO2020/066705 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 12,139,594 is relied upon. All citations to paragraph numbers, etc., below refer to US 12,139,594.
18. The discussion with respect to Futami et al set forth in paragraphs 3-10 above, is incorporated here by reference.
19. Though Futami et al does not explicitly teach the shell thickness of the hollow particle,
Hirata’594 discloses hollow resin particles produced by polymerization of 30-100pbw, i.e. as high as 100 pbw of two or more cross-linkable monomers including divinylbenzene and dimethacrylates (col. 2, lines 55-60, col. 8, lines 35-60), are having particle size of 1-20 micron (col. 6, lines 30-36), void ratio of as high as 85% (col. 5, lines 25-37), spherical shape with circularity of as high as 0.995 (col. 9, lines 36-38) and further shell thickness of 0.01-1 micron (col. 9, lines 50-53).
Thus, Hirata’594 explicitly teaches that hollow particles produced from substantially 100 pbw of the cross-linkable monomers are having not only high void ratio and particle size of as high as 20 micron, but further shell thickness of as high as 1 micron.
20. Since both Hirata’594 and Futami et al are related to hollow particles produced by polymerization of substantially only monomers having two or more carbon-carbon bonds, and thereby cross-linkable, having substantially the same particle size and void ratio, and thereby belong to the same field of endeavor, wherein Hirata’594 further specifies that such particles can have shell thickness of as high as 1 micron, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Hirata’594 and Futami et al, and to modify, or obvious to try to modify the hollow particles of Futami et al and the process for making said particles according to teachings of Hirata’594, so to produce said hollow particles having shell size of as high as 1 micron, given such is desired for the specific end-use of said hollow particle as well, thereby arriving at the present invention. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
21. Since the hollow particles of Futami et al in view of Hirata’594 are produced from the same combination of di-functional and tri-functional monomers used in amount of about 100%, having average particle diameter of 10 micron, which value is very close to such values of 10.1 or 10.01 micron as required by in instant invention, and having volume hollowness of as high as 80%, therefore, the hollow particles of Futami et al in view of Hirata’594 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including the shell thickness, the number of hollow particles having a shell defect of 5 or less per 100 of the observed particles (i.e. 5% or less of the particles with shell defect) and the percentage of particles having dent with a size of as high as 50% (as to instant claims 1, 5, 7), that are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
22. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hirata (WO2020/261926, Hirata’916) in view of Hirata et al (WO2020/066705, Hirata’594).
It is noted that while the rejection is made over WO2020/261926 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 12,202,916 is relied upon. All citations to paragraph numbers, etc., below refer to US 12,202,916.
It is noted that while the rejection is made over WO2020/066705 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 12,139,594 is relied upon. All citations to paragraph numbers, etc., below refer to US 12,139,594.
23. The discussion with respect to Hirata’916 set forth in paragraphs 11-16 above, is incorporated here by reference.
24. Though Hirata’916 does not explicitly teach the shell thickness of the hollow particle being 0.2-4 micron,
Hirata’594 discloses hollow resin particles produced by polymerization of 30-100pbw, i.e. as high as 100 pbw of two or more cross-linkable monomers including divinylbenzene and dimethacrylates (col. 2, lines 55-60, col. 8, lines 35-60), are having particle size of 1-20 micron (col. 6, lines 30-36), void ratio of as high as 85% (col. 5, lines 25-37), spherical shape with circularity of as high as 0.995 (col. 9, lines 36-38) and further shell thickness of 0.01-1 micron (col. 9, lines 50-53).
Thus, Hirata’594 explicitly teaches that hollow particles produced from substantially 100 pbw of the cross-linkable monomers are having not only high void ratio and particle size of as high as 20 micron, but further shell thickness of as high as 1 micron.
25. Since both Hirata’594 and Hirata’916 are related to hollow particles produced by polymerization of substantially only monomers having two or more carbon-carbon bonds, and thereby cross-linkable, having substantially the same particle size and void ratio, and thereby belong to the same field of endeavor, wherein Hirata’594 further specifies that such particles can have shell thickness of as high as 1 micron, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Hirata’594 and Hirata’916, and to modify, or obvious to try to modify the hollow particles of Hirata’916 and the process for making said particles according to teachings of Hirata’594, so to produce said hollow particles having shell size of as high as 1 micron, given such is desired for the specific end-use of said hollow particle as well, thereby arriving at the present invention. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
26. Since the hollow particles of Hirata’916 in view of Hirata’594 are produced from the same combination of di-functional and tri-functional monomers used in amount of about 95%wt, having average particle diameter of as high as 25 micron, as claimed in instant invention, and having void ratio of 80% or more, and produced by suspension polymerization in the presence of cyclohexane hydrophobic solvent and dispersion stabilizer, as claimed and disclosed in instant invention, therefore, the hollow particles of Hirata’916 in view of Hirata’594 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including the shell thickness, the number of hollow particles having a shell defect of 5 or less per 100 of the observed particles (i.e. 5% or less of the particles with shell defect) and the percentage of particles having dent with a size of as high as 50% (as to instant claims 1, 5, 7), that are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since Hirata’916 explicitly teaches the particles having circularity of as high as 0.995, i.e. essentially round/spherical. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Obviousness Double Patenting Rejection I
27. Claims 1-7 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,319,805 in view of Hirata et al (WO2020/066705, based on US 12,139,594, Hirata’594).
28. The rejection is adequately set forth on pages 15-21 of an Office action mailed on March 26, 2026 and is incorporated here by reference.
Since no Terminal Disclaimer has been filed, the rejection is maintained.
29. With respect to the amended claim 1 and additional claims 6-7,
1) Though US 12,319,805 claims hollow particles having a volume average particle diameter of 10 µm, wherein the claimed particle diameter is more than 10 micron, it is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties; that is the values of 10.02 or 10.1 micron are more than 10 micron, as required by instant claims, but still is very close to the value of 10 micron as claimed by US 12,319,805. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
2) Instant claim 6 is a product-by-process claim. Case law holds that “even 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 the 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” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
3) Since the hollow particles of U.S. Patent No. 12,319,805 in view of Hirata’594 are produced from the same combination of di-functional and tri-functional monomers used in amount of about 100%wt, having average particle diameter of 10 micron, shell thickness of 1 micron and void ratio as claimed in instant invention, therefore, the hollow particles of U.S. Patent No. 12,319,805 in view of Hirata’594 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including percentage of particles having dent with a size of as high as 50%, and the number of the hollow particles having shell defect of 5 or less per 100 of the observed particles, will be the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Obviousness Double Patenting Rejection II
30. Claims 1-7 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,215,178 in view of Hirata et al (WO2020/066705, based on US 12,139,594, Hirata’594).
31. The rejection is adequately set forth on pages 21-25 of an Office action mailed on March 26, 2026 and is incorporated here by reference.
Since no Terminal Disclaimer has been filed, the rejection is maintained.
32. With respect to the amended claim 1 and additional claims 6-7,
1) US 12,215,178 claims hollow particles having a volume average particle diameter is 1.0 µm or more. Hirata’594 discloses hollow resin particles having particle size of 1-20 micron (col. 6, lines 30-36).
2) Instant claim 6 is a product-by-process claim. Case law holds that “even 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 the 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” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
3) Since the hollow particles of U.S. Patent No. US 12,215,178 in view of Hirata’594 are produced from the same combination of di-functional and tri-functional monomers used in amount of about 100%wt, having average particle diameter of up to 20 micron, shell thickness of 1 micron and void ratio as claimed in instant invention, therefore, the hollow particles of U.S. Patent No. US 12,215,178 in view of Hirata’594 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including percentage of particles having dent with a size of as high as 50%, and the number of the hollow particles having shell defect of 5 or less per 100 of the observed particles, will be the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Response to Arguments
33. Applicant's arguments filed on June 8, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
34. In addition, it is noted that Hirata et al (WO2020/066705, based on US 12,139,594, Hirata’594) is a secondary reference, which was applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
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.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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