DETAILED ACTION
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 .
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.
Claims 1 – 4 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,201,032 to Shyu et al. (hereinafter Shyu) in view of US 2012/0021156 to Devisme et al. (hereinafter Devisme).
Regarding Claim 1. Shyu teaches a polymer composition comprising an ethylene vinyl acetate copolymer (Column 2, Lines 51 – 53).
Shyu is silent with respect to bio-based carbon content of the composition and portion of ethylene in the ethylene vinyl acetate copolymer which is obtained from a renewable source of carbon. However, Devisme teaches the concept of providing a copolymer of ethylene in which the ethylene is at least partially obtained from renewable starting materials [0006]. The amount of carbon resulting from renewable starting materials may be greater than 20 weight percent and up to 100 weight percent ([0034] and [0036]), which would be reasonably expected to correspond to a bio-based content as determined by ASTM D6866-18 Method B in a substantially similar or identical numerical range. Shyu and Devisme are analogous art as they are from the same field of endeavor, namely bio-based ethylene copolymer compositions. Before the effective filing date of the instantly claimed invention, it would have been obvious to use the renewable resource-based ethylene taught by Devisme to prepare the ethylene vinyl acetate copolymer of Shyu. The motivation would have been that providing a renewable resource-based ethylene would further reduce the content of non-sustainable, petrochemical-based components in the foam of Shyu, which would further assist in the reference’s objective of reducing plastic waste (see Column 1, Lines 14 – 23).
Regarding Claim 2. Shyu teaches the polymer composition of Claim 1 undergoes curing with a crosslinking agent, wherein a more preferred crosslinking agent provided therein is dicumyl peroxide (Column 2, Line 66 – Column 3, Line 11), i.e. a peroxide agent.
Regarding Claim 3. Shyu teaches a foam/article prepared from the foamable polymer composition of Claim 1 (Column 2, Lines 52 – 53). The polymer composition further comprises a foaming/blowing agent and dicumyl peroxide as a more preferred crosslinking agent (Column 2, Line 53 – Column 3, Line 11), i.e. a peroxide agent.
Regarding Claim 4. Shyu teaches an article prepared from the foamable polymer composition of Claim 1 (Column 2, Line 52 – Column 3, Line 17).
Response to Arguments
Applicant's arguments filed July 22, 2025 have been fully considered but they are not persuasive because:
A) Applicant argues that there is no reasonable expectation of success in the modification of Shyu with Devisme, as neither reference teaches the use of a bio-based ethylene as a monomer in an EVA polymer. However, bio-based ethylene and petroleum-based ethylene are chemically identical (see, for example, “Bio-based Ethylene Market Growth Opportunities and Forecast by 2028 at www.theinsightpartners.com/reports/bio-based-ethylene-market). Persons of ordinary skill in the art would consequently have a reasonable expectation of success in substituting the ethylene of unknown source in Shyu with a chemically identical and sustainably sourced bio-based ethylene.
B) Applicant additionally argues that the proposed combination of Shyu with Devisme would require removal of Shyu’s plant based fillers. The Office respectfully disagrees. The proposed modification suggested it would have been obvious to use the renewable resource-based ethylene taught by Devisme to prepare the ethylene vinyl acetate copolymer of Shyu. The motivation would have been that providing a renewable resource-based ethylene would further reduce the content of non-sustainable, petrochemical-based components in the foam of Shyu, which would further assist in the reference’s objective of reducing plastic waste (see Column 1, Lines 14 – 23). Thus, the outstanding rejection suggests it would have been obvious to further increase the bio-based content of the foam of Shyu beyond that initially provided by plant-based fillers of Devisme, rather than to substitute these fillers with the bio-based ethylene of Shyu.
C) In response to applicant's argument that Shyu and Devisme are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both references are in the field of the inventor’s endeavor. Though they particular source of the ethylene is not expressly disclosed by Shyu, both references are nonetheless related to ethylene copolymers. In addition, both references are reasonably pertinent to the particular problem with which the inventor was concerned, namely the development of products from renewable starting materials as replacements for conventional petrochemical based materials for the purposes of reducing negative environmental impacts. Shyu and Devisme are thus properly relied upon as a basis for rejection of the claimed invention.
D) Applicant argues that the present invention achieves unexpected results, improved carbon dioxide emissions and cumulative energy demand. However, expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof. In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967) The Office respectfully submits that the beneficial results observed in the instant application are reasonably considered to be expected. Persons of ordinary skill in the art would readily recognize that the use of products derived from natural sources, instead of fossil/petrochemical sources, is an effective means of reducing atmospheric carbon dioxide concentration increases, i.e. the greenhouse effect (see [0012] of US 2020/0263059). Cumulative energy demand would also be expected to be significantly lower for a natural/organic product, when compared with a petroleum-derived product (see, for example, [0155] of US 2013/0157029).
Conclusion
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764