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 August 10, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to include limitations of
the (meth)acrylic-based resin contains a polymer derived from a (meth)acrylic- based reactive monomer and a polymer derived from a heterocyclic amine compound; wherein a content of the heterocyclic amine compound is 1 part by mass to 45 parts by mass in relation to 100 parts by mass of the total of said (meth)acrylic-based reactive monomer.
These limitations in their combination were not previously presented. In light of the amendment, the previous rejections cited below are maintained but suitably framed to better address the current amendment. 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 1-2, 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ouchi et al (WO 2019/177006).
It is noted that while the rejection is made over WO 2019/177006 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US2021/0001300 is relied upon. All citations to paragraph numbers, etc., below refer to US 2021/0001300.
4. Ouchi et al discloses hollow particles comprising a shell and an average particle diameter of 10-150 nm (Abstract), the hollow ratio of 35%volume or more, or 35-80% ([0009], [0036]), wherein the shell comprises a cross-linked copolymer of an epoxy- or oxetane-reactive monomer and at least one silyl group-containing monomer (as to instant claim 13), and further a water-soluble amine compound as a cross-linker ([0011]-[0012]),
Wherein the epoxy group- or oxetane group-containing reactive monomer is a glycidyl (meth)acrylate or (3-ethyl-oxetan-3-yl) methyl (meth)acrylate ([0013]);
the silyl group-containing reactive monomers includes 3-methacryloxypropyledimethoxysilane ([0015]), and
the amine compound includes N-aminoethylpiperazine ([0014], as to instant claim 5).
5. The mass ratio of the compound derived from the epoxy-group reactive monomer to the amine compound is 1:5 to 0.1 ([0054], as to instant claim 1), i.e the amine compound maybe used in amount of as low as 10pbw per 100 pbw of the epoxy-group reactive monomer, and the mass ratio of the components derived from the epoxy group-containing reactive monomer and the component derived from the silyl group-containing reactive monomer is 1:1 to 1:0.01 ([0055], as to instant claim 13), i.e. the silyl-containing reactive monomer can be use in amount of as low as 1 pbw to 50 pbw.
6. The specific example 1 shows the copolymer produced from polymerization of 70.4 pbw of glycidyl methacrylate with 9.6 pbw of 3-methacryloxypropyltriethoxysilane ([0181]), i.e. 88%wt of the glycidyl methacrylate-based monomer and 12%wt of 3-methacryloxypropyltriethoxysilane-based monomer (as to instant claim 13).
7. All inventive examples of Ouchi et al show the hollow particles having an average particle diameter of 102-107 nm, hollow ratio of 36-44% and are characterized as spherical (Table 1).
8. Based on the teachings of Ouchi et al, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of glycidyl methacrylate, 3-methacryloxypropyltriethoxysilane and the N-aminoethylpiperazine as the amine cross-linker, in the relative amounts as taught by Ouchi et al, to form the cross-linked polymeric shell of the hollow particles, including the use of 88%wt of the glycidyl methacrylate-based monomer and 12%wt of 3-methacryloxypropyltriethoxysilane-based monomer and further the N-aminoethylpiperazine cross-linker in amount so that the relative ratio of the glycyl methacrylate-based component to the N-aminoethylpiperazine-based component is 1:0.1 ([0054]), i.e. in amount of 8.8%wt as well, since it would be 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
9. All ranges in the hollow particles of Ouchi et al are overlapping with the corresponding ranges of those as claimed in instant invention. 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).
10. Since the hollow particles of Ouchi et al comprise the shell produced from the same monomer composition as claimed in instant invention, i.e. a combination of glycidyl methacrylate, 3-methacryloxypropyltriethoxysilane and the N-aminoethylpiperazine (which are the same components used in examples of instant specification, see Table 1 of instant specification) and are specified as being spherical ([0183], Table 1 of Ouchi et al), therefore, said spherical particles of Ouchi et al would be reasonably expected to have sphericity of at least 0.9, and further said hollow particles would be reasonably expected to have a 3% thermal decomposition temperature as that claimed in instant invention as well 9as to instant claim 2). 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.
11. Though Ouchi et al does not exemplify the N-aminoethylpiperazine as the amine cross-linker, 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).
12. As to instant claim 6, the shell comprises silyl-groups containing units ([0070]), specifically exemplified 3-methacryloxypropyltriethoxysilane (Table 1).
It is noted that instant specification defines “inorganic component” of instant claim 6 as the monomer containing a silyl group (see [0033] of instant specification), as reproduced below:
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13. As to instant claims 7-12, the hollow particles are used in a coating agent as a dispersion, a heat-insulating film, an antireflection film, a light extraction film, a light extraction film-attached substrate ([0094]-[0095], [0103], [0113]-[0117]).
14. Claims 1-2, 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Katayama et al (US 2017/0114243) alone, or alternatively in view of Yoneda et al (US 2009/0191406).
15. Katayama et al discloses hollow particles having a shell, wherein the hollow particles have an average particle diameter of 10-200 nm, or 10-150 nm ([0036]), and the shell comprises at least one layer of a vinyl-based resin (Abstract, [0017]-[0018]).
The particles further comprise a hollow rate of 30-70% ([0056], as to instant claim 1) and a 5% degradation initiation temperature of 250-350⁰C ([0054]).
16. The shell comprises a polymer produced by polymerization of epoxy or oxetane group-containing monomer, specifically (meth) acryloyl containing resin ([0063], [0067]), more specifically by polymerization of glycidyl (meth)acrylate and 3-methacryloxypropyltriethoxysilane ([0069]-[0070], Table 1) further in combination with a heterocyclic amine based cross-linking agent, including N-aminoethylpiperazine or imidazole ([0085], [0088]).
17. Thus, based on the teachings of Katayama et al, it would have been obvious to a one of ordinary skill in the art to choose and use glycidyl methacrylate and 3-methacryloxypropyltriethoxysilane as the vinyl monomers and N-aminoethylpiperazine or imidazole as the crosslinking agents to prepare the shell of the hollow particles of Katayama et al as well, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
18. Though Katayama et al does not exemplify the N-aminoethylpiperazine as the amine cross-linker, 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).
19. The mass ratio of the components derived from the epoxy group-containing reactive monomer and the component derived from the silyl group-containing reactive monomer is 1:1 to 1:0.01 ([0082], as to instant claim 13).
20. The specific example 5A shows the copolymer produced from polymerization of 35 pbw of glycidyl methacrylate with 5 pbw of 3-methacryloxypropyltriethoxysilane and 5 pbw of methyl methacrylate (Table 1), i.e. 88%wt of the glycidyl methacrylate-based monomer (as to instant claim 13). The same example 5A shows the use of the amine-based crosslinker in amount of 20 pbw per 45 pbw of the (meth)acrylic-based resin, i.e. 44 pbw per 100 pbw of the (meth)acrylic-based resin (as to instant claim 1).
21. All ranges in the hollow particles of Katayama et al are overlapping with the corresponding ranges of those as claimed in instant invention. 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).
22. Given the hollow particles of Katayama et al are produced by polymerization of glycidyl methacrylate, 3-methacryloxypropyltriethoxysilane in the presence of N-aminoethylpiperazine as the cross-linking agent, which are the same components as claimed and exemplified in instant invention (see Example 3 of Table 1 of instant specification), having the particle diameter and hollow rate that are the same as those claimed in instant invention, further having 5% degradation initiation temperature of as high as 350⁰C, therefore, the hollow particles of Katayama et al will intrinsically and necessarily have, or would be reasonably expected to have the properties, including sphericity and 3% thermal decomposition having the values as claimed in instant invention, i.e. sphericity of at least 0.9, and 3% degradation initiation temperature of at least 245⁰C 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.
23. As to instant claim 6, the shell comprises silyl-groups containing units ([0070]), specifically exemplified 3-methacryloxypropyltriethoxysilane (Table 1).
It is noted that instant specification defines “inorganic component” of instant claim 6 as the monomer containing a silyl group (see [0033] of instant specification), as reproduced below:
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24. As to instant claims 7-12, Katayama et al further disclose a coating agent, an antireflection film, a light extraction film, a dispersion and a heat insulating film comprising the hollow particles ([0019]-[0023]). Since said films are essentially the same as those disclosed in instant invention, i.e. comprise the same hollow particles as claimed in instant invention, therefore, said films will intrinsically and necessarily have a relatively low dielectric constant as well, and thereby it would have been obvious to a one of ordinary skill in the art to use said films as the low dielectric constant film, given such is desired. 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).
25. In the alternative, though Katayama et al does not explicitly recite the sphericity of the hollow particles,
Yoneda et al discloses a coating composition for antireflective film having high antireflective performance and high film strength (Abstract), wherein Yoneda et al teaches said coating composition comprising spherical hollow particles made of acrylic resin or epoxy acrylic resin ([0038]), having particle size of 10-100 nm ([0040]), wherein Yoneda et al explicitly exemplifies the use of spherical hollow particles having aspect ratio, i.e. value obtained by dividing the length direction by direction perpendicular to the length direction ([0047]), equal to 1.0 ([0096], [0098]), and wherein the use of said spherical hollow particles provides antireflective films with low reflectivity, high antireflective effect and high strength ([0135]).
26. Since both Yoneda et al and Katayama et al are related to spherical hollow nanoparticles used in antireflective films, and thereby belong to the same field of endeavor, wherein Yoneda et al teaches said spherical hollow particles having aspect ratio/sphericity of 1.0 producing antireflective films with low reflectivity and high antireflective effect and high strength, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Katayama et al and Yoneda et al, and to produce, or obvious to try to produce and use the spherical hollow particles of Katayama et al having aspect ratio/sphericity of 1.0 as well, so to ensure the antireflective films of Katayama et al are having low reflectivity, high antireflective effect and high strength, as well. 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). 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
Response to Arguments
26. Applicant's arguments filed on August 10, 2026 have been fully considered but they are moot in light of the new grounds of rejections and discussion set forth above.
27. In addition, it is noted that:
1) The rejection of claims 1-2, 5-13 under 35 U.S.C. 103 as being unpatentable over Katayama et al (US 2017/0114243) alone, or alternatively in view of Yoneda et al (US 2009/0191406) is based on combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
2) With respect to Applicant’s arguments regarding unexpected results of instant invention, as shown by examples of instant specification, it is noted that:
instant specification presents very three very specific inventive examples 1-3, all based on the use of glycidyl methacrylate, 3-methacryloxypropyltriethoxy silane and piperazine, N-methylpiperazine and N-aminoethylpiperazine, wherein said piperazine, N-methylpiperazine and N-aminoethylpiperazine are used in a specific amounts of either 25.5 pbw or 20.7 pbw per 100 pbw of (meth)acrylic-based resin.
Instant claims are significantly broader than the presented three inventive examples, wherein instant claim 1 is silent with respect to the monomers constituting the (meth)acrylic-based resin and is silent with respect to the piperazine, N-methylpiperazine or N-aminoethylpiperazine being used as the cross-linker; the claimed range for the amount of the heterocyclic amine compound is 1-45 pbw, which is significantly broader than the amounts of 25.5 pbw or 20.7 pbw as presented in the inventive examples. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
Further, there is no evidence that any heterocyclic amine other than piperazine and its derivatives will give the hollow particles with the same properties as claimed in instant invention.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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