RESPONSE TO AMENDMENT
WITHDRAWN REJECTIONS
The 35 U.S.C. §103 rejections of the claims made of record in the office action mailed on 01/13/2026 have been withdrawn due to Applicant’s amendment in the response filed 04/10/2026.
Claim Objections
The status identifier of claim 6 filed on 04/10/2026 is improper. 37 CFR §1.121(c) states that any claim that is currently subject to examination and not withdrawn should have the status identifier (Original) or (Previously Presented). Claim 16 in the claim listing filed on 04/10/2026 has the status identifier (Withdrawn) but is currently under examination as indicated in the previous office action and should therefore have the status identifier (Previously Presented).
Election/Restrictions
New claims 27 and 29 depend on withdrawn claim 13 and are therefore also withdrawn from consideration, as being directed to a non-elected invention in the response to restriction requirement filed on 11/26/2025.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1, 6 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Okubo et al. (JP 2002-050803) in view of Isono et al. (JP2008-107792).
Citations to Okuba and Isono et al. below refer to the machine translation documents included with this office action.
Regarding claim 1, Okuba et al. discloses hollow polymeric particles comprising a resin shell surrounding a hollow portion. (Abstract, Fig. 1). The hollow particles are disclosed to have a porosity (i.e. void ratio) of 50-80%. (page 4, middle of the page). The resin shell polymer includes 10-100% of a crosslinkable monomer and 0-90% of a monofunctional monomer. (page 8, middle of page). 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).
The crosslinkable monomer includes monomers having two or more polymerizable reactive groups including vinyl or diacrylates (i.e. ethylenically unsaturated bonds) such as divinyl biphenyl, divinyl napthalane, triallyl cyanaurate and ethylene glycol dimethacrylate (page 6, middle of the page).
Okuba et al. does not disclose that the particles include a reactive group of hydroxyl or amino group on the surface of the hollow polymeric particles wherein a hydroxyl or amine value is 0.20 mmol/g or more.
Isono et al. teaches an antireflection laminate including hollow and solid particles wherein the outer shell layer of the hollow layer is modified with cross-linking forming groups. (Abstract). Isono et al. teaches that the hollow particles include organic or inorganic particle shells. (page 8). Isono et al. teaches that cross-linking forming groups may include hydroxyl groups (page 15, 3rd paragraph) which is used to form covalent bonds between the hollow and solid particles and the radiation curable resin material (page 6, 2nd paragraph). The resulting composite has improved properties including scratch resistance and smoother surface. (page 4, first full paragraph). Isono et al. teaches that the cross-linking group is present on the surface of the hollow and solid particles by treating with a silane coupling agent in an amount of 1-30% by weight. (pages 12, Section 1.4 to page 14, 3rd full paragraph).
It would have been obvious to one of ordinary skill in the art to form hydroxyl reactive groups on the surface of the hollow particles disclosed in Okuba et al. in view of the teachings of Isono et al.
One of ordinary skill in the art would have found it obvious to include hydroxyl reactive groups on the surface of the hollow particles of Okuba et al. in view of the teachings of Isono et al. regarding the ability to form harder and smoother composites by crosslinking the hollow particles to other solid particles or resin material via the hydroxyl groups present on the surface.
While the combination of Okuba in view of Isono et al. does not disclose the specific hydroxyl value of the hollow particles, Isono et al. teaches treating the hollow particles with an amount of hydroxyl group modifier compound in an amount of 1-30% by weight, as discussed above. Furthermore, the reference teaches that these hydroxyl groups are responsible for the crosslinks between the matrix resin of the laminate and other hollow or solid particles, thereby implying that the amount thereof relative to the hollow particles would be result effective in forming a sufficient quantity of crosslinks to achieve the desired improved properties discussed in Isono et al. Since the instant specification is silent to unexpected results, the specific hydroxyl value is not considered to confer patentability to the claims. As the hydroxyl value is a variable that can be modified, among others, by adjusting the amount of surface modifier on, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II). Thus, one of ordinary skill in the art would have optimized the hydroxyl value of the hollow resin particles formed by the combination of Okuba in view of Isono et al.
Regarding claim 6, the resin shell polymer disclosed in Okuba et al. includes 10-100% of a crosslinkable monomer and 0-90% of a monofunctional monomer. (page 8, middle of page). The monofunctional monomers include ethylenically unsaturated group containing monomers such as styrene or acrylic esters (page 8), thereby meeting the limitations of the “non-crosslinkable monomer” as claimed.
Regarding claims 14 and 16, Isono et al. teaches that cross-linking forming groups may include hydroxyl groups (page 15, 3rd paragraph) which is used to form covalent bonds between the hollow and solid particles and the radiation curable resin material (page 6, 2nd paragraph).
Regarding claims 15 and 17, Isono et al. teaches that the resin material that can react with the hydroxyl group include epoxy-based resin or urethane resins (i.e. a resin including a polyol and isocyanate component) (page 15, last full paragraph – page 16, first full paragraph).
Claims 26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Okubo et al. (JP 2002-050803) in view of Isono et al. (JP2008-107792), further in view of Mizuguchi et al. (EP 0416616).
Okubo in view of Isono et al. is relied upon as described in the rejection of claim 1, above.
Regarding claim 26, Okubo et al. does not disclose that the crosslinkable monomer unit is selected from monomer units from the list in claim 26.
Mizuguchi et al. teaches hollow particles made of a resin material wherein the particles have improved solvent resistance and mechanical stability. (Abstract). Mizuguchi et al. teaches that the resin of the shell includes monomers having two ethylenically unsaturated bonds, matching the monomers disclosed in Okubo et al. for the crosslinkable monomers. (page 2, line 44 – page 3, line 2). The monomers include several monomers recited in Okubo et al. including ethyleneglycol dimethacrylate, diallyl phthalate and divinylbenzene as well as additional monomers including glycerol diacrylate. (page 2, line 52).
It would have been obvious to one of ordinary skill in the art to use glycerol diacrylate as the crosslinkable monomer in Okubo et al. in view of the teachings of Mizuguchi et al.
Since Mizuguchi et al. discloses that glycerol acrylate is equally as viable as a monomer having two ethylenically unsaturated groups for forming the shell of a hollow resin particle as ethyleneglycol dimethacrylate, diallyl phthalate and divinylbenzene as disclosed in both references. Therefore, in light of the disclosure in Mizuguchi et al. regarding the reasonable expectation of success in substituting the monomers with one another to arrive at a hollow resin particle, it would have been obvious to one of ordinary skill in the art to use glycerol methacrylate since the selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Regarding claim 28, Mizuguchi et al. further discloses that suitable monomers having two ethylenically unsaturated groups for forming the shell of a hollow resin particle include monomers having hydroxy groups (such as 1,4 butanediol diacrylate, 1,6-hexanediol diacrylate or pentaerythritol acrylate species) in conjunction with non-hydroxy group containing monomers. (page 2, lines 44-55). Okuba et al. teaches that the crosslinkable monomer includes monomers having two or more polymerizable reactive groups including vinyl or diacrylates (i.e. ethylenically unsaturated bonds) such as divinyl biphenyl, divinyl napthalane, triallyl cyanaurate and ethylene glycol dimethacrylate (page 6, middle of the page) which are monomers which do not include hydroxy groups and that the monomers for forming the shell can be used in combination with one another.
It would have been obvious to one of ordinary skill in the art to use a mixture of monomers having two ethylenically unsaturated groups which include both hydroxy and non- hydroxy groups in view of the combination of Okuba in view of Mizuguchi et al.
One of ordinary skill in the art would have a reasonable expectation of success of mixing monomers, including those having hydroxyl and those absent hydroxyl groups, in view of the explicit teaching in Okubo and Mizuguchi et al. that the monomers would be suitable for forming a shell material. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07. Furthermore, one of ordinary skill in the art would have a reasonable expectation that using combinations of monomers would result in different physical/mechanical properties for the polymer particles and the resin material by altering the functionalities present in the polymer chain.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 04/10/2026 regarding the prior art rejection made of record in the office action mailed on 01/13/2026 have been considered but are moot due to the new grounds of rejection.
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 ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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, Alicia Chevalier can be reached at 5712721490. 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.
/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 05/12/2026
Prosecution Insights