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 .
REQUIREMENT FOR UNITY OF INVENTION
2. As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-6, drawn to heat-expandable microspheres.
Group II claim(s) 7-8, drawn to hollow particles.
Group III, claims(s) 9-11, drawn to a composition comprising heat-expandable microspheres.
Group IV, claim(s) 12-15, drawn to a composition comprising hollow particles.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
They lack unity of invention because even though the inventions of these groups require the technical feature of:
heat-expandable microspheres comprising a thermoplastic resin shell and a blowing agent encapsulated therein and vaporizable by heating; wherein the thermoplastic resin is a polymer of a polymerizable component containing a nitrile monomer; wherein the nitrile monomer contains acrylonitrile and methacrylonitrile; wherein the amount of the methacrylonitrile ranges from 40 parts by weight to 80 parts by weight to 100 parts by weight of the acrylonitrile; and wherein the blowing agent contains a blowing agent (a) having a specific heat ranging from 0.8 J/g.K to 2.0 J/g.K,
this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Masuda et al (US 2007/0154711) and Tayagaki et al (US 2019/0194415).
3. Masuda et al discloses thermally expandable microspheres comprising a shell of thermoplastic resin and a blowing agent encapsulated therein (Abstract),
wherein the blowing agent contains C2-10 fluorine compound which has ether structure; the thermoplastic resin is produced by polymerizing a monomer mixture comprising 80-95%wt of nitrile monomer ([0070]).
The C2-10 fluorine compound which has ether structure include the following compounds ([0064]):
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It is noted that the hydrofluoroethers disclosed by Masuda et al and shown above are the same hydrofluoroethers disclosed and exemplified in instant invention (see [0023], p. 12 of instant specification). It is further noted that the blowing agent having the formula C3H7OCH3 is exemplified in instant specification and is specified as having a specific heat of 1.30 J/g.K ([0090] of instant specification):
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Specific example C1 of Masuda et al shows the use of the monomer mixture comprising of a major amount of acrylonitrile (180 g), 45 g of methacrylonitrile, 75 g of methacrylic acid, 1.2 g of trimethylolpropane trimethacrylate, and C3F7OCH3 as the blowing agent ([0234]). Since the hydrofluoroether used by Masuda et al and having the formula of C3F7OCH3 is the same hydrofluoroether exemplified in instant invention and specified as having a specific heat of 1.30 J/g.K, therefore, said hydrofluoroether used by Masuda et al will inherently have specific heat of 1.30 J/g.K, as well.“Products of identical chemical composition cannot have mutually exclusive properties” (See MPEP 2112.01).
Though Masuda et al discloses the monomer mixture comprising a combination of acrylonitrile and methacrylonitrile, with the relative amount of acrylonitrile being higher than the relative amount of methacrylonitrile, Masuda et al does not explicitly teach said weight ratio being 40-80 pbw of methacrylonitrile per 100 pbw of acrylonitrile.
However, Tayagaki et al discloses hollow spheres comprising a polymer shell and a blowing agent encapsulated therein ([0018]), wherein the thermoplastic resin is produced from polymerization of 70-99.8%wt of nitrile monomer ([0021]) comprising a combination of acrylonitrile and methacrylonitrile at a weight ratio of acrylonitrile to methacrylonitrile of 65:35 to 99:1 ([0023]), or 70:30 ([0072]), wherein the blowing agent comprises fluorine-containing compounds including hydrofluoroether ([0086]), and wherein Tayagaki et al explicitly teaches the use of acrylonitrile and methacrylonitrile provides heat-expandable microspheres having high density to prevent encapsulated blowing agent from escaping the shell, and said microspheres having soft, dense shell ([0071], [0072]).
Since both Tayagaki et al and Masuda et al are related to heat-expandable microspheres having a shell formed from a combination of acrylonitrile and methacrylonitrile, with the relative amount of acrylonitrile being higher than that of methacrylonitrile, further in combination with hydrofluoroethers as blowing agents, and thereby belong to the same field of endeavor, wherein Tayagaki et al teaches the use of the combination of acrylonitrile and methacrylonitrile at a weight ratio of acrylonitrile to methacrylonitrile of 65:35 or 70:30 to provide said heat-expandable microspheres having high density to prevent encapsulated blowing agent from escaping the shell, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Masuda et al and Tayagaki et al, and to choose and use, or obvious to try to use the combination of acrylonitrile and methacrylonitrile at a weight ratio of acrylonitrile to methacrylonitrile of 65:35 or 70:30 to form the microspheres of Masuda et al, so to provide the shell of said microspheres of Masuda et al with high density, preventing escaping the blowing agent, as taught by Tayagaki et al, and 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).
4. During a telephone conversation with Hui C. Wauters on June 22, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-6. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
5. Claims 1-6 rejected under 35 U.S.C. 103 being unpatentable over Masuda et al (US 2007/0154711) in view of Tayagaki et al (US 2019/0194415).
6. Masuda et al discloses thermally expandable microspheres comprising a shell of thermoplastic resin and a blowing agent encapsulated therein (Abstract),
wherein the blowing agent contains C2-10 fluorine compound which has ether structure; the thermoplastic resin is produced by polymerizing a monomer mixture comprising 80-95%wt of nitrile monomer ([0070], as to instant claim 4).
7. The C2-10 fluorine compound which has ether structure include the following compounds ([0064], as to instant claim 3):
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8. It is noted that the hydrofluoroethers disclosed by Masuda et al and shown above are the same hydrofluoroethers disclosed and exemplified in instant invention (see [0023], p. 12 of instant specification).
9. It is further noted that the blowing agent having the formula C3H7OCH3 is exemplified in instant specification and is specified as having a specific heat of 1.30 J/g.K ([0090] of instant specification):
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10. Specific example C1 of Masuda et al shows the use of the monomer mixture comprising of a major amount of acrylonitrile (180 g), 45 g of methacrylonitrile, 75 g of methacrylic acid, 1.2 g of trimethylolpropane trimethacrylate, and C3F7OCH3 as the blowing agent ([0234]).
The total amount of nitrile monomers is 225 g, which is 75%wt based on the total amount of the monomers (as to instant claim 4).
The methacrylonitrile is used in amount of 25 pbw based on 100 pbw of the acrylonitrile.
Since the hydrofluoroether used by Masuda et al and having the formula of C3F7OCH3 is the same hydrofluoroether exemplified in instant invention and specified as having a specific heat of 1.30 J/g.K, therefore, said hydrofluoroether used by Masuda et al will inherently have specific heat of 1.30 J/g.K, as well (as to instant claims 1-3).“Products of identical chemical composition cannot have mutually exclusive properties” (See MPEP 2112.01).
11. Though Masuda et al discloses the monomer mixture comprising a combination of acrylonitrile and methacrylonitrile, with the relative amount of acrylonitrile being higher than the relative amount of methacrylonitrile, Masuda et al does not explicitly teach said weight ratio being 40-80 pbw of methacrylonitrile per 100 pbw of acrylonitrile.
12. However, Tayagaki et al discloses hollow spheres/heat expandable spheres comprising a polymer shell and a blowing agent encapsulated therein ([0018]), wherein the thermoplastic resin is produced from polymerization of 70-99.8%wt of nitrile monomer ([0021]) comprising a combination of acrylonitrile and methacrylonitrile at a weight ratio of acrylonitrile to methacrylonitrile of 65:35 to 99:1 ([0023]), or 70:30 ([0072]), wherein the blowing agent comprises fluorine-containing compounds including hydrofluoroether ([0086]), and wherein Tayagaki et al explicitly teaches the use of such combination of acrylonitrile and methacrylonitrile provides heat-expandable microspheres having high density to prevent encapsulated blowing agent from escaping the shell, and said microspheres having soft, dense shell ([0071], [0072]).
13. Since both Tayagaki et al and Masuda et al are related to heat-expandable microspheres having a shell formed from a combination of acrylonitrile and methacrylonitrile, with the relative amount of acrylonitrile being higher than that of methacrylonitrile, further in combination with hydrofluoroethers as blowing agents, and thereby belong to the same field of endeavor, wherein Tayagaki et al teaches the use of the combination of acrylonitrile and methacrylonitrile at weight ratios of acrylonitrile to methacrylonitrile of 65:35 or 70:30 to provide said heat-expandable microspheres having high density to prevent encapsulated blowing agent from escaping the shell, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Masuda et al and Tayagaki et al, and to choose and use, or obvious to try to use the combination of acrylonitrile and methacrylonitrile at a weight ratio of the acrylonitrile to the methacrylonitrile of 65:35 or 70:30 to form the microspheres of Masuda et al, so to provide the shell of said microspheres of Masuda et al with high density, preventing escaping the blowing agent, as taught by Tayagaki et al, and 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). 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
14. Since the heat expandable microspheres of Masuda et al in view of Tayagaki et al are the same as those claimed in instant invention, i.e. produced from the same nitrile monomers as claimed in instant invention and comprising the same hydrofluoroether blowing agent as that claimed in instant invention, therefore, the heat expandable microspheres of Masuda et al in view of Tayagaki et al will intrinsically and necessarily have the properties, including the ratios A50/A10 and A90/A50, the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 5-6). 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.
15. Further, both Masuda et al and Tayagaki et al recite the coefficient of variation CV of particle size being 25% or less (see [0100] of Tayagaki et al and [0084] of Masuda et al).
Taking the example C1 of Masuda et al for calculations below:
the microspheres produced in the example C1 of Masuda et are having an average particle size of 25 micron and a coefficient of variation CV of 24% ([0235]).
Using the formula for CV provided in paragraph [0084] of Masuda et al:
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Wherein “s” is a standard deviation and “x” is an average particle size,
Standard deviation “s” in the Example C1 is 6 microns.
Since on the particle size distribution, 90% and 10% percentiles of particle size are about two standard deviations (or at little less than two standard deviations) each side from the average value of the particle size (50%), as shown below:
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therefore, for said example C1:
applying two standard deviations from the average particle size:
97.7% percentile would be reasonably expected to have particle size of about 37 micron, and the 2.3% percentile would be reasonably expected to have particle size of about 13 micron and then:
the ratio of 50% percentile to 2.3% percentile will be 25/13 = about 1.9 (as to instant claim 5);
the ratio of 97.7% percentile to 50% percentile will be 37/25 = about 1.48 (as to instant claim 6).
Applying one standard deviation:
84.1% percentile would be reasonably expected to have particle size of about 31 micron, and the 15.9% percentile would be reasonably expected to have particle size of about 19 micron and then:
the ratio of 50% percentile to 15.9% will be 25/19 = about 1.32 (as to instant claim 5);
the ratio of 84.1% percentile to 50% will be 31/25 = about 1.24 (as to instant claim 6).
Based on the above calculations, it would be reasonably expected that the ratios A50/A10 of instant claim 5 and A90/A50 of instant claim 6 for the particle size distribution of microspheres of Masuda et al in view of Tayagaki et al will be within the ranges as claimed in instant invention. 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).
16. Claims 1-6 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 8,486,531 in view of Tayagaki et al (US 2019/0194415). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
17. US patent 8,486,531 claims heat-expandable particles comprising a shell of a thermoplastic resin and a blowing agent, wherein the thermoplastic resin is produced by polymerizing a monomer mixture consisting essentially of nitrile monomer, and the blowing agent comprises a C2-10 fluorine compound having an ether structure.
18. Though US patent 8,486,531 does not explicitly teach the nitrile monomer being a combination of acrylonitrile and methacrylonitrile at a weight ratio of 40-80 pbw of methacrylonitrile per 100 pbw of acrylonitrile, and the fluorine compound with ether structure being hydrofluoroether,
Tayagaki et al discloses hollow spheres comprising a polymer shell and a blowing agent encapsulated therein ([0018]), wherein the thermoplastic resin is produced from polymerization of 70-99.8%wt of nitrile monomer ([0021]) comprising a combination of acrylonitrile and methacrylonitrile at a weight ratio of acrylonitrile to methacrylonitrile of 65:35 to 99:1 ([0023]), or 70:30 ([0072]), wherein the blowing agent comprises fluorine-containing compounds including hydrofluoroether ([0086]), and wherein Tayagaki et al explicitly teaches the use of acrylonitrile and methacrylonitrile provides heat-expandable microspheres having high density to prevent encapsulated blowing agent from escaping the shell, and said microspheres having soft, dense shell ([0071], [0072]).
It is noted that hydrofluoroethers are claimed in instant invention as the blowing agents, and thereby said hydrofluoroether of Tayagaki et al will intrinsically and necessarily have a specific heat in the range of 0.8-2.0 J/g.K or 1.05-1.5 J/g.K as well. “Products of identical chemical composition cannot have mutually exclusive properties” (See MPEP 2112.01). 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.
19. Since both Tayagaki et al and US patent 8,486,531 are related to heat-expandable microspheres having a shell formed from nitrile monomer, further in combination with fluoroethers as blowing agents, and thereby belong to the same field of endeavor, wherein Tayagaki et al teaches the use of the combination of acrylonitrile and methacrylonitrile as the nitrile monomer, at a weight ratio of the acrylonitrile to the methacrylonitrile of 65:35 or 70:30 to provide said heat-expandable microspheres having high density to prevent encapsulated blowing agent from escaping the shell, and hydrofluoroether as the blowing agent, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of US patent 8,486,531 and Tayagaki et al, and to use, or obvious to try to use the combination of acrylonitrile and methacrylonitrile at a weight ratio of the acrylonitrile to the methacrylonitrile of 65:35 or 70:30 to form the microspheres of US patent 8,486,531, so to provide the shell of said microspheres of US patent 8,486,531 with high density, preventing escaping the blowing agent, as taught by Tayagaki et al, and use, or obvious to try to use hydrofluoroether as the fluoroether blowing agent, 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). 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).
20. Since the heat expandable microspheres of US patent 8,486,531 in view of Tayagaki et al are the same as those claimed in instant invention, i.e. produced from the same nitrile monomers as claimed in instant invention and comprising the same hydrofluoroether blowing agent as that claimed in instant invention, therefore, the heat expandable microspheres of US patent 8,486,531 in view of Tayagaki et al will intrinsically and necessarily have the properties, including the ratios A50/A10 and A90/A50, the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 5-6). 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.
21. Therefore, the limitations claimed in instant invention are obvious variants of the limitations claimed in US patent 8,486,531 in view of Tayagaki et al.
22. Claims 1-6 are directed to an invention not patentably distinct from claims 1-8 of U.S. Patent No. 8,486,531 in view of Tayagaki et al (US 2019/0194415).
Specifically, see the discussion in paragraphs 16-21 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). Commonly assigned US 8,486,531, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
23. Claims 1-6 are rejected under 35 U.S.C. 103(a) as being obvious over U.S. Patent No. 8,486,531 in view of Tayagaki et al (US 2019/0194415).
Specifically, see the discussion in paragraphs 16-21 above.
The applied reference has a common assignee and a common inventor with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art only under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Conclusion
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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