Claims 1, and 5-10 are pending in the application. Claims 2-4 have been cancelled. Claims 1, and 5-10 are rejected.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
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.
Claims 1, 6, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0208733 to Tayagaki et al. (hereinafter “Tayagaki I”).
Tayagaki I discloses a rubber composition for vulcanization molding containing hollow particles, and a base rubber (abstract). The hollow particles are expandable hollow particles composed of a thermoplastic resin shell and a thermally vaporizable blowing agent encapsulated therein (paragraph 32). The hollow particles further comprise a fine particle coating on the outer surface of the shell (paragraph 34, and figure 1). The fine particles comprise carbon black (paragraph 117). The shell thus comprises the thermoplastic resin and carbon black.
As to claim 6, Tayagaki I discloses that the rubber composition further includes a colorant (paragraph 144).
As to claim 10, Tayagaki I discloses that the hollow particles have a mean shell thickness of 0.19 µm and mean particle size D50 of 47.3 µm (table 2, example 1). This gives a ratio of the shell thickness to the number average particle size of the hollow particles of 0.004 within the claimed range.
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Claims 7 and 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tayagaki I as applied to claim 1 above, further in view of US 2008/0216933) to Otsuki (hereinafter “Otsuki”).
Tayagaki I does not explicitly disclose the carbon black having a specific surface area of 5 to 300 m2/g, and a dibutyl phthalate (DBP) oil absorption of 30 to 140 cm3/100g.
Otsuki, however, discloses a rubber composition comprising a butyl rubber, and 1-30 parts by weight of thermal expansion microspheres, and less than 40 parts by weight of carbon black (abstract and paragraph 23). The carbon black has a specific surface area of 25-60 m2/g, and a dibutyl phthalate (DBP) oil absorption of 87cm3/100g. from the viewpoint of crack resistance (paragraphs 24 and 35).
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the carbon black of Tayagaki I having a specific surface area of 25-60 m2/g, and a dibutyl phthalate (DBP) oil absorption of 87cm3/100g disclosed in Otsuki, motivated by the desire to provide the molded article having excellent crack resistance.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tayagaki I.
Tayagaki I discloses the fine particles having an average particle size of 0.01 to 10 microns (paragraph 114). The hollow particles have a mean shell thickness of 0.19 µm and mean particle size D50 of 47.3 µm (table 2, example 1). This gives a ratio of an average particle size of the fine particles to a shell thickness in a range of 0.05 to 52. This overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the ratio of the average particle size of the fine particles to the shell thickness will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the ratio of the average particle size of the fine particles to the shell thickness is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the ratio of the average particle size of the fine particles to the shell thickness in the range instantly claimed, motivated by the desire to provide adequate adhesion of the fine particles to the shell of the hollow particles while improving handling properties and dispersibility of the hollow particles in the base rubber. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/150951 or US 2021/0363320 to Tayagaki et al. (hereinafter “Tayagaki II”).
Tayagaki II discloses a molded article obtained from a composition containing a base component and hollow particles (abstract, and paragraphs 228-230). The hollow particles are expandable hollow particles composed of a thermoplastic resin shell and a thermally vaporizable blowing agent encapsulated therein (abstract, and figure 1). The hollow particles have a mean particle size 10 to 300 µm (paragraph 186). The hollow particles further comprise a fine particle coating on the outer surface of the shell (paragraphs 191-192; and figure 2). The fine particles comprise carbon black (paragraph 117). The shell thus comprises the thermoplastic resin and carbon black.
As to claim 6, Tayagaki II discloses that a rubber composition further includes a colorant (paragraph 228).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tayagaki II.
Tayagaki II discloses the content of the fine particles is in a range of 20 wt% to 95 wt% based on the total weight of the coated hollow particles. This overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the content of the fine particles will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the content of the fine particles is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the content of the fine particles in the range instantly claimed, motivated by the desire to improve handling properties and dispersibility of the hollow particles in the base component. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
Response to Arguments
The rejection over Matsuura has been withdraw in view of the present amendment and response. Matsuura teaches away from use of a pigment-containing hollow particle where a shell contains a carbon black which is known to absorb near-infrared light. Therefore, this absorption makes it difficult to improve its heat shielding and heat-insulating properties (paragraph 13).
New ground of rejection is made in view of newly discovered references to Tayagaki et al. (US 2018/0208733), WO 2019/150951 and Tayagaki et al. (US 2021/036332) (see rejections above).
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.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights