RESPONSE TO AMENDMENT
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 .
WITHDRAWN REJECTIONS
The 35 U.S.C. §112 rejection of the claims made of record in the office action mailed on 02/18/2026 have been withdrawn due to Applicant’s amendment in the response filed 05/15/2026.
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 § 102
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (CN 106179282).
Regarding claim 1, Chen et al. discloses a porous microsphere having taper holes having a conical shape uniformly distributed throughout the surface thereof including mesopores. (Abstract, page 4, first full paragraph). With respect to the limitation “irregular shape”, Chen et al. discloses pore sizes in conical shape range include microporous, mesoporous and microporous holes (Example 2, Fig. 6). Therefore, due the distribution in size of the taper holes, the shape would be described as “irregular”. The surface portion of the taper holes would meet the limitation of “groove” as claimed and the interior section of the taper hole would meet the limitation of a “mesopore”, the structure of the mesopore being connected to the surface via the groove and gradually decreasing as the structure of the hole reaches the interior of the particle (see annotated drawings below).
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With respect to the limitation “wherein an average diameter of each of the grooves is larger than average diameter of each of the mesopores”, while Chen et al. does not disclose the specific diameter along each region of the described taper holes, since the surface region of the taper hole (equivalent to the claimed “grooves”) is wider than the interior region (equivalent to the claimed “mesopore”), the average diameter of the “grooves” in Chen et al. would be larger than the average diameter of the “mesopores”.
With respect to the limitation the limitation “derived from the plurality of mesopores through a reduction-induced expansion”, the limitation refers to the process of making the claimed groove and mesopore structure. While Chen et al. does not disclose a “reduction-induced expansion” process, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process and given that Chen et al. meets the claimed structural features of the claimed product, the claims are unpatentable over the teachings of Chen et al.
Chen et al. further discloses that the microsphere may be made of SiO2. (page 4, 6th paragraph). The taper holes therefore meet the limitation “an average diameter of the mesopores connected to the surface gradually decreases” and in a structure that has mesopores, is spherical and contains silica.
Claim Rejections - 35 USC § 103
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN 106179282).
Regarding claim 2, Chen et al. discloses an average diameter of the microspheres in the range of 200-2000 nm (page 4, 3rd full paragraph.), overlapping with the presently claimed range. (page 4, 4th full paragraph). 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).
Regarding claim 3, Chen et al. discloses that the surface area of the porous microsphere lies in the range of 100-600 m2/g, overlapping with the presently claimed range. (page 4, 4th full paragraph).
Regarding claim 4, Chen et al. discloses an average pore diameter in the range of 1-60 nm and an average pore volume of 0.1 to 1.1 cm3/g, overlapping with the presently claimed range. (page 4, 1st and 4th full paragraphs).
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 05/15/2026 regarding the 35 U.S.C. §102 and §103 rejections made of record in the office action mailed on 02/18/2026 have been carefully considered but are deemed unpersuasive.
As can be seen in the annotated drawings above, the conical hole structure described in Chen et al. meets the limitations of the “groove” and “mesopore” structure as presently claimed.
Applicant argues that the structure of spherical silica microsphere of Chen et al. does not meet the limitation of “grooves” formed “through a reduction-induced expansion”. (Applicant’s arguments filed 05/15/2026, page 8)
The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113. In the present instance, given that the limitation does not impart a structural feature that would be distinct from that of the prior art, Chen et al. teaches all the structural features of the grooves, mesopore and spherical silica particle as claimed. While Applicant argues that the process results in “crater-like shapes” this structure is not explicitly claimed and Applicant has not shown that the limitation “through a reduction-induced expansion” would necessarily form the claimed craters. Further, it would appear that based on the appearance of the outer surface of the microspheres of Chen et al. in Fig. 2 would be described as “craters” as presently claimed.
With respect to the newly amended limitation referring to the larger average size of the craters compared to the mesopores, as described in the annotated drawings in the claim rejections above, the conical structure of the taper holes of Chen et al. would result in the outer surface (i.e. the grooves) being larger on average than the interior region (i.e. the mesopores). Therefore, Chen et al. implicitly teaches the new claim limitation.
As such, it remains the Examiner’s position that claims are unpatentable over Chen et al.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 06/04/2026
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