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 .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 8, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on July 8, 2026 has been fully considered. In light of the amendment, the previous rejections not cited below are withdrawn. The new grounds of rejections are set forth below.
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.
4. Claims 1, 3-12, 14-16, 19-23, 25-33 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) and Farris et al (US 2017/0120484), 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.
5. 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:
1) mixing the copolymer in the molten state with an expansion agent and optionally additives (as to instant claim 12);
2) 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 dinitrogen and/or carbon dioxide (claim 15, col. 2, lines 38-42), and
wherein the produced foam comprises rebound resilience of greater than 55% and compression set of less than 10% (col. 9, lines 23-32).
6. As to instant claims 1 and 10, the method comprises injecting the mixture of the copolymer and the expansion agent into a mold, i.e. injection molding, wherein the foaming of the mixture is carried out by opening of the mold (col. 2, lines 42-46, claim 13).
7. As to instant claims 3-5, the polyamide blocks have a number average molecular weight of 200-1500 g/mol and the polyether blocks have a number average molecular weight of 800-2500 g/mol (col. 2, lines 1-4); the mass ratio of the polyamide blocks to polyether blocks is 0.1-0.9 (col. 2, lines 5-6).
8. As to instant claims 6-7, the polyamide blocks comprise polyamide 11, polyamide 6 or polyamide 12; the polyether blocks comprise polyethylene glycol (col. 2, lines 17-23).
9. As to instant claims 8, 14-15, 23, 32, Cocquet et al recites the produced 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).
10. As to instant claims 8, 16, 19, 25, the produced foam is having density of 50-800 kg/m3 (col. 9, lines 23-27) and closed cells (col. 8, lines 54-55). Though Cocquet et al does not explicitly recite the expansion rate of the foam, 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 the polymer 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,
therefore, the foam of Cocquet 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. 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.
11. As to instant claims 11, 20, the exemplified amount of used expanding agent is 0.6%wt (col. 10, lines 37-38).
12. As to instant claims 27-28, Cocquet et al teaches that the physical expansion agent is mixed with the copolymer in liquid form and converted into a gas phase during the foaming step (col. 9, lines 7-10).
13. Though Cocquet et al discloses the expanding agent comprising at least one physical expansion agent selected from the group consisting of dinitrogen and carbon dioxide (claim 15), wherein by using the term “at least one”, the combination of both dinitrogen and carbon dioxide can be used, Cocquet et al does not explicitly recite the use of combination of 20-95%wt dinitrogen and 5-80%wt of carbon dioxide.
14. However,
1) Biesenberger et al discloses a process for producing thermoplastic foams in which a blowing agent comprising a combination of nitrogen and carbon dioxide is injected into a melted thermoplastic polymer (Abstract), wherein the combination of the nitrogen and carbon dioxide is preferably comprises about 75%wt to about 25%wt of carbon dioxide and about 25%wt to about 75%wt of nitrogen (col. 3, lines 45-55); wherein such combination of blowing agents produces foams with closed cells having homogeneous cell size (col. 2, lines 1-3; col. 3, lines 30-35).
Based on the teachings of Biesenberger et al, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of about 25%wt of carbon dioxide and about 75%wt of nitrogen as the blowing agent to form the closed cell foam of Biesenberger et al as well, since it would have been obvious to choose material based on its suitability (as to instant claims 1, 20-22, 29-31). 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).
2) Farris et al further teaches a method for making a foamed article by heating a thermoplastic polymer to soften it, followed by infusing the thermoplastic polymer with at least one inert gas, wherein the inert gas includes a combination of nitrogen and carbon dioxide ([0036]) and the thermoplastic polymer is PEBA ([0023]).
Thus, Farris et al explicitly teaches the foams from PEBA polymers can be formed using the combination of nitrogen and carbon dioxide.
15. Since Biesenberger et al, Farris et al and Cocquet et al are related to processes for forming foams by injecting physical blowing agents including nitrogen and carbon dioxide into polymer melts, and thereby belong to the same field of endeavor, wherein
i) Biesenberger et al teaches the use of combination of carbon dioxide and nitrogen as the blowing agent to form the thermoplastic resin foams having closed cells of uniform cell size;
ii) as evidenced by Malet et al, PEBA is a thermoplastic resin ([0021] of Malet et al);
iii) Farris et al explicitly teaches that the foams from PEBA thermoplastic polymers can be formed using the combination of nitrogen and carbon dioxide; and
iv) Cocquet et al discloses the foams having closed cells,
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Cocquet et al, Farris et al and Biesenberger et al, and to use, or obvious to try to use the combination of carbon dioxide and nitrogen, such as about 25%wt of carbon dioxide and about 75%wt of nitrogen, in amount of 0.6%wt, as the blowing agent used to form the closed cell PEBA foam of Cocquet et al, so to ensure said foam of Cocquet et al having uniform cell size and since it would have been obvious to choose material based on its suitability. 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
16. Since the foam of Cocquet et al in view of Biesenberger et al and Farris et al is the same as that claimed in instant invention, and is produced by essentially the same process as that claimed in instant invention, therefore, the foam of Cocquet et al in view of Biesenberger et al and Farris et al will intrinsically and necessarily have the properties, including density, expansion rate of 2-25, or at least 6%, rebound resilience, compression set, that are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention, and further be at least partially recyclable (as to instant claims 26, 33). 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.
17. It is further noted that instant specification does not provide sufficient evidence of criticality in using the mixture of 20-95%wt of nitrogen and 5-80%wt of carbon dioxide as the blowing agent to foam the PEBA. Thus,
1) Inventive examples 1 and 2 show the use of a single mixture of 75%wt of nitrogen and 25%wt of carbon dioxide (Table of instant specification), wherein instant claim 1 is significantly broader and recites that either nitrogen or carbon dioxide could be the major component. 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).
2) Examples 3-4 of instant invention, which are comparative, show the use of nitrogen as the blowing agent alone.
3) However, all Examples 1-4, i.e. both inventive and comparative, show the rebound resilience of more than 59%, and more than 55% as claimed in instant invention.
4) On the other hand, Cocquet et al explicitly teaches i) the blowing agent being at least one of nitrogen and carbon dioxide, providing rebound resilience of more than 55% and compression set of less than 10%; ii) the specific examples of Cocquet et al show the use of nitrogen as the blowing agent, providing rebound resilience of 61-65% and compression set of 6-8% (see col. 10, lines 60-65) and thus, based on the teachings of Cocquet et al that i) nitrogen alone can provide foams with said high rebound resilience and low compression set, and ii) combination of nitrogen with carbon dioxide can be used to foam PEBA, it would have been obvious to a one of ordinary skill to use, or obvious to try to choose and use nitrogen in combination with a minor amount of carbon dioxide to foam said PEBA of Cocquet et al as well, since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
18. Claims 1, 3-12, 14-16, 19-23, 25-33 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) and Farris et al (US 2017/0120484).
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.
19. 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:
1) mixing the copolymer in the molten state with an expansion agent and optionally additives (as to instant claim 12);
2) 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 dinitrogen and/or carbon dioxide (claim 15, col. 2, lines 38-42), and
wherein the produced foam comprises rebound resilience of greater than 55% and compression set of less than 10% (col. 9, lines 23-32).
20. As to instant claims 1 and 10, the method comprises injecting the mixture of the copolymer and the expansion agent into a mold, i.e. injection molding, wherein the foaming of the mixture is carried out by opening of the mold (col. 2, lines 42-46, claim 13).
21. As to instant claims 3-5, the polyamide blocks have a number average molecular weight of 200-1500 g/mol and the polyether blocks have a number average molecular weight of 800-2500 g/mol (col. 2, lines 1-4); the mass ratio of the polyamide blocks to polyether blocks is 0.1-0.9 (col. 2, lines 5-6).
22. As to instant claims 6-7, the polyamide blocks comprise polyamide 11, polyamide 6 or polyamide 12; the polyether blocks comprise polyethylene glycol (col. 2, lines 17-23).
23. As to instant claims 8, 14-15, 23, 32, Cocquet et al recites the produced 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).
24. As to instant claims 8, 16, 19, 25, the produced foam is having density of 50-800 kg/m3 (col. 9, lines 23-27) and closed cells (col. 8, lines 54-55). Though Cocquet et al does not explicitly recite the expansion rate of the foam, 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 the polymer 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,
therefore, the foam of Cocquet 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. 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.
25. As to instant claims 11, 20, the exemplified amount of used expanding agent is 0.6%wt (col. 10, lines 37-38).
26. As to instant claims 27-28, Cocquet et al teaches that the physical expansion agent is mixed with the copolymer in liquid form and converted into a gas phase during the foaming step (col. 9, lines 7-10).
27. Though Cocquet et al discloses the expanding agent comprising at least one physical expansion agent selected from the group consisting of dinitrogen and carbon dioxide (claim 15), wherein by using the term “at least one”, the combination of both dinitrogen and carbon dioxide can be used, Cocquet et al does not explicitly recite the use of combination of 20-95%wt dinitrogen and 5-80%wt of carbon dioxide.
28. However,
1) 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).
Based on the teachings of Nishikawa et al, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of carbon dioxide and nitrogen at a weight ratio of 1:9 or 2:8, as the blowing agent used to form the foam of Nishikawa et al as well, since it would have been obvious to choose material based on its suitability (as to instant claims 1, 20-22, 29-31). 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).
2) Farris et al further teaches a method for making a foamed article by heating a thermoplastic polymer to soften it, followed by infusing the thermoplastic polymer with at least one inert gas, wherein the inert gas includes a combination of nitrogen and carbon dioxide ([0036]) and the thermoplastic polymer is PEBA ([0023]).
Thus, Farris et al explicitly teaches the foams from PEBA polymers can be formed using the combination of nitrogen and carbon dioxide.
29. Since Nishikawa et al, Farris et al and Cocquet et al are related to processes for forming foams by injecting physical blowing agents including nitrogen and carbon dioxide into polymer melts, and thereby belong to the same field of endeavor, wherein
i) Nishikawa et al teaches the use of combination of carbon dioxide and nitrogen as blowing agent to form the thermoplastic resin foams having reduced cell size,
ii) Farris et al explicitly teaches that the foams from PEBA thermoplastic polymers can be formed using the combination of nitrogen and carbon dioxide
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Cocquet et al, Farris et al and Nishikawa et al, and to use, or obvious to try to use the combination of carbon dioxide and nitrogen, such as at a weight ratio of 1:9 or 2:8, in amount of 0.1-20 pbw, as the blowing agent to form the PEBA foam of Cocquet et al, so to ensure said foam of Cocquet et al having reduced cell size, given such is desired, and since it would have been obvious to choose material based on its suitability. 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
30. Since the foam of Cocquet et al in view of Nishikawa et al and Farris et al is the same as that claimed in instant invention, and is produced by essentially or substantially the same process as that claimed in instant invention, therefore, the foam of Cocquet et al in view of Nishikawa et al and Farris et al will intrinsically and necessarily have the properties, including density, expansion rate, rebound resilience, compression set, that are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention, and further be at least partially recyclable (as to instant claims 26, 33). 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.
31. It is further noted that instant specification does not provide sufficient evidence of criticality in using the mixture of 20-95%wt of nitrogen and 5-80%wt of carbon dioxide as the blowing agent to foam the PEBA. Thus,
1) Inventive examples 1 and 2 show the use of a single mixture of 75%wt of nitrogen and 25%wt of carbon dioxide (Table of instant specification), wherein instant claim 1 is significantly broader and recites that either nitrogen or carbon dioxide could be the major component. 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).
2) Examples 3-4 of instant invention, which as comparative, show the use of nitrogen as the blowing agent alone.
3) However, all Examples 1-4 show the rebound resilience of more than 59%, and more than 55% as claimed in instant invention.
4) On the other hand, Cocquet et al explicitly teaches i) the blowing agent being at least one of nitrogen and carbon dioxide, providing rebound resilience of more than 55% and compression set of less than 10%; ii) the specific examples of Cocquet et al show the use of nitrogen as the blowing agent, providing rebound resilience of 61-65% and compression set of 6-8% (see col. 10, lines 60-65) and thus, based on the teachings of Cocquet et al that nitrogen alone can provide foams with said high rebound resilience and low compression set, and that combination of nitrogen with carbon dioxide can be used to foam PEBA, it would have been obvious to a one of ordinary skill to use, or obvious to try to choose and use the nitrogen in combination with a minor amount of carbon dioxide to foam said PEBA of Cocquet et al as well, since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
32. Claims 1, 3-12, 14-16, 19, 28, 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Cocquet et al (WO 2017/129913) in view of Kremser (DE 102012022970, based on machine translation) and Farris et al (US 2017/0120484).
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.
33. 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:
1) mixing the copolymer in the molten state with an expansion agent and optionally additives (as to instant claim 12);
2) 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 dinitrogen and/or carbon dioxide (claim 15, col. 2, lines 38-42), and
wherein the produced foam comprises rebound resilience of greater than 55% and compression set of less than 10% (col. 9, lines 23-32).
34. As to instant claims 1 and 10, the method comprises injecting the mixture of the copolymer and the expansion agent into a mold, i.e. injection molding, wherein the foaming of the mixture is carried out by opening of the mold (col. 2, lines 42-46, claim 13).
35. As to instant claims 3-5, the polyamide blocks have a number average molecular weight of 200-1500 g/mol and the polyether blocks have a number average molecular weight of 800-2500 g/mol (col. 2, lines 1-4); the mass ratio of the polyamide blocks to polyether blocks is 0.1-0.9 (col. 2, lines 5-6).
36. As to instant claims 6-7, the polyamide blocks comprise polyamide 11, polyamide 6 or polyamide 12; the polyether blocks comprise polyethylene glycol (col. 2, lines 17-23).
37. As to instant claims 8, 14-15, 32, Cocquet et al recites the produced 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).
38. As to instant claims 8, 16, 19, the produced foam is having density of 50-800 kg/m3 (col. 9, lines 23-27) and closed cells (col. 8, lines 54-55). Though Cocquet et al does not explicitly recite the expansion rate of the foam, 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 the polymer 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 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. 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.
39. As to instant claim 11, the exemplified amount of used expanding agent is 0.6%wt (col. 10, lines 37-38).
40. As to instant claim 28, Cocquet et al teaches that the physical expansion agent is mixed with the copolymer in liquid form and converted into a gas phase during the foaming step (col. 9, lines 7-10).
41. Though Cocquet et al discloses the expanding agent comprising at least one physical expansion agent selected from the group consisting of dinitrogen and carbon dioxide (claim 15), wherein by using the term “at least one”, the combination of both dinitrogen and carbon dioxide can be used, Cocquet et al does not explicitly recite the use of combination of 20-95%wt dinitrogen and 5-80%wt of carbon dioxide.
42. However,
1) Kremser discloses a method for producing foams from plastic material including polyamide-based ([0007]) by injection molding of said plastic with a physical blowing agent (Abstract), wherein the physical blowing agent comprises a combination of 50-80%wt of carbon dioxide and 20-50%wt of nitrogen ([0010]), wherein Kremser explicitly teaches that such combination of said blowing agents provides the foam with improved quality and visually appealing surfaces with fine bubbles (Abstract, [0026]).
2) Farris et al further teaches a method for making a foamed article by heating a thermoplastic polymer to soften it, followed by infusing the thermoplastic polymer with at least one inert gas, wherein the inert gas includes a combination of nitrogen and carbon dioxide ([0036]) and the thermoplastic polymer is PEBA ([0023]).
Thus, Farris et al explicitly teaches the foams from PEBA polymers can be formed using the combination of nitrogen and carbon dioxide.
43. Since Kremser, Farris et al and Cocquet et al are related to processes for forming foams by injecting physical blowing agents including nitrogen and carbon dioxide into polymer melts, and thereby belong to the same field of endeavor, wherein
i) Kremser explicitly teaches that such combination of 50%wt of carbon dioxide and 50%wt of nitrogen as blowing agents for making the polyamide-based foams by injection molding provides the foam with improved quality and visually appealing surfaces with fine bubbles;
iii) Farris et al explicitly teaches that the foams from PEBA, which are polyamide-based polymers, can be formed using the combination of nitrogen and carbon dioxide,
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Cocquet et al, Farris et al and Kremser, and to use, or obvious to try to use the combination of carbon dioxide and nitrogen, in the weight ratio as taught by Kremser, as the blowing agent used to form the closed cell PEBA foam of Cocquet et al, so to ensure said foam of Cocquet et al having improved quality and visually appealing surfaces with fine bubbles and since it would have been obvious to choose material based on its suitability. 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
44. Since the foam of Cocquet et al in view of Kremser and Farris et al is the same as that claimed in instant invention, and is produced by essentially the same process as that claimed in instant invention, therefore, the foam of Cocquet et al in view of Kremser and Farris et al will intrinsically and necessarily have the properties, including density, expansion rate of 2-25 or at least 6%, rebound resilience, compression set, that are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention, and further be at least partially recyclable (as to instant claims 33). 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.
45. It is further noted that instant specification does not provide sufficient evidence of criticality in using the mixture of 20-95%wt of nitrogen and 5-80%wt of carbon dioxide as the blowing agent to foam the PEBA. Thus,
1) Inventive examples 1 and 2 show the use of a single mixture of 75%wt of nitrogen and 25%wt of carbon dioxide (Table of instant specification), wherein instant claim 1 is significantly broader and recites that either nitrogen or carbon dioxide could be the major component.
2) Examples 3-4 of instant invention, which are comparative, show the use of nitrogen as the blowing agent alone.
3) However, all Examples 1-4, i.e. both inventive and comparative, show the rebound resilience of more than 59%, and more than 55% as claimed in instant invention.
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).
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).
46. Claims 1, 3-12, 14-33 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).
47. 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.
48. Since no Terminal Disclaimer has been filed, the rejection is maintained.
49. With respect to the amended claims 1 and 20, and newly added claims 27-33,
U.S. Patent No. 11,008,464 claims the foam comprising rebound resilience of greater than 55%.
Further, US 11,008,464 recites the foam having density of as low as 0.1 g/cc (col. 9, lines 23-26); compression set of less than 10% (col. 9, lines 23-32); the physical expansion agent being mixed with the copolymer in liquid form and converted into a gas phase during the foaming step (col. 9, lines 7-10). Case law holds that those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 164 USPQ 619,622 (CCPA 1970).
Response to Arguments
50. Applicant's arguments filed on July 8, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
51. In addition, 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) Biesenberger et al (US 5,707,573) and Nishikawa et al (US 5,997,781) are the secondary references, applied for the specific teachings of the use of combination of nitrogen and carbon dioxide as blowing agents to form the thermoplastic resin foams.
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).
52. With respect to Applicant’s arguments regarding unexpected results of instant invention, it is further noted that instant specification does not provide sufficient evidence of criticality in using the mixture of 20-95%wt of nitrogen and 5-80%wt of carbon dioxide as the blowing agent to foam the PEBA. Thus,
1) Inventive examples 1 and 2 show the use of a single mixture of 75%wt of nitrogen and 25%wt of carbon dioxide (Table of instant specification), wherein instant claim 1 is significantly broader and recites that either nitrogen or carbon dioxide could be the major component. 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).
2) Examples 3-4 of instant invention, which are comparative, show the use of nitrogen as the blowing agent alone.
3) However, all Examples 1-4, i.e. both inventive and comparative, show the rebound resilience of more than 59%, and more than 55% as claimed in instant invention.
4) On the other hand, Cocquet et al explicitly teaches i) the blowing agent being at least one of nitrogen and carbon dioxide, providing rebound resilience of more than 55% and compression set of less than 10%; ii) the specific examples of Cocquet et al show the use of nitrogen as the blowing agent, providing rebound resilience of 61-65% and compression set of 6-8% (see col. 10, lines 60-65) and thus, based on the teachings of Cocquet et al that i) nitrogen alone can provide foams with said high rebound resilience and low compression set, and ii) combination of nitrogen with carbon dioxide can be used to foam PEBA, it would have been obvious to a one of ordinary skill to use, or obvious to try to choose and use nitrogen in combination with a minor amount of carbon dioxide to foam said PEBA of Cocquet et al as well, since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
Conclusion
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.
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, 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.
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.
/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
Prosecution Insights