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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/29/25 has been entered.
Again, as a reminder, the Examiner makes the following statement regarding claim interpretation regarding the phrase "consisting essentially of".
This phrase limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristics” of the claimed invention (emphasis added). In other words, it does not matter if there’s an affect the characteristics of the prior art invention. The basic and novel characteristics of the claimed invention appear include density and hardness requirements in an expanded polymer composition. There is nothing to show that these characteristics are affected by the MAH polymer, as addressed more specifically below.
For purposes of searching for and applying prior art, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are this term is construed as equivalent to "comprising". If applicants contend that additional steps or materials in the prior art are excluded by "consisting essentially of” applicants has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the invention. In the absence of any such showing (as at this point in examination) this termed is given the weight of "comprising".
Also please note that 0.01 g/cm3 - 0.06 g/cm3 corresponds to a range of from .624 lb/ft3 – 3.75 lb/ft3 (the units found in the Kozma et al. reference).
Claims 1, 3 to 6, 9, 10, 12, 14 and 18 - 30 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.
In claim 1, the presence of “such as” in the list of fillers and additives is indefinite
as it is unclear what weight to give this exemplary, not limiting, phrase.
While not indefinite per se, the Examiner notes that “processing aids” is listed twice in the fillers and additives list.
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.
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 1, 5, 15, 18 to 21, 23, 26, 29 and 30 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Kozma et al. 6,221,928
Kozma et al. teach polymer compositions that contain a maleic anhydride comp-
onent. The teachings therein have been addressed in multiple office actions and as such will not be repeated.
Previously applicants attempted to avoid this rejection by arguing the presence of the MAH modified VLDPE in the EVA polymer composition of Kozma et al. As a result, and to stress that the claims remained anticipated, the last office action focused on the specific EPDM containing composition in Kozma et al. specifically referring to Example 4A. The Examiner notes, though, that the remarks included mention of why the MAH containing rationale was still applicable, and applicants are reminded that rejections are based on the entirety of the teachings in the prior art reference. Specific examples are referenced for convenience and ease of explanation. Applicants have overcome the anticipation rejection regarding the EPDM containing composition in 4A by limiting the Shore 00 hardness to 20 to 40. Thus the rejection rationale will return to the MAH containing rationale and aspects of Kozma et al.
Again the teachings in Kozma et al. have been previously addressed. As they apply to the presently claimed composition, note the following.
The Examiner calls specific attention to Example 4C. This composition contains two different EVA polymers meeting the first and second EVA polymer as claimed. It also contains peroxide in an amount of 1.2 phr, which meets the claimed amount of crosslinking agent, and 20 phr azodicarboamide, a blowing agent. While this is slightly larger than the amount of blowing agent claimed, the claims remain anticipated over the totality of the teachings in Kozma et al. and the breadth of the claims as follows.
First, azodicarboamide is a known nucleating agent. See below, found after a quick search on the internet.
Nucleation: ADC can also function as a nucleating agent, especially in thermoplastic foams. It helps to control the formation of cell structures during the foaming process.
As such, any excess amount, such as the “extra” 2 phr, falls within the category of a nucleating agent in an amount which is embraced by claim 1.
Second, column 13, line 3, of Kozma et al. teaches that the foaming agent can be present in an amount of from 2 to 30 wt% such that the skilled artisan would have immediately envisioned an amount of 2 to 18 wt% in the composition 4C, particularly since this claimed amount is fully embraced by Kozma et al.
The foam in 4C meets the claimed density and hardness requirements.
In this manner the polymer composition of claim 1 is anticipated. The Examiner will address the presence of the MAH grafted polymer below.
The Examiner also calls attention can be drawn to Example 10 which includes two different EVA polymers in amounts that fall within the range of claim 1, as well as 18 parts of a blowing agent and 1.8 parts of a peroxide crosslinking agent. This anticipates each of the claimed components and amounts in claim 1. This also includes an MAH grafted polymer.
Example 10 does not specifically show the density and hardness properties but products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore if the prior art teach-es the identical chemical structure, the properties applicants claim are necessarily present. If applicants are of the position that the prior art does not possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art.
These specific compositions, as well as the teachings of Kozma et al. as a whole
include a maleic anhydride component. Such a component is not excluded from the claims, as noted below.
The issue regarding applicants’ burden on establishing what is excluded by the phrase “consisting essentially of” has been addressed in previous office actions. The response dated 5/29/25 has not addressed this burden such that the phrase “consisting essentially of” is given the meaning of “comprising”. With this interpretation the MAH grafted polyolefin in the teachings of Kozma et al. are embraced by claim 1.
On the other hand, and specifically regarding claims 29 and 30 which use the term “consisting of”, please note that the MAH grafted polymer meets many of the additives found in claim 1, even in the amended form.
For instance column 6, line 37, teaches that MAH containing materials are more easily processed, such that the MAH grafted polymer can be considered a processing aid. Column 6, line 45, teaches that MAH grafted polymer can act as a compatibilizer, an additive in claim 1. Column 6, line 45, teaches that the MAH grafted polymer can act as a bonding agent while column 7, line 25, teaches that it improves adhesion. As such the MAH grafted polymer can be considered an adhesion promoting agent.
For these reasons, the claims embrace the presence of the MAH grafted polymer in Kozma et al and as such each of the required components and physical properties of claims 1 and 29 are met by the teachings in Kozma et al.
For claim 5, note that the EVA is an elastomeric polymer.
For claim 9 see again the EVA polymers in Examples 4C and 10, as an example that meets this claim limitation.
For claim 18, again note that products of identical chemical composition cannot have mutually exclusive properties.
For claim 19 the expanded cells in Kozma et al. include closed cells. Note that the cells in Example 4C are closed (column 18, line 67).
For claims 20 and 21, see Kozma et al., column 1, 20 to 25 and column 15, line 62 to column 16, line 4.
For claim 23, note that these method steps were addressed supra, as a means of obtaining an EVA foamed polymer composition as found in claim 1.
For claim 26, see column 15, line 15 of Kozma et al.
For claim 30, note that supra regarding “consisting of”.
Claims 3, 4, 6, 10, 12, 14, 22, 24, 25, 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Kozma et al.
For claims 3, 4, 6, 12, 25 and 27, note that the person having ordinary skill in
the art would recognize that there are various ways in which to make an EVA polymer including both petroleum and biobased methods. This is evidenced by applicants’ specification, the ‘I’m Green” reference that was cited in previous office actions as well many other documents. In fact, the preparation of an EVA polymer using biobased components would be recognized as having environmental benefits. In this manner the presence of biobased and/or petroleum based EVA polymers would have been obvious to the skilled artisan.
For claim 10, note that adjust the melt flow of the EVA polymer will have a direct impact on the flow and properties of the final product such that one having ordinary skill in the art would have found it obvious to adjust the flow rate of the EVA polymer in an effort to adjust the flow rate and consequently the final product in Kozma et al.
For claims 14, 22 and 24, note that Kozma et al. teach various means of adjust-ing the expansion that occurs. See for instance column 14, line 13, column 16, line 23, and column 26. It is disclosed in Kozma et al. that the amount and type of blowing agent, as well as the degree of crosslinking affects the degree of expansion. As such one having ordinary skill in the art would have found it obvious, in an effort to optimize the expansion properties of the composition in Kozma et al., to find an expansion ratio within the claimed range. 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.
Also for claim 27, which includes a blowing accelerator, note that zinc oxide is added in the examples referenced above and is a blowing accelerator, as defined in the instant specification.
The above addresses each of the claims. While applicants’ remarks have been considered, none are applicable to the rejection rationale. It was not the limitation of the additive requirement that overcame the specific example in 4A but rather the change in the Shore 00 range. The language “consisting of” has been addressed, as has the language “consisting essentially of” and the limitation of the additives as not claimed.
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. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR.
Mgm
6/11/25
/MARGARET G MOORE/Primary Examiner, Art Unit 1765