Notice of Pre-AIA or AIA Status
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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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).
Claim Rejections - 35 USC § 112
Claims 1, 2, 4-12, 18, and 19 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.
Upon further consideration, claim 1 recites “wherein the thermally expandable composition after curing has a volume increase compared to the uncured composition in the range of 100 – 3000% when the thermally expandable composition is cured at 140°C - 250°C”. The scope of the claim is indefinite as the observed volume increase is not solely dependent on the compositional makeup of the thermally expandable composition and temperature used, but also the particular timeframe by which curing occurs. See for instance page 9 of Sauer (US 2022/0033660 A1). An otherwise identical expandable composition may exhibit a volume increase in or outside the range claimed depending on the curing time used. As the claim fails to define what particular conditions the volume increase corresponds to, the scope of the claim is unclear.
As claims 2, 4-12, and 18 depend from claim 1, they are rejected for the same issue discussed above. A rejection of claim 19 is precluded as a timeframe is specified.
Claim 1 requires the presence of an epoxy-functional polymer with epoxy moeities, but also recites “wherein the composition is substantially free of epoxy resins”. The scope of the claim is indefinite as the terminology “epoxy-functional polymer” and “epoxy resin” is not clearly delineated. An “epoxy resin” is commonly understood to mean any thermosetting resin based on epoxy groups (see Hawley, attached). While certain materials (e.g. bisphenol A epoxy resin) are commonly associated as “epoxy resins” in the art, in the context of curable synthetics any curable polymer material with epoxy moieties can be denoted as an “epoxy resin”. See for instance Fukai (US 2025/0114840 A1) where ethylene-glycidyl methacrylate copolymers (used in the examples of the instant specification as an epoxy polymer) is denoted as a type of “epoxy resin” (¶ 80-81). Thus, given the plain and ordinary meaning of these terms, claim 1 in a sense requires a specific “epoxy resin” (the epoxy-functional polymer with epoxy moieties) and then proceeds to exclude all epoxy resins. There does not appear to be an express definition of the term “epoxy resin” that delineates the term from “epoxy-functional polymer” as broadly used within the claim. Therefore, the metes and bounds of the claim are unclear.
As claims 2, 4-12, 18, and 19 depend from claim 1, they are rejected for the same issue discussed above.
Claim Rejections - 35 USC § 103
Claim(s) 1, 2, 6-10, 12, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ui (US 2014/0030539 A1) as evidenced by Fauzi (Sains Malaysiana 2015, 44(6), 869-874).
Regarding Claims 1, 2, 7, 9, 12, 18, and 19, Ui teaches expandable compositions (Abstract) and describes an embodiment in Example 4 comprising epoxy resin, azodicarbonamide blowing agent, dicumyl peroxide (free radical initiator), and dicyandiamide (guanidine derivative) (Table 1). Example 4 of Ui exhibits roughly 125 pbw polymer resins and 10 pbw blowing agent relative to 156 pbw composition (Table 1), equivalent to roughly 80 wt% and 6.4 wt% respectively. 100 pbw of ethylene-vinyl acetate thermoplastic with a melt flow rate of 3.5 g/10 min is used (Table 1; ¶ 164), equivalent to 80 wt% thermoplastic relative to polymer component. The EVA resin is not seen to interfere with the curing mechanism (see Page 36 of the specification). The examples achieve expansion ratios (unfoamed density / foamed density) spanning 9.8 – 11.2 (Table 1), equivalent to volume increases of roughly 880-1020% after foaming for 20 min at 160 degrees C (¶ 159).
With respect to epoxy polymer/resin, Ui teaches substances such as novolak type epoxy resins (¶ 72), construed as polymer with epoxide moieties as part of a polymeric backbone. Ui teaches hydrophilic resin such as epoxy polymer are present at 1-20 pbw based on 100 pbw of vinyl copolymer (Abstract; ¶ 70), which overlaps “substantially free of” (see Page 38, Lines 10-12 of the specification). It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Ui suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Ui. See MPEP 2123.
The particular embodiments of Ui differ from the subject matter claimed in that an endothermic blowing agent is not used. In this regard, Ui teaches a range of blowing agents are suitable and either azodicarbonamide or bicarbonate salts, such as sodium bicarbonate, can be used (¶ 47-49). Accordingly, it would have been obvious to substitute azodicarbonamide with other suitable blowing agents such as sodium bicarbonate, thereby predictably affording workable expandable compositions in accordance with the teachings of Ui. As evidenced by Fauzi, bicarbonate salts are known endothermic chemical blowing agents which decompose to water and carbon dioxide (Page 870). The use of endothermic blowing agents would result in compositions substantially free of exothermic blowing agents.
Regarding Claim 6, Ui teaches ammonium bicarbonate can be used (¶ 47-49). The use of ammonium bicarbonate would result in compositions without sodium/potassium bicarbonate.
Regarding Claim 8, Example 4 of Ui exhibits roughly 0.5 pbw dicyandiamide relative to 156 pbw composition (Table 1), equivalent to roughly 0.32 wt%.
Regarding Claim 10, Example 4 of Ui further comprises trimethylolpropane triacrylate (Table 1, ¶ 174; TMPTA), which exhibits a molecular weight of less than 2,500 and an acrylate functionality of 3.
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ui (US 2014/0030539 A1) in view of Kohlstrung (US 2017/0002164 A1) as evidenced by Fauzi (Sains Malaysiana 2015, 44(6), 869-874).
The discussion regarding Ui and Fauzi within ¶ 11-16 is incorporated herein by reference.
Regarding Claims 4 and 5, Ui differs from the subject matter claimed in that a multifunctional organic acid with at least two acidic functional groups is not described as blowing agent. Kohlstrung is also directed toward thermally expandable compositions (Abstract) and notes endothermic blowing agents such as citric acid are known to be useful for advantages such as not being harmful to health and can provide more uniform foam structure, citric acid being noted as an ecologically sustainable alternative (¶ 11-12, 15, 18). It would have been obvious to one of ordinary skill in the art to utilize the polyacid blowing agents of Kohlstrung within the compositions of Ui because such blowing agents are not harmful to health and can provide more uniform foam structure, and are ecologically sustainable as taught by Kohlstrung. Kohlstrung teaches the polycarboxylic acids such as citric acid or salts thereof (¶ 15-16, 18). It is therefore inferred by Kohlstrung the free acid form can be used. Given the endorthermic blowing agents are identical to those claimed/described within the specification, such blowing agents decompose to form essentially carbon dioxide/water in the absence of evidence to the contrary.
Claim(s) 1, 2, 4-12, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walker (US 2008/0265516 A1) in view of Kohlstrung (US 2017/0002164 A1).
Regarding Claims 1, 2, 4-9, and 18, Walker teaches thermally expandable compositions (Abstract; Examples) and describes embodiments within the examples comprising epoxy polymer, blowing agent, peroxy curing agent (free radical initiator), and amine curing agent (Table C). The amine curing agent can be guanidine derivatives such as cyanoguanidine / dicyandiamide (¶ 20). Walker suggests embodiments where polymers are present at roughly 52 wt%, blowing agent is present at roughly 4.4 wt%, and amine curing agent is present at roughly 0.63 wt%, whereby thermoplastics such as EVA are in excess of 35 wt% relative to weight of polymers (Table C). Epoxy polymer can be ethylene-(meth)acrylate-glycidyl methacrylate terpolymer (Tables A through D), which has epoxy moieties on backbone. Walker describes volume increases consistent with the range claimed (Tables A through D exhibit increases spanning 197-1000%). Foaming temperatures span 150-300 degrees C (¶ 14, 35), which overlaps the range claimed. Walker also describes overlapping blowing agent contents (0.001-17 wt% at ¶ 25; 3-13.76 wt% in examples spanning Tables A through D). Walker teaches embodiments where epoxy resin is included at 1 wt% (Table A) which is “substantially free of” epoxy or alternatively, the amount of epoxy is at least about 1 wt% (¶ 12), which overlaps “substantially free of” (see Page 38, Lines 10-12 of the specification). It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Walker suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Walker. See MPEP 2123.
While a numerical quantity of MFR is not provided for thermoplastic(s), Walker expressly teaches the materials should have relatively high melt viscosities so as to assist in resulting self-supporting characteristics (¶ 9, 17; Claim 14). See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable/optimal melt flow indexes of the polymers of Walker within the scope of the present claims so as to produce desirable self-supporting characteristics. Walker differs from the subject matter claimed in that endothermic blowing agent is not used.
Kohlstrung is also directed toward thermally expandable compositions (Abstract) and notes endothermic blowing agents such as citric acid are known to be useful for advantages such as not being harmful to health and can provide more uniform foam structure, citric acid being noted as an ecologically sustainable alternative (¶ 11-12, 15, 18). It would have been obvious to one of ordinary skill in the art to utilize the polyacid blowing agents of Kohlstrung within the compositions of Walker because such blowing agents are not harmful to health and can provide more uniform foam structure, and are ecologically sustainable as taught by Kohlstrung. Kohlstrung teaches the polycarboxylic acids such as citric acid or salts thereof (¶ 15-16, 18). It is therefore inferred by Kohlstrung the free acid form can be used. The use of Kohlstrung’s endothermic blowing agents suggest compositions substantially free of exothermic blowing agents. Given the endorthermic blowing agents are identical to those claimed/described within the specification, such blowing agents decompose to form essentially carbon dioxide/water in the absence of evidence to the contrary.
Regarding Claim 10, Walker describes embodiments that further comprise low molecular weight crosslinkers, such as dipentaerythritol pentaacrylate (Table A), which has a molecular weight of less than 2,500 and a functionality greater than 3.
Regarding Claim 11, Walker describes embodiments comprising terpolymers of ethylene, (meth)acrylate ester, and glycidyl (meth)acrylate (Tables A through C).
Regarding Claim 12, Walker describes embodiments comprising polyethylene-vinyl acetate (Tables A through D), which is not seen to interfere with the curing mechanism (see Page 36 of the specification).
Regarding Claim 19, Walker describes volume increases consistent with the range claimed (Tables A through D exhibit increases spanning 197-1000%). Foaming temperatures span 150-300 degrees C (¶ 14, 35), which overlaps the range claimed. While not describing specific foaming timeframes, Walker nevertheless teaches heating at the required temperatures causes the foams to expand so as to fill structures/cavities (¶ 35). Thus, the timeframe of foaming is a known result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover optimal or workable heating timeframes within the scope of the present claims so as to produce desired degrees of foaming while avoiding costs associated with excessive heating timeframes.
Response to Arguments
Applicant's arguments filed 5/26/2026 have been fully considered but they are not persuasive.
Applicant generally urges an “epoxy-functional polymer” is defined within the specification as a polymer with epoxy-functional groups whereas an “epoxy resin” refers to polymers made from epoxy-reactive liquid and/or solid prepolymer epoxy polymers. This is not found persuasive. While certain materials (e.g. bisphenol A epoxy resin) are commonly associated as “epoxy resins” in the art, in the context of curable synthetics any curable polymer material with epoxy moieties can be denoted as an “epoxy resin”. See for instance Fukai (US 2025/0114840 A1) where ethylene-glycidyl methacrylate copolymers (used in the examples of the instant specification as an epoxy polymer) is denoted as a type of “epoxy resin” (¶ 80-81). Thus, given the plain and ordinary meaning of these terms, claim 1 in a sense requires a specific “epoxy resin” (the epoxy-functional polymer with epoxy moieties) and then proceeds to exclude all epoxy resins. There does not appear to be an express definition of the term “epoxy resin” that delineates the term from “epoxy-functional polymer” as broadly used within the claim.
Applicant generally argues Ui requires significant quantities of epoxy resin. This is not found persuasive as the novolac resins taught by Ui fall squarely within the scope of epoxy polymer within the claims. The concentration ranges taught by Ui overlap those encompassed by “substantially free of” per the definition within the specification.
Applicant also argues Waler’s examples include 1.00 wt% of epoxy resin. This is not found persuasive as the amounts used is consistent with “substantially free of” per the definition within the specification.
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 STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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, Curtis Mayes can be reached at (571)272-1234. 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.
/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
Prosecution Insights