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 .
This Office action is in response to the amendment filed 7/23/2026. Claims 2-3 are amended; and claims 1-10 are currently pending in the application.
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 Objections
Claims 2-3 are objected to because of the following informalities: Claims 2 (line 2) and 3 (line 2) recite “comprising a phosphate ester monomer unit”. In light of the specification (paragraph 0014), it appears that “phosphate ester monomer unit” is in addition to the “vinyl monomer unit” of claim 1. Applicant is advised to rephrase the limitations in claims 2 and 3 as “further comprising a phosphate ester monomer unit”. Appropriate correction and/or clarification are required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ishimori et al (US 2015/0004127 A1) in view of Ando et al (US 2017/0058116 A1).
Regarding claim 1, Ishimori et al disclose porous resin particles (i.e., reads on hollow polymer particles in present claim 1) that comprise a polymer of monomer mixture including vinyl-based monomers (abstract) which reads on vinylic monomer unit in present claim 1. The volume average particle diameter of the porous resin particles is preferably from 4 microns to 40 microns (paragraph 0066) which overlaps with the volume average particle diameter in present claim 1. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Ishimori et al are silent with respect to phosphorus element content and alkaline earth metal content.
However, Ishimori et al in the general disclosure teach that in suspension polymerization, the aqueous phase preferably contains a dispersion stabilizer to manufacture desired porous particles in a more stable manner. Of these dispersion stabilizers, the dispersion stabilizer is preferably magnesium pyrophosphate(paragraph 0082). See example 1, wherein the polymerization process includes magnesium pyrophosphate as a dispersion stabilizer (paragraph 0181). Hydrochloric acid was added until the slurry showed a pH of 2 or less to decompose magnesium pyrophosphate. The slurry was washed in water and dehydrated to obtain resin particles (paragraph 0184). The porous resin particles are filtered to remove aqueous medium (paragraph 0079). It is noted that magnesium pyrophosphate and HCl reaction products include hypophosphorus acid (H4P2O7) and 2MgCl2 (i.e., equal amounts of phosphorus and alkaline earth elements) and have a solubility of 1000g/L and 54 g/100mL at 200C, respectively. Additionally, Ando et al teach a method of producing particles by suspension polymerization (abstract). Preferably, the monomer mixture contains at least one polymerizable phosphoric acid monomer. Addition of polymerizable phosphoric acid monomer to the monomer mixture can improve stability of the droplets of monomer mixture in the aqueous medium when the monomer mixture is subjected to the aqueous suspension polymerization (paragraph 0041). The polymerizable phosphoric acid monomer preferably falls within the range from 0.01 to 0.8 parts by weight. If the amount exceeds 1 part by weight relative to 100 parts by weight of polymerizable vinyl monomer, particles are likely to include fine particles whose size is too small (paragraph 0046). Therefore, in light of the teachings in Ando et al and general disclosure of Ishimori et al, it would have been obvious to one skilled in art prior to the filing of present application to wash the slurry after decomposing magnesium pyrophosphate, to include any amount of alkaline earth metal element (i.e., magnesium) including 1 to 100 mg/kg and include small amounts of polymerizable phosphoric acid monomer (such as 0.01 to 0.8 parts), to obtain hollow polymer particles having phosphorus element content of 1 to 200 mg/kg and alkaline earth metal content of 1 to 100 mg/Kg with higher amounts of phosphorus than the alkaline earth metal content, for above mentioned advantages, and absent evidence to the contrary.
Regarding claims 2 and 3, examples of polymerizable phosphoric acid monomer, in Ando et al, include
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wherein n represents 1 to 5, when a = 1, b = 2 and when a = 2, b = 1 (paragraph 0041) which reads on phosphate ester monomer in present claim 2; and phosphate ester monomer of present claim 3, wherein R1 = methacrylic group, R2O = C2H4O, v = 1 to 5, x = 1 or 2.
Regarding claim 4, Ishimori et al teach that porous resin particles have a specific surface area of 3 m2/g to 200 m2/g (paragraph 0064) which overlaps with the specific surface area in present claim 4. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. The volume average particle diameter of the porous resin particles is preferably from 4 microns to 40 microns (paragraph 0066). Therefore, given the porous resin particles, of Ishimori et al have volume average particle diameter and specific surface area in overlapping ranges, one skilled in art prior to the filing of present application would have a reasonable basis to expect the bulk specific graving to overlap with the bulk specific gravity of 0.1 to 0.4 g/cm3, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claim 7, Ishimori et al teach that light diffusion member may be prepared by dispersing the porous resin particles as a light diffusing agent in a transparent base material resin (paragraph 0125) which reads on resin composition comprising the hollow polymer particles in present claim 7.
Regarding claim 8 and 10, Ishimori et al teach that light diffusion coating film may be prepared by coating a transparent base material with a light diffusing coating material (paragraph 0123) which reads on coating composition in present claim 8 and light diffusion film in present claim 10.
Regarding claim 9, Ishimori et al teach that external preparation, such as cosmetic material, in which the porous resin particles are blended exhibits improved spreading and slippage (paragraph 0067).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Ishimori et al (US 2015/0004127 A1) in view of Ando et al (US 2017/0058116 A1) and Watanabe et al (US 2017/0341058 A1).
The discussion with respect to Ishimori et al in paragraph 9 above is incorporated here by reference. Additionally, Ishimori et al teach suspension polymerizing a monomer mixture in the presence of a pore-forming agent (paragraph 0020)
Ishimori et al are silent with respect to having a porous structure inside and having only one pore inside.
However, Watanabe et al teach porous polymer particles (abstract) prepared by suspension polymerization (paragraph 0039). The porosity of the polymer particles can be controlled by the amount of porosifier. The size and shape of pores of the porous polymer particles can be controlled by the type of porosifier (paragraph 0044). The porous particles have a coating layers that covers at least a portion of the surface of the porous polymer particles (paragraph 0037). When the content of oil soluble surfactant is 5% by mass or more, since stability of water droplets becomes sufficient, it is easier for large single holes to be formed. When the content of oil-soluble surfactant is 80% by mass or less, it is easier for the porous polymer particles to maintain the shape after polymerization (paragraph 0048). The average particle size of porous polymer particles is preferably 300 microns or less and 10 microns or more (paragraph 0060). Therefore, in light of the teachings in Watanabe et al, and given that Ishimori et al contemplate preparing polymer particles by suspension polymerization and in the presence of pore-forming agents, it would have been obvious to one skilled in art prior to the filing of present application to optimize the amount of porosifier (i.e., pore-forming agent) and including oil-soluble surfactant in amounts of 5% by mass or more to obtain a porous polymer particles having a porous structure inside as in present claim 5 and only one pore inside thereof as in present claim 6, absent evidence to the contrary.
Response to Arguments
The objections, and rejections under 35 U.S.C. 112(b) as set forth in paragraphs 3 and 5, of Office action mailed 4/23/2026, are withdrawn in view of the amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
Applicant's arguments, filed 7/23/2026, with respect to rejections under 35 U.S.C. 103, have been fully considered but they are not persuasive. Specifically, applicant argues that (A) in Comparative Example 1 of present application, the dispersant (magnesium pyrophosphate) contained in the suspension was decomposed with hydrochloric acid. Then, the suspension was dehydrated by filtration to separate solids, and the solids were washed with sufficient water such that phosphorus element derived from the magnesium pyrophosphate was eliminated from the particles. This is similar to the process in Ishimori and therefore Ishimori cannot include required content of phosphorus element and alkaline earth element; and (B) the problem to be solved in Ishimori is to provide particles with both higher water absorbance and higher oil absorbance than cellulose particles. In order to solve this problem, porous particles with a specific resin composition other than cellulose is used. In Ando, small polymer particles serve as a suspension stabilizer and adhere to the surfaces of the large polymer particles and constitute part of the composite particles. Accordingly, cellulose is present on the surface of the composite particles. A person having ordinary skill in the art would have lacked motivation to combine Ishimori with Ando in the alleged manner.
With respect to (A), as noted in the Office action of record, hypophosphorus acid (H4P2O7) and 2MgCl2 have a solubility of 1000g/L and 54 g/100mL at 200C, respectively. It is clear that MgCl2 has lower solubility compared to H4P2O7 and one skilled in art would expect the polymer to include lower content of phosphorus compared to alkaline earth element at any point of time in washing the slurry. Graham v. Deere analysis was done and the secondary reference of Ando provided the motivation to include phosphorus containing monomer in a polymer. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
With respect to (B), firstly, Ando is only used for its teaching of the use of phosphorus containing monomer in preparing a polymer. Secondly, there is no teaching away in Ishimori, against cellulose. The reference to cellulose polymer is in the background second, so are other references that do not refer to cellulose.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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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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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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