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 without traverse of claims 1, 6 and 14-17 in the reply filed on 11/26/2025 is acknowledged.
Claims 2-3, 8-9,13, 20 and 21-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention there being no allowable generic or linking claim.
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 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Maenaka et al. (JP 2006-089648) (cited in the IDS filed on 03/04/2024).
Citations to Maenaka et al. refer to the machine translation document provided by applicant in the submission on 03/04/2024.
Regarding claim 1, Maenaka et al. discloses hollow resin fine particle including a hollow portion and a resin shell. (Abstract and par. [0011]). The hollow resin particle has a porosity (i.e. void ratio) of 50% or more (par. [0043]). In example 1, 30 parts of glycidyl methacrylate monomer was used to form a resin shell which, therefore the resin shell would have 100 parts by mass of a crosslinkable monomer unit, overlapping with the presently claimed range. 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).
Maenaka et al. further discloses that the monomer shell polymer includes reactive, crosslinkable moieties such as hydroxyl groups or amine groups which are provided as a result of the selection of functional monomers. (par. [0015]). Maenaka et al. discloses that the functional monomer content should be at least 5% by weight to ensure sufficient porosity of the hollow particles. (par. [0021]). Maenaka et al. further discloses that the content of the reactive monomer affects the compression strength and spherical shape of the hollow resin particles. (par. [0023]). The reactive groups on the surface are intended to react with the crosslinking agent downstream (see Steps 4-5, par. [0034]-[0040]) and therefore one of ordinary skill in the art would have found it obvious to include a sufficiently high reactive, crosslinkable group content on the surface (i.e. hydroxyl/ amine value) to ensure sufficient crosslinking of the resin shell in Steps 4-5 to obtain the desired improved properties. In view of the disclosure in Maenaka et al. regarding the result effective nature of the reactive monomers, which are responsible for the presence of hydroxyl or amine groups on the shell surface, it would have been obvious to one of ordinary skill in the art to optimize the hydroxyl and amine value of surface of the resin shell in order to obtain the optimal shape, compression strength and porosity of the hollow resin particles. "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).
Regarding claim 14, Maenaka et al. discloses mixing the hollow resin particles with a binder material including acrylate, epoxy, vinyl, alkoxy and ester groups (see par. [0046]-[0049]) which are moieties which would be reactive (i.e. capable of reacting) with hydroxyl or amine groups present on the surface of the resin particles.
Regarding claim 15, Maenaka et al. discloses that the binder material may be made from glycidyl methacrylate (i.e. an epoxy containing resin material) (par. [0048]) which in combination with the reactive hydroxyl/amine groups, would meet the limitations of claim 15.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Furuta et al. (WO 2022/181387) in view of Soane et al. (WO 00/37547).
Maenaka et al. is relied upon as described in the rejection of claim 1, above.
Regarding claim 16, Maenaka et al. does not disclose that the shell of the hollow particle is crosslinked to a solidified resin product.
Soane et al. teaches thermo-expandable microspheres having a polymeric wall material which include functional groups present on the surface of the microspheres that crosslink with the matrix in which they are incorporated and that this is governed by careful selection of the functional group on the microspheres surface and the matrix binder reactive groups. (Abstract and page 7, lines 1-12). Soana et al. teaches that this permits formation of a foamed matrix material including the microspheres that is economical for mass production. (page 7, lines 1-12).
It would have been obvious to one of ordinary skill in the art to select functional groups for the shell of the hollow particle and binder material having reactive sites in order to crosslink with the groups on the surface of the microsphere in Maenaka et al., as taught by Soane et al.
One of ordinary skill in the art would have found it obvious to crosslink the hollow resin particles of Maenaka et al. with a matrix resin material in order to form a foamed article including the resin particles. Furthermore, one of ordinary skill in the art would recognize that crosslinking resin particles with the matrix material would result in a composition where the hollow particles are better incorporated in the matrix and less likely to separate from the matrix due to the covalent bonds holding them in place.
Regarding claim 17, Soana et al. discloses that the reactive functional group on the surface of the microsphere may include hydroxy or amino groups and that the reactive functional group of the matrix material may be epoxy. (page 18, line 29 to page 19, line 13, page 24, lines 10-23).
Claims 1 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Furuta et al. (WO 2022/181387).
Regarding claim 1, Furuta et al. discloses hollow resin particles and a method of making thereof, wherein the resin particles comprise a silicone resin made of 0.1-20 mol% of amino group containing structural units and 80-99.9 mol% structural units lacking amino groups. (Abstract). The units lacking amino groups include groups including three alkoxy groups (trimethoxy, triethoxy and tripropoxy silanes) and would therefore be crosslinkable (page 3, 3rd paragraph) and therefore the disclosure of 80-99.9 mol% would overlap with the claimed range of 60 to 100 parts by mass of all monomer units. Furuta et al. discloses that the volume ratio of the void space is in the range of 10-70% (page 4, 3rd full paragraph), which overlaps with the range of 50% or more for the void ratio limitation presently claimed. Furuta et al. further discloses a residual Si-OH content on the hollow particles in an amount of 0.35 mmol/g or less, overlapping with the claimed range of 0.20 mmol/g or more. (page 16, 9th paragraph).
Regarding claims 14-15, Furuta et al. teaches resin matrices including reactive functional groups such as epoxy resins which would be reactive with the hydroxyl groups on the surface of the resin particles. (page 9, 2nd full paragraph)
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Furuta et al. (WO 2022/181387) in view of Soane et al. (WO 00/37547).
Furuta et al. is relied upon as described in the rejection of claim 1, above.
Regarding claim 16, Furuta et al. does not disclose that the shell of the hollow particle is crosslinked to a solidified resin product.
Soane et al. teaches thermo-expandable microspheres having a polymeric wall material which include functional groups present on the surface of the microspheres that crosslink with the matrix in which they are incorporated and that this is governed by careful selection of the functional group on the microspheres surface and the matrix binder reactive groups. (Abstract and page 7, lines 1-12). Soana et al. teaches that this permits formation of a foamed matrix material including the microspheres that is economical for mass production. (page 7, lines 1-12).
It would have been obvious to one of ordinary skill in the art to select functional groups for the shell of the hollow particle and binder material having reactive sites in order to crosslink with the groups on the surface of the microsphere in Furuta et al., as taught by Soane et al.
One of ordinary skill in the art would have found it obvious to crosslink the hollow resin particles of Furuta et al. with a matrix resin material in order to form a foamed article including the resin particles. Furthermore, one of ordinary skill in the art would recognize that crosslinking resin particles with the matrix material would result in a composition where the hollow particles are better incorporated in the matrix and less likely to separate from the matrix due to the covalent bonds holding them in place.
Regarding claim 17, Soana et al. discloses that the reactive functional group on the surface of the microsphere may include hydroxy or amino groups and that the reactive functional group of the matrix material may be epoxy. (page 18, line 29 to page 19, line 13, page 24, lines 10-23).
Claims 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Hirata et al. (WO 2020/066623) (cited in the IDS filed on 03/04/2024).
Regarding claim 1, Hirata et al. discloses hollow particles having a resin shell including a porosity of 55-95% and 25-100 parts by mass of crosslinkable monomer units per 100 parts by mass of resin material. (Abstract). Hirata et al. teaches that the crosslinkable monomer unit may include materials having two or more functional groups including hydroxyl or carboxyl groups. (page 4, last full paragraph). In view of the fact that the crosslinkable monomer disclosed in Hirata et al is used in the same amount as presently claimed and contains two or more hydroxyl functional groups, the overall hydroxyl value of the resin shell would be in the same range as presently claimed.
Regarding claim 6, Hirata et al. discloses including 25-100 parts by mass of crosslinkable monomer per 100 parts by mass of total crosslinkable and non-crosslinkable monomer. (page 14, 1st paragraph). The content of non-crosslinkable monomer would therefore lie in the range of 0-75 parts by mass, overlapping with the presently claimed range.
Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hirata et al. (WO 2020/066623) in view of Soane et al. (WO 00/37547).
Hirata et al. is relied upon as described in the rejection of claim 1, above.
Regarding claim 14 and 16, Hirata et al. does not disclose a resin containing a functional group which is reactive with the hollow resin particles.
Soane et al. teaches thermo-expandable microspheres having a polymeric wall material which include functional groups present on the surface of the microspheres that crosslink with the matrix in which they are incorporated and that this is governed by careful selection of the functional group on the microspheres surface and the matrix binder reactive groups. (Abstract and page 7, lines 1-12). Soana et al. teaches that this permits formation of a foamed matrix material including the microspheres that is economical for mass production. (page 7, lines 1-12).
It would have been obvious to one of ordinary skill in the art to select functional groups for the shell of the hollow particle and binder material having reactive sites in order to crosslink with the groups on the surface of the microsphere in Hirata et al., as taught by Soane et al.
One of ordinary skill in the art would have found it obvious to crosslink the hollow resin particles of Hirata et al. with a matrix resin material in order to form a foamed article including the resin particles. Furthermore, one of ordinary skill in the art would recognize that crosslinking resin particles with the matrix material would result in a composition where the hollow particles are better incorporated in the matrix and less likely to separate from the matrix due to the covalent bonds holding them in place.
Regarding claims 15 and 17, Soana et al. discloses that the reactive functional group on the surface of the microsphere may include hydroxy or amino groups and that the reactive functional group of the matrix material may be epoxy. (page 18, line 29 to page 19, line 13, page 24, lines 10-23).
Conclusion
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 01/08/2026