DETAILED ACTION
Claim Rejections - 35 USC § 112
Claims 42 to 44 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It’s unclear from this language if both first and second EVA polymer are required.
Note that the language includes “at least one” indicating that only one is required but then includes “and” indicating that both are required. Claims 43 and 44 do not lend any clarity because these claims refer to an EVA polymer in the singular.
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.
Claims 31 to 46 are rejected under 35 U.S.C. 103 as being unpatentable over Kozma et al. 6,221,928.
The teachings in Kozma et al. were noted in previous office actions. This is the
prior art reference previously applied against the instant claims. Applicants have amended the claims to overcome the anticipation rejection but an obviousness rejection still applies.
In general, Kozma et al. teach a composition that specifically embraces every requirement with the exception of the expansion ratio.
Note that the blowing agent can be present in an amount of from .5 to 30 percent (column 12, line 54) or 2 to 30 percent (column 13, line 3). This embraces the entirety of the claimed range for the blowing agent component.
The crosslinking agent is present in a useful amount and one having ordinary skill in the art would have found it obvious to adjust the amount in an effort to determine the useful and appropriate properties associated therewith.
The top of column 6 teaches a Shore OO density of less than 50 such that this embraces the entirety of the claimed range 15 to 40.
Column 2, lines 54, teaches a density range and, while it is in lbs/ft3 this range embraces that claimed. Note for instance that the lower limit of 1.5 lbs/ft3 corresponds to .024 g/cm3.
In addition to that noted above which embraces, overlaps or renders obvious the claimed components and amounts, the Examiner draws specific attention to the working examples. For instance in Table 1 shows a composition having Shore OO and density values as claimed. The composition has a crosslinking agent (dicumyl peroxide) in an amount as claimed. This differs from that claimed in that 1) it does not contain a blow-ing agent in an amount as claimed and 2) it does not specify an expansion ratio.
With regard to this first difference, as noted above, the teachings in Kozma et al. embrace the entirety of the claimed range such that one having ordinary skill in the art would have found an amount of blowing agent within the claimed range to have been obvious. This is true particularly in view of the fact that this composition in Kozma et al. contains 14 phr blowing agent while applicants’ upper claimed limit if 13 phr. Additional emphasis on the obviousness is exemplified by the fact that obviousness exists where the claimed range and prior art range do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. For instance, the slight difference between 13 and 14 would not have been expected to result in a composition having unobvious differences, particularly in view of the general range of blowing agent disclosed by Kozma et al.
With regard to the second difference, as noted in the prior office action Kozma et al. provide teachings that would lead the skilled artisan to adjust the expansion ratio. See for instance column 14, lines 13 to 30, which refers to the amount of grafting having an effect on the optimal expansion. See also column 16, lines 23 to 30, which refers to modification prior to expanding, and column 15, lines 1 to 25, which refers to various means by which expansion occurs. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
In view of the above these two differences are rendered obvious.
Thus, in totality, considering the entirety of the teachings or considering the work-nig examples, claim 31 is rendered obvious by the prior art. This also renders obvious claim 46.
For claims 32 to 35, each of these amounts are within the range of foaming agent found in Kozma et al.
For clams 36 to 41, note that supra regarding the motivation to adjust and/or optimize the expansion ratio.
For claims 42 to 44, note that mixtures of different EVA polymers are taught by Kozma et al. See for instance Example 4, which also meets the claimed Shore OO and density and crosslinking agent requirements.
Also see the various EVA polymers in column 7, line 55, through column 8. For instance Elvax 260 has a melt flow of 6 g/10min, Elvax 350 has a melt flow of 19 g/10 min and Elvax 360 has a melt flow of 2 g/10min. These meet the requirement in claim 44.
For claim 45 note that this would appear to be a necessary outcome of the prior art composition that renders obvious the composition of claim 31.
In view of the amendment dated 11/13/25 which changed the scope of the claims the Examiner performed an updated review of the prior art. As such the following new ground of rejection is being made.
Claims 31 to 46 are rejected under 35 U.S.C. 103 as being unpatentable over Mahoney et al. 2006/0235097.
Mahoney et al. teach a foam composition that meets each physical property
found in claim 31. See the expansion value found in paragraph 19 which is greater than 100% and includes values well beyond 300%, meeting the requirements in dependent claims 36 to 41. See the Shore OO values in paragraph 21, including the specific values of 20, 30 and 40. See also the density in paragraph 18 which, when converted to g/cm3,
is a range of from .016 to .8.
Note too paragraphs 10 and 11 which teaches ranges of crosslinking promoter (a crosslinking agent) and foaming agent (blowing agent) of .001 to 25 wt%. These ranges embrace the entire ranges claimed for these components.
As such, the only difference between that specifically disclosed in Mahoney et al. and claim 31 is that this reference does not anticipate the amount of blowing agent or crosslinking agent. From these teachings, though, one having ordinary skill in the art would have been motivated to select an amount of blowing agent and crosslinking agent that falls within the claimed ranges in an effort to experiment with the teachings in Mahoney et al. in an effort to obtain useful and optimum results. Note that when the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Note that the Mahoney et al. embrace the ranges in claims 32 to 35 as well.
In this manner each of claims 31 to 41 are rendered obvious.
For claim 46, see paragraph 14 which teaches foaming.
For claims 42 to 44, see paragraph 9 which teaches ethylene vinyl acetate. While it is unclear what weight to give claim 42, note that mixtures of these polymers can be used such that the skilled artisan would have found a mixture of ethylene vinyl acetates to have been obvious.
Additionally, ethylene vinyl acetates meeting the requirements of claims 43 and 44 are well known and commercially available (as can be seen from the teachings in Kozma et al.) such that one having ordinary skill in the art would have been motivated to select commercially available ethylene vinyl acetates for ease and convenience which would render obvious the selection of such polymers.
For claim 45 note that this would appear to be a necessary outcome of the prior art composition that renders obvious the composition of claim 31.
Response to Arguments
Applicants traverse an obviousness rejection by stating that Kozma et al. fail to disclose or suggest a composition that comprises a blowing agent in an amount of from 2 to 13 phr and an expansion ratio as claimed.
Applicants appear to completely ignore the teachings inf Kozma et al. in columns 12 and 13, note above. This teaching includes the claimed range such that applicants’ arguments do not appear to apply to the currently claims.
In addition, applicants remarks fail to address the rejection rationale noted in the previous office action (and addressed above as well) regarding the obviousness of the expansion ratio. The Examiner agrees that Kozma et al. do not teach an expansion ratio as claimed but maintains that obtaining a foamed polymer composition having an expansion ratio as claimed would have been obvious over the teachings in Kozma et al.
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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
12/20/25
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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