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 .
Claim Rejections - 35 USC § 112
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.
Claims 1 – 13 are 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 because:
The metes and bounds of Claim 1 are not clearly defined. Claim 1 sets forth the hollow particles must satisfy a condition 1 but do not set forth the units for the aerated bulk density (d2) used to calculate condition 1. Additionally, the values of 58 and 78 in the equation described as formula (I) would also appear to require units, as aerated bulk density is not a dimensionless quantity. For the purposes of examination, the aerated bulk density used to calculated condition 1 and resultant formula (I) values will be interpreted to be in units of g/cm3. However, applicant is advised that it is unclear if the instant specification provides support for this interpretation.
As Claims 2 – 13 depend from Claim 1 and do not remedy the deficiencies thereof, they are also rejected under this statute.
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3 – 7, 10, 12, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0194415 to Tayagaki et al. (hereinafter Tayagaki).
Regarding Claim 1. Tayagaki teaches hollow resin particles comprising a thermoplastic resin shell and a hollow part surrounded by the shell [0052]. The hollow particles have a true specific gravity of 0.01 to 0.10 [0104]. In Example 16, the hollow resin particles prepared have a true specific gravity of 0.065 (Table 6).
Tayagaki is silent with respect to the hollow particles meeting instantly claimed condition 1. However, the hollow resin particles of Example 16 are prepared by substantially the same method as Inventive Example 1 of the instant specification. Specifically, the particles in both examples are prepared by feeding expandable microspheres at a rate of 0.5 kg/min, a flow rate of the hot airflow at 8.0 m3/min, and the temperature of the hot airflow at 270°C (see [0253] – [0254] of Tayagaki and [0176] of the PG-PUB of the instant application). In the instant application, the inventive examples differ from the comparative examples in that all of the instant claimed processing conditions are provided, except that the temperature of the comparative examples is 300°C and condition 1 is consequently not satisfied. On the other hand, the hollow particles of Example 16 of Tayagaki have a specific gravity in the instantly claimed range and are prepared by substantially the same process, including an identical hot airflow temperature to Example 1 (270°C) which is shown in the instant application to provide hollow particles which satisfy instantly claimed condition 1. It is consequently the Office’s position that it would be reasonably expected that the hollow particles of Tayagaki satisfy claimed condition 1.
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 3. Tayagaki teaches the hollow particles of Claim 1 have a mean particle size of 64.1 microns (see Example 16 in Table 6).
Regarding Claims 4 and 10. Tayagaki teaches the hollow particles of Claims 1 and 3 are prepared from heat expandable microspheres 18 (Table 6). Heat expandable microspheres 18 contain a thermoplastic resin which is the polymer of a polymerizable component comprising acrylonitrile (Table 3), i.e. a nitrile monomer.
Regarding Claims 5, 12, and 13. Tayagaki teaches the hollow particles of Claim 1, 3, and 4 but is silent regarding the ability of the hollow particles to satisfy instantly claimed condition 2. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Tayagaki teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. hollow particles satisfying instantly claimed condition 2, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 6. Tayagaki teaches a composition formed by combining the hollow particles of Claim 1 with a base component/material [0029].
Regarding Claim 7. Tayagaki teaches a formed product manufactured by forming the composition according to Claim 6 [0029].
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.
Claims 2, 8, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0194415 to Tayagaki et al. (hereinafter Tayagaki), as applied to Claim 1 above.
Regarding Claim 2. Tayagaki teaches the hollow particles of Claim 1 but is silent regarding the ash content thereof in Example 16. However, in the general disclosure, Tayagaki teaches the ash content of the hollow particles of the present invention is preferably 2.5 weight percent or lower [0048]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the hollow particles of Example 16 of Tayagaki with an ash content of 2.5 weight percent or less. The motivation would have been that the Tayagaki teaches hollow particles having an ash content of 2.5 weight percent or lower form an aggregate loosely cohered and isolable by weak external force to attain better effect of the disclosed invention [0048].
Regarding Claim 8. Tayagaki teaches the hollow particles of Claim 2 have a mean particle size of 64.1 microns (see Example 16 in Table 6).
Regarding Claim 9. Tayagaki teaches the hollow particles of Claim 2 are prepared from heat expandable microspheres 18 (Table 6). Heat expandable microspheres 18 contain a thermoplastic resin which is the polymer of a polymerizable component comprising acrylonitrile (Table 3), i.e. a nitrile monomer.
Regarding Claim 11. Tayagaki teaches the hollow particles of Claim 12 but is silent regarding the ability of the hollow particles to satisfy instantly claimed condition 2. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Tayagaki, when modified in the manner proposed, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. hollow particles satisfying instantly claimed condition 2, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. US 10,941,267 also pertains to hollow particles obtained from heat-expandable microspheres comprising thermoplastic resin shells based on nitrile monomers.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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.
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.
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
Prosecution Insights