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. No amendments to the claims have been entered in the above-identified application with the response submitted on June 3, 2026. Claims 1-16 are pending of which claims 12-15 are withdrawn and claims 1-11 and 16 are now under consideration.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-11 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hoefflin et al. (US 2007/0110951 A1).
Hoefflin et al. disclose a thermally expansible material (equivalent to the expansion material of the claimed invention) includes an epoxy resin; a plurality of thermoplastic polymers, wherein at least one thermoplastic polymer includes at least one chemical moiety capable of reacting with said epoxy resin; and a heat-activated blowing agent. The thermally expansible material is adhereable to a substrate during expansion. Such thermally expansible materials have long been used in the automotive industry and are used for sound-deadening (baffling) purposes and for structural reinforcement purposes. For example, certain expansible materials can be molded onto a carrier and placed into an automotive cavity such as a pillar. Then, the expansible materials can be heated to an activation temperature. When the material is activated, it expands. Upon expansion, the material adheres to at least part of the automotive cavity, effectively sealing the cavity. Following expansion, the material is cured. The cured material has a sound-deadening or baffling effect. Additionally, by way of example, certain expandable materials can provide structural reinforcement to surfaces, including surfaces in automobiles. For example, an expansible material (by itself or together with a carrier) can be disposed on, adjacent or near a substrate such as a plastic surface or a metal surface in an automotive structure such as a frame rail. The material is then heated to an activation temperature. When the material is activated, it expands. Upon expansion, the material adheres to at least a portion of the substrate. Following expansion, the material is cured. The cured material provides structural reinforcement for the substrate. That is, the substrate is less easily bent, twisted, crinkled and the like due to the presence of the cured material. Thermally expansible materials under the SIKABAFFLE trade name (identical to the expandable materials used in the instant invention as recited in the as-filed Specification) are used in the disclosed invention in combination with (a) an epoxy resin; (b) a plurality of thermoplastic polymers, wherein at least one thermoplastic polymer includes at least one chemical moiety capable of reacting with said epoxy resin; (c) a heat-activated blowing agent; the material being substantially free of a tackifier, and wherein said material is adhereable to a substrate during expansion. A modified or "activated" thermoplastic polymer has one or more reactive chemical moieties, at least one of which is repeating, that is capable of reacting with epoxy groups in the epoxy resin and is included in the thermally expansible materials. Activated polymers include but are not limited to anhydride-modified ethylene vinyl acetate polymer (equivalent to the matrix polymer that comprises ethylene-vinyl acetate of the claimed invention) and anhydride, ethylene, acrylic ester terpolymers. Ethylene vinyl acetate polymers are highly flexible, deliver cohesive strength and compatibility, ensure adequate adhesion to a wide range of substrates, and are highly resistant to rupture. A thermally expansible material can be used in a cavity in a structure where quietness is desired, such as in an automotive structure. One, non-limiting method of using a thermally expansible material this way is to injection mold (or otherwise affix or secure or introduce) the thermally expansible material to a carrier, and place the carrier into a cavity in an automotive structure. A carrier is not necessary; a thermally expansible material can otherwise be placed in or secured within a cavity before being heated to an activation temperature. In this non-limiting example, when the automobile is heated to an activation temperature, for example during a paint bake, the material can expand and substantially adhere to the substrate from which the cavity is formed, effectively sealing the cavity and thereby providing a baffling effect. The thermally expansible material, during and/or following expansion, adheres to a substrate. In one embodiment, the substrate comprises metal, including but not limited to cold rolled steel, galvanized steel, galvanized electro-coated steel and the like (equivalent to the body element of the claimed invention and meeting the limitations of claim 10). In another embodiment, the expanded material is bonded with both an e-coat (equivalent to the reinforcing layer of the claimed invention and meeting the limitations of claim 9) and the underlying metal. In another embodiment, the substrate comprises plastic and/or plastic coated with another material. (See Abstract and paragraphs 0002-0007, 0016-0020, 0024, 0027, 0036-0038, 0071, and 0072).
Hoefflin et al., as discussed above, does not specifically teach that the layer thickness of the expansion material in an unexpanded state is larger than a layer thickness of the reinforcing layer, the expansion material in an unexpanded state has a layer thickness of between 0.1 mm and 3 mm, the expansion material in an expanded state has a layer thickness of between 3 mm and 12 mm, the reinforcing layer has a layer thickness of between 0.05 mm and 0.2 mm, the area of the expansion material is greater than 0.1 m2, the area of the reinforcing layer is greater than 0.1 m2.
However, with regards to the thickness and concentration of each component, solution, the Examiner would like to point out that workable physical properties, such as thicknesses and concentrations, are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties. With regards to the limitations that the expansion material having an expansion rate of at least 200% and the expansion material can be expanded by a temperature of at least 120°C, the Examiner takes the position that such property limitations are inherent in the expansion material taught by Hoefflin et al. given that the chemical composition of the expansion materials as taught by Hoefflin et al. and that of the claimed invention are identical.
Alternatively, the limitation that the “expansion material having an expansion rate of at least 200%” and/or “a layer thickness of the expansion material in an unexpanded state is larger than a layer thickness of the reinforcing layer” is a property limitation of the intermediate product and does not result in a patentably distinct final product. In this case, whether the expansion rate is 200%, 100%, or 1%, the reinforced body element of the claimed invention is taught by Hoefflin et al., the claimed expansion rate or the layer thickness of the expansion material in an unexpanded state being larger than a layer thickness of the reinforcing layer does not impart any distinctive structural characteristics to the claimed reinforced body element.
Response to Arguments
4. Applicant's arguments filed on June 3, 2026 have been fully considered but they are not persuasive. Applicants traverse the rejection of claims 1-11 and 16 under 35 U.S.C. 103 as being unpatentable over Hoefflin et al. (US 2007/0110951 A1) and submit that the e-coat in Hoefflin is an electrodeposited primer coating applied directly onto the metal substrate and that there is nothing in Heofflin to suggest that the electrodeposited primer would be considered a reinforcing layer. Applicants further state that the e-coat is thus part of the substrate assembly to which the expansion material adheres and it is not a separate reinforcing layer positioned on top of the expansion material.
However, the claimed invention simply recites a reinforcing layer and there is nothing in the claims that precludes a e-coat from being a reinforcing layer. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the reinforcing layer has a specific structure) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, Applicants have not addressed that the limitation that the “expansion material having an expansion rate of at least 200%” and/or “a layer thickness of the expansion material in an unexpanded state is larger than a layer thickness of the reinforcing layer” is a property limitation of the intermediate product and does not result in a patentably distinct final product. In this case, whether the expansion rate is 200%, 100%, or 1%, the reinforced body element of the claimed invention is taught by Hoefflin et al., the claimed expansion rate or the layer thickness of the expansion material in an unexpanded state being larger than a layer thickness of the reinforcing layer does not impart any distinctive structural characteristics to the claimed reinforced body element.
Conclusion
5. THIS ACTION IS MADE FINAL. 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.
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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, CALLIE SHOSHO can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHEEBA AHMED/Primary Examiner, Art Unit 1787
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