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 § 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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Enomoto et al. (U.S. Pub. No. 2010/0247914).
Regarding claim 1, Enomoto et al. teaches a method for producing spherical porous silica-based particles which meets the limitation of method for producing spherical silica particles (paragraphs 1 and 41). Enomoto et al. teaches the specific gravity of amorphous silica which implies amorphous silica particles (paragraph 1460. Enomoto et al. teaches wet classification which meets the limitation of comprising a step of classifying amorphous spherical silica particles (paragraphs 36). Enomoto et al. teaches calcining at a temperature of 200 to 800 ˚C which overlaps with followed by a step of performing a heat treatment at 800-1200 ˚C (paragraph 38). 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 2, Enomoto et al. teaches wet classification (paragraphs 35 and 36).
Regarding claim 3, Enomoto et al. teaches the sphericity of the particles is more than 95% and surface smoothness of a level to such an extent that, when the entire surface of the particle is observed from a photograph thereof taken by a scanning electron microscope (SEM) with a magnifying power of 10,000, a foreign matter attached to the surface thereof can be hardly seen which meets the limitation of wherein the classifying step comprises classifying the spherical silica particles (A) and preparing spherical silica particles (B) having a surface fractal dimension of 1.0-2.3 (paragraphs 43 and 53).
Regarding claim 4, Enomoto et al. teaches removing foreign matter attached to the surface thereof (paragraph 27).
Regarding claim 5, Enomoto et al. teaches fine silica-based particles may be a commercially available product produced by a conventional method which encompasses the spherical silica particles (A) are amorphous spherical silica particles obtained by a powder melting method (paragraph 78).
Regarding claim 6, Enomoto et al. teaches wet classification comprising water which meets the limitation of wherein the classifying step involves wet classification, and the wet classification is performed by using a slurry containing the spherical silica particles (A) and a dispersion medium including at least water (paragraphs 70-72)
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Enomoto et al. as applied to claim 1 above, and further in view of Atsuya et al. (JP6867540; translation n provided by GooglePatents 09/2026).
Enomoto et al. teaches a method for producing spherical porous silica-based particles which meets the limitation of method for producing spherical silica particles (paragraphs 1 and 41). Enomoto et al. teaches the specific gravity of amorphous silica which implies amorphous silica particles (paragraph 146). Enomoto et al. teaches wet classification which meets the limitation of comprising a step of classifying amorphous spherical silica particles (paragraphs 36). Enomoto et al. teaches calcining at a temperature of 200 to 800 ˚C which overlaps with followed by a step of performing a heat treatment at 800-1200 ˚C (paragraph 38). 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). Enomoto et al. does not teach wherein the spherical silica particles (X) have a specific surface area of 0.1-2.0 m2/g.
Atsuya et al. teaches an amorphous silica powder suitable for obtaining a liquid encapsulant having excellent fluidity (page 2). Atsuya et al. teaches the present inventors have succeeded in solving the above-mentioned problems by appropriately adjusting the particle size distribution of the amorphous silica powder and its specific surface area (page 2). Atsuya et al. teaches the present invention has a particle size frequency distribution in which the most frequent diameter is in the range of 1 to 10 μm, the frequency of particles having a particle size less than 0.50 μm is 1.0% or more, and an amorphous silica powder characterized by having a specific surface area of 1 to 12 m 2 / g (page 2). It would have been obvious to one of ordinary skill in the art at the time of filing to adjust the particle size and specific surface area of the amorphous silica particle taught by Enomoto et al. to optimize the encapsulation and/or fluidity of the amorphous silica particles.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GUINEVER S GREGORIO whose telephone number is (571)270-5827. The examiner can normally be reached M-W 11 am - 9 pm.
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, Coris Fung can be reached at 571-270-5713. 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.
/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 09/12/2026
Prosecution Insights