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 .
Response to Amendment
2. The amendment filed by Applicant on November 21, 2025 has been fully considered. The addition of new claims 23-26 is acknowledged. In light of the amendment, the previous rejections cited below are maintained but suitably framed to better address the current amendment. Thus, the following action is properly made final.
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.
3. Claims 1, 3-12, 14-26 are rejected under 35 U.S.C. 103 as being unpatentable over Cocquet et al (WO 2017/129913) in view of Biesenberger et al (US 5,707,573), as evidenced by Malet et al (US 2013/0022771).
It is noted that while the rejection is made over WO 2017/129913 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 11,008,464 is relied upon. All citations to paragraph numbers, etc., below refer to US 11,008,464.
4. The rejection is adequately set forth on pages 3-9 of an Office action mailed on July 1, 2025 and is incorporated here by reference.
5. With respect to newly added claims 23-24,
Cocquet et al recites the foam having density of as low as 50 kg/m3 or preferably 100 kg/m3 (i.e. 0.05 g/cc or 0.1 g/cc) and rebound resilience of greater than 55% (col. 9, lines 23-29).
6. With respect to newly added claims 25-26,
though Cocquet et al does not explicitly recite the expansion rate of the foam and the foam being recyclable, since
i) the expansion rate is calculated by dividing polymer density by the foam density, as also cited in instant specification (p. 15, lines 1-5 of instant specification);
ii) the polymer comprising polyamide blocks and polyether blocks (PEBA) of Cocquet et al is the same as that claimed in instant invention, and thereby would intrinsically and necessarily have density the same or about the same as that claimed in instant invention;
iii) the density of the foam of Cocquet et al is the same as that claimed in instant invention, i.e. 0.8 g/cc or less, or as low as 0.05 g/cc;
therefore, the foam of Cocquet et al in view of Biesenberger et al will intrinsically and necessarily have, or would be reasonably expected to have the expansion rate as that claimed in instant invention, i.e. 2-25 or at least 6%, as well. Further, since the foam of Cocquet et al in view of Biesenberger et al comprises the same composition, i.e. the same PEBA polymer and the same dinitrogen and carbon dioxide blowing agents, as that claimed in instant invention, and is cited as being non-cross-linked, therefore, the foam of Cocquet et al in view of Biesenberger et al will intrinsically and necessarily be at least partially recyclable as well. 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.
7. Claims 1, 3-12, 14-26 are rejected under 35 U.S.C. 103 as being unpatentable over Cocquet et al (WO 2017/129913) in view of Nishikawa et al (US 5,997,781).
It is noted that while the rejection is made over WO 2017/129913 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 11,008,464 is relied upon. All citations to paragraph numbers, etc., below refer to US 11,008,464.
8. The rejection is adequately set forth on pages 9-15 of an Office action mailed on July 1, 2025 and is incorporated here by reference.
9. With respect to newly added claims 23-24,
Cocquet et al recites the foam having density of as low as 50 kg/m3 or preferably 100 kg/m3 (i.e. 0.05 g/cc or 0.1 g/cc) and rebound resilience of greater than 55% (col. 9, lines 23-29).
10. With respect to newly added claims 25-26,
though Cocquet et al does not explicitly recite the expansion rate of the foam and the foam being recyclable, since
i) the expansion rate is calculated by dividing polymer density by the foam density, as also cited in instant specification (p. 15, lines 1-5 of instant specification);
ii) the polymer comprising polyamide blocks and polyether blocks (PEBA) of Cocquet et al is the same as that claimed in instant invention, and thereby would intrinsically and necessarily have density the same or about the same as that claimed in instant invention;
iii) the density of the foam of Cocquet et al is the same as that claimed in instant invention, i.e. 0.8 g/cc or less, or as low as 0.05 g/cc;
therefore, the foam of Cocquet et al in view of Nishikawa et al will intrinsically and necessarily have, or would be reasonably expected to have the expansion rate as that claimed in instant invention, i.e. 2-25 or at least 6%, as well. Further, since the foam of Cocquet et al in view of Nishikawa et al comprises the same composition, i.e. the same PEBA polymer and the same dinitrogen and carbon dioxide blowing agents, as that claimed in instant invention, and is cited as being non-cross-linked, therefore, the foam of Cocquet et al in view of Nishikawa et al will intrinsically and necessarily be at least partially recyclable as well. 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.
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).
11. Claims 1, 3-12, 14-22 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,008,464 in view of Biesenberger et al (US 5,707,573).
12. The rejection is adequately set forth on pages 15-20 of an Office action mailed on July 1, 2025 and is incorporated here by reference.
13. Since no Terminal Disclaimer has been filed, the rejection is maintained.
Response to Arguments
14. Applicant's arguments filed on November 21, 2025 have been fully considered.
15. With respect to Applicant’s arguments regarding the rejections of Claims 1, 3-12, 14-26 under 35 U.S.C. 103 as being unpatentable over Cocquet et al (WO 2017/129913) in view of Biesenberger et al (US 5,707,573), as evidenced by Malet et al (US 2013/0022771) and of Claims 1, 3-12, 14-26 under 35 U.S.C. 103 as being unpatentable over Cocquet et al (WO 2017/129913) in view of Nishikawa et al (US 5,997,781), it is noted that:
1) The above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
2) Cocquet et al discloses a process for producing a non-crosslinked (as to instant claim 9) copolymer foam with polyamide blocks and polyether blocks (PEBA), comprising the following steps:
a) mixing the copolymer in the molten state with an expansion agent and optionally additives;
b) foaming the mixture of the copolymer and the expansion agent (col. 2, lines 33-38),
Wherein the expansion agent is at least one physical expansion agent and comprises at dinitrogen and/or carbon dioxide (claim 15, col. 2, lines 38-42).
Thus, Cocquet et al explicitly recites the use of at least one expansion agent, and the expansion agents including dinitrogen and carbon dioxide.
Base on the teachings of Cocquet et al, it would have been obvious to a one of ordinary skill in the art to choose and use both as the expansion agents in the process of Cocquet et al as well. 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).
3) Similarly to Applicant’s arguments on pages 2 and 4 of the arguments, Cocquet et al teaches the produced foams being of low density (i.e. having density of as low as 50 kg/m3) and rebound resilience of more than 55% (as in col. 9, lines 23-29).
Since the expansion rate is calculated by dividing polymer density by the foam density, as also cited in instant specification (p. 15, lines 1-5 of instant specification); and the produced foam has a density of as low as 50 kg/m3, i.e. 0.05 g/cc, therefore, the foams of Cocquet et al will intrinsically and necessarily have “improved expansion rate” as well. Further, Cocquet et al explicitly teaches the foams being non-cross-linked (Abstract), and thereby recyclable as well.
4) Though Cocquet et al does not explicitly recite the use of the combination of the dinitrogen and the carbon dioxide as the blowing agent, the secondary references of Biesenberger et al or Nishikawa et al were applied for the teachings of that.
Biesenberger et al or Nishikawa et al are secondary references, which were applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
5). Thus, Biesenberger et al teaches that the mixture of blowing agents can be applied to any thermoplastic resins to form thermoplastic foams (Abstract, col. 6, lines 4-7), and not limited to polyethylene or polystyrene, as argued by Applicant. Even though Biesenberger et al used polyethylene in the specific examples, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
Nishikawa et al discloses a process for producing thermoplastic injection-expansion molded foams in which a blowing agent in amount of 0.1-30 pbw (col. 4, lines 48-52) is added to a melted thermoplastic polymer (Abstract, col. 4, lines 45-55), wherein the blowing agent comprises a combination of the nitrogen and carbon dioxide in a weight ratio of 1:9 to 9:1 (col. 9, lines 30-35); wherein such combination of blowing agents permits an easier reduction in cell size and easier formation of cells in a higher population (col. 9, lines 35-41).
6) It is further noted that rationale to combine references different from applicant’s is permissible. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993).
7) In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
16. With respect to Applicant’s arguments regarding the unexpected results of instant invention, it is noted that:
1) Instant claims 1 and 20 are silent with respect to any properties of the foam.
2) The evidence of unexpected results of instant invention is presented by two very specific inventive examples 1 and 2, showing the use of a mixture of 75%wt of dinitrogen and 25%wt of carbon dioxide as the blowing agents.
Further, comparative examples 3-4 show the use of dinitrogen alone. However, the density of the comparative examples 3-4 is within the claimed range for density (i.e. less than 0.8 g/cc as in instant claims 8, 15), the rebound reliance is higher than 55% as claimed in instant invention (instant claim 17), and the values of the properties of the comparative examples are very close to the values of inventive examples 1-2. Therefore, no substantial evidence of criticality of instant invention has been provided.
3) Further, the scope of instant claims is significantly broader than the scope of the two very specific inventive examples 1-2. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
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.
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.
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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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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764