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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 16, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on June 16, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set for the below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
4. Claims 36-47, 62-66 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.
As currently amended, instant claim 36 recites a limitation of “…generates foamed sintered artifacts with improved structural and functional property with respect to the same foamed and sintered artifacts obtained from expanded beads with uniform cell density and morphology and equivalent average density”, wherein said improved structural and functional property is one or more properties selected from the group consisting of compression modulus, yield strength, fatigue strength, shear modulus, flexural strength, and plateau stress.
However, it is not clear what the term “improved” with respect to said structural and functional property means in the present application, i.e. if the “improved” values of said property are being higher or lower than the original values; in other words, what are the original values of said property and what values of said property after said improvement.
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.
5. Claims 36-38, 40-47, 62-66 are rejected under 35 U.S.C. 103 as being unpatentable over Watkins et al (US 2014/0275306) in view of Iversen et al (US 2007/0264175).
6. Watkins et al discloses a process for providing foamed polymeric material, the process comprising:
1) providing beads or particles of a thermoplastic elastomer;
2) placing said pellets/beads into a closed pressurized container/vessel that can withstand high pressure (Abstract, [0021], [0051]) and the pressure in the vessel is maintained above the critical pressure of the foaming agent ([0051]);
3) providing blowing agents, specifically supercritical fluids including carbon dioxide (critical pressure 7.38 MPa, i.e. 73.8 bar) and/or nitrogen (critical pressure 3.39 MPa, i.e. 33.9 bar) ([0048]) into said pressurized container;
3) infusing and soaking said pellets/beads with said supercritical fluid under different pressures, for different lengths of time ([0013], [0052]);
4) rapidly depressurizing said container and further heating to foam the pellets/beads (Abstract, [0011], [0021]);
5) annealing the foamed pellets at an elevated temperature after the foaming process, followed by molding ([0063]), wherein the mold is filled with said foamed pellets of different densities, pellets are segregated into a plurality of different areas in the mold, and the pellets are molded at a temperature of 100-180⁰C into a shaped article ([0062]-[0067]),
wherein in the step 3) said pellets are soaked for different lengths of time, under different pressures (i.e. corresponding to “a predetermined time-varying pressure profile” of claim 36) to affect the amount of supercritical fluid infused into said pellets (corresponding to “controlled rate of absorption of the blowing agents” and “non-uniform internal distribution of the blowing agents within the polymeric material”), which results in foaming to different extents and producing foamed pellets with different densities (i.e. corresponding to “non-uniform density” of claim 36) ([0013], [0052], as to instant claim 36).
7. In paragraphs [0013] and [0052], Watkins et al explicitly teaches that pellets are soaked in the supercritical fluid for different lengths of time, at different temperatures, or under different pressures to affect the amount of supercritical fluid infused into the pellets, which will result in foaming to different extents and produce foamed pellets of different densities. Thus, based on the teachings of Watkins et al that said soaking can be conducted alternatively under different temperatures or under different pressures, it would have been obvious to a one of ordinary skill in the art to choose and use such soaking to be conducted at different pressures for different length of time, without changing the temperature, and further choose and use the desired/predetermined pressure profile to produce the foamed pellets with a desired non-uniform density profile, since it would have been obvious to choose process conditions as taught in the art suitable for preparing a desired product. 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:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(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
8. Since the pressure in the vessel is cited as been maintained above the critical pressure of the foaming agents, i.e. either above 73.8 bar in case of supercritical carbon dioxide as the foaming agent or above 33.9 bar in case of supercritical nitrogen as the foaming agent, therefore, it would have been obvious to a one of ordinary skill in the art that the pressure in the vessel was initially raised to above 73.8 bar, or above 33.9 bar (as to instant claim 1) and further varied, but to be consistently at least to a minor extent above 73.8 bar, or above 33.9 bar as well (as to instant claims 1, 42, 64-65, 45).
Further, in view of the teachings of Watkins et al that the pellets are soaked under different pressures, for different lengths of time ([0052]), it would have been obvious to a one of ordinary skill in the art to vary the applied pressures at different values of above 33.9 bar and/or above 73.8 bar for a various lengths of time, including either periodically or in no-periodic manner and without changing of temperature (as to instant claims 41, 66), so to prepare the specific different sets of pellets having different desired/pre-set amounts of supercritical carbon dioxide and/or supercritical nitrogen infused into them, thus to prepare said specific sets of foamed pellets having different desired/pre-set densities, thereby arriving at the present invention. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
9. Since in the step 5) the foamed pellets are annealed, placed in the mold, segregated together and further molded at a temperature of 100-180⁰C to formed shaped articles, therefore, said foamed pellets/beads will intrinsically and necessarily at least partially sinter together at said temperature (as to instant claims 36, 62). Further, since the process of Watkins et al is essentially or substantially the same as that claimed in instant invention, therefore, the foamed molded/shaped article of Watkins et al will intrinsically and necessarily have at least to a minor extent improved at least one of the structural and functional properties as claimed in instant invention, 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.
10. Though Watkins et al discloses the method for foaming pellets by soaking those in the supercritical fluid for different length of time and at different pressures to produce foamed pellets with different densities, Watkins et al does not explicitly teaches varying said pressures over time according to a predetermined pressure profile.
11. However, Iversen et al discloses a method for treating material, including particulate material such as granulate ([0172]), the material being polymeric such as ethylene, propylene, styrene, acrylic, urethane or epoxy resins, i.e. both thermoplastic and thermosetting resins, with a supercritical fluid to impregnate said granulate with said supercritical fluid ([0017], [0018], [0054], [0062], [0092], [0173]), wherein said impregnation is conducted in a pressure vessel and the method includes a step in which the pressure of the fluid in the vessel is varied according to a pre-selected schedule for a pre-determined period length (claim 3, [0013]) and the process allows to control pressure profile within the vessel ([0016]).
Thus, Iversen et al explicitly teaches a method and apparatus allowing varying pressure of the supercritical fluid during impregnation of the granules according to a pre-determined schedule for a pre-determined length of time.
12. Since Watkins et al discloses the method for foaming pellets by soaking those in the supercritical fluid for different length of time and at different pressures to produce foamed pellets with different densities and Iversen et al explicitly teaches a method and apparatus/vessel that allow varying pressure of the supercritical fluid in said vessel during impregnation of the granules according to a pre-determined schedule for a pre-determined length of time, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Iversen et al and Watkins et al, and to choose and use, or obvious to try to use the high pressure vessel allowing varying pressure of the supercritical fluid in said same vessel during impregnation of the granules according to a pre-determined schedule for a pre-determined length of time as taught by Iversen et al for impregnation of the pellets in the method of Watkins et al, so that the pellets having different amounts of the supercritical fluid infused into said pellets of Watkins et al, and thus having different densities, can be obtained in the same vessel according to a pre-determined pressure-variation schedule for a pre-determined length of time, thereby producing the foamed pellets having different densities of Watkins et al in-situ, in the same vessel, and since such method and apparatus are taught in the art as shown by Iversen et al and it would be obvious to apply such technique to modify the method of Watkins et al, thereby arriving at the present invention. 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:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(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
13. As to instant claims 37-38, the thermoplastic elastomer comprises polyurethane, polyester, polyamides ([0027]).
14. As to instant claim 40, 63, the pellets have size of 3-10 mm ([0026]).
15. As to instant claims 43-47, the foaming agents include supercritical carbon dioxide, supercritical nitrogen, which may be used in combination ([0047]-[0049]).
16. Claims 36-47, 62-66 are rejected under 35 U.S.C. 103 as being unpatentable over Watkins et al (US 2014/0275306) in view of Iversen et al (US 2007/0264175) and Harada et al (US 2012/0141794).
17. The discussion with respect to Watkins et al (US 2014/0275306) in view of Iversen et al (US 2007/0264175), set forth in paragraphs 5-15 above, is incorporated here by reference.
18. Watkins et al does not recite the use of thermosetting polymers in said process.
19. However, Harada et al discloses a process for producing expandable beads comprising the steps of:
a) preparing a base material in the form of beads or pellets having size of 0.2-5 mm ([0060]);
b) impregnating the base material with carbon dioxide, nitrogen under a high pressure greater than critical pressure, specifically 0.5-6 MPa ([0064]-[0067]);
c) expanding the impregnated beads by introducing those into a low- pressure atmosphere ([0070];
d) fusing the beads under heat media such as water vapor ([0075], [0079]), followed by molding to form molded articles ([0074]-[0075]),
wherein Harada et al explicitly teaches that the base resin in the form of beads or pellets includes both thermoplastic resins and thermosetting resins ([0026]), specifically thermosetting urea resin, epoxy or melamine resins, which may be used in combination ([0026]-[0027], as to instant claim 39).
20. Since Watkins et al in view of Iversen et al and Harada et al are related to processes for making expandable beads by impregnating base resin pellets with at least one blowing agent, followed by releasing said impregnated pellets into a low pressure atmosphere to expand, and further fusing said expanded beads and molding those to form molded articles, and thereby belong to the same field of endeavor, wherein Harada et al teaches that not only thermoplastic resins, but further thermosetting resins including urea, melamine and epoxy resins, can be used for making said expandable beads, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Harada et al and Watkins et al, and to either use, or obvious to try to use, at least in minor amount, thermosetting polyimide, epoxy or melamine resins in addition to thermoplastic resins to form the expandable beads and molded articles by said process of Watkins et al, especially since Watkins et al teaches that shoe soles are known in the art as being formed from thermosetting resins ([0004]), or use, or obvious to try to use the process of Watkins et al to form expandable beads having different densities from polyimide, melamine or epoxy resin and further foamed molded articles as well, since it would have been obvious to choose material based on its suitability, and further especially since Iversen et al teaches that epoxy and urethane resin granules can be impregnated with supercritical fluid as well ([0172]-[0173] of Iversen et al). 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:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(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
Response to Arguments
21. Applicant's arguments filed on May 18, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
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.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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