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. The amendment filed by Applicant on July 1, 2025 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, instant claim 1 has been amended to limit the first component in the composition to an olefin block copolymer only. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
3. Claims 10, 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 10 and 15 recite limitations already present in the amended claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
4. Claims 1-12, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Chou et al (US 2005/0288440) in view of Martinez et al (US 2006/0205833) and Lin et al (US 2019/0276624), as evidenced by Lotader AX8900 flyer.
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
5. Chou et al discloses a foam composition and foam articles comprising:
A) 40-95%wt of ethylene- acrylate copolymer further comprising glycidyl methacrylate units, and may further comprise carbon monoxide units ([0014]-[0015]); the acrylate monomer units are present in amount of 15-40%wt ([0022], as to instant claims 1-2);
B) 5-60%wt (as to instant claims 1 and 15) of a soft ethylene polymer (Abstract), such as copolymer of ethylene and alpha olefin ([0018]), produced by metallocene catalysts ([0018]); having density of less than 0.89 g/cc and melt index of 0.5-30 g/10 min ([0019], as to instant claims 1, 10-11);
C) about 0.01%wt of a cross-linking agent ([0029]);
D) 0.2-10%wt of a blowing agent, specifically azodicarbonamide ([0030]-[0031], as to instant claims 3, 5);
E) about 1%wt of an activator, specifically Zn stearate ([0032], as to instant claims 6-7).
The composition is having high resilience and high softness, low compression set ([0047]).
6. As to instant claim 12, the composition may comprise peroxide crosslinking agents ([0027]). Since peroxide crosslinkers “may” be present, i.e. appear to be an optional component, therefore, the composition maybe also free from peroxide cross-linkers.
7. Since the azodicarbonamide used as the blowing agent is the same blowing agent used and claimed in instant invention (instant claim 5), releases azo-containing compounds, therefore, such released azo-containing compounds will intrinsically and necessarily, at least partially, react with glycidyl methacrylate to cross-link the said component A) (as to instant claims 3-4). 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.
8. Though Chou et al recites the soft ethylene-alpha olefin copolymer used as the component B), Chou et al does not explicitly recite said ethylene-alpha olefin being a block copolymer.
9. However, Martinez et al discloses a foamable composition and soft foams produced from said composition (Abstract) comprising:
a) an ethylene/alpha olefin multi-block copolymer (Abstract), wherein the multi-block copolymer comprises at least one hard block/segment and as high as 99%wt of a soft block/segment ([0049]), having density of 0.855-0.935 g/cc ([0075], [0068], as to instant claims 1, 10) and MFR most preferably 0.3-10 g/10 min, or 5 g/10 min ([0095], as to instant claims 1, 11), specifically ethylene-octene block copolymer ([0070], as to instant claims 8-9);
b) a blowing agent (Abstract) including azodicarbonamide ([0139]);
further in combination with other polymers including functionalized, such as EVA ([0134]).
10. Since both Martinez et al and Chou et al are related to foams produced from soft foamable compositions based on ethylene/alpha olefin copolymers having low density and low MFR, and thereby belong to the same field of endeavor, wherein Martinez et al discloses the use of ethylene/alpha olefin multi-block copolymers for preparing such soft foams, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Martinez et al and Chou et al, and to use, or obvious to try to use the ethylene/alpha olefin multi-block copolymer of Martinez et al as the ethylene/alpha olefin copolymer component B) in the composition of Chou et al, since such multi-block copolymers are specifically cited as being used for making foams and it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
11. Though Chou et al recites the component A) being a copolymer of ethylene with 15-40%wt of methyl acrylate, further comprising glycidyl methacrylate, Chou et al does not explicitly teach the amount of glycidyl methacrylate units.
12. However,
1) Lin et al discloses an expandable composition comprising:
an epoxy-functional polymer, preferably ethylene-glycidyl methacrylate copolymer commercially available under a trademark Lotader AX8900 (Abstract, [0027], [0015]); in combination with block or random polyethylene copolymers ([0060], [0061]), further comprising azodicarbonamide blowing agent and being substantially free from peroxides ([0076], [0105]).
2) As evidenced by Lotader AX8900 flyer, the commercial product Lotader AX8900 comprises 24%wt of methyl acrylate units, 8%wt of glycidyl methacrylate units with balance being ethylene (see the flyer).
13. Since both Chou et al and Lin et al are related to expandable/foam compositions based on polyethylene and ethylene-acrylate-glycidyl methacrylate copolymer, using azodicarbonamide as blowing agent, and thereby belong to the same field of endeavor, wherein Lin et al specifies the use of commercial ethylene-acrylate-glycidyl methacrylate copolymer such as Lotader AX8900 in such compositions, therefore, based on the combined teachings of Chou et al and Lin et al, it would have been obvious to a one of ordinary skill in the art to choose and use the commercial ethylene-methyl acrylate-glycidyl methacrylate copolymer such as Lotader AX8900 as the ethylene-methyl acrylate-glycidyl methacrylate copolymer component A) in the composition of Chou et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
14. All ranges in the composition of Chou et al in view of Martinez et al and Lin et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
15. Claims 1-13, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Chou et al (US 2005/0288440) in view of Martinez et al (US 2006/0205833) and Lin et al (US 2019/0276624), as evidenced by Lotader AX8900 flyer, in further view of Kajihara et al (US 2009/0249645).
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
16. The discussion with respect to Chou et al (US 2005/0288440) in view of Martinez et al (US 2006/0205833) and Lin et al (US 2019/0276624), set forth in paragraphs 4-14 above is incorporated here by reference.
17. Though Chou et al does not teach the composition comprising a mineral oil.
18. However, Kajihara et al discloses a foam composition used for making foamed articles having consistent quality ([0015]), comprising:
an ethylene-alpha olefin copolymer having density of 0.850-0.910 g/cc, MFR of 0.1-25 g/10 min, or 0.1-10 g/10 min ([0048], [0050], [0216]), produced in the presence of metallocene catalyst ([0052]), specifically ethylene-octene copolymer ([0276], as to instant claims 1, 8-9) further in combination with azodicarbonamide blowing agent ([0142]) and paraffin oil ([0193], as to instant claim 13).
19. Since Kajihara et al and Chou et al are related to foam compositions used for making foamed articles, based on ethylene-alpha olefin copolymers having a low density of less than 0.890 g/cc, and thereby belong to the same field of endeavor, wherein Kajihara et al teaches the use of ethylene-alpha olefin copolymer having density of 0.850-0.910 g/cc, MFR of 0.1-25 g/10 min, or 0.1-10 g/10 min, produced in the presence of metallocene catalyst, specifically ethylene-octene copolymer, wherein such composition provides excellent heat resistance, flexibility, elasticity ([0196]) further in combination with a paraffin oil, therefore, based on the combined teachings of Kajihara et al and Chou et al in view of Martinez et al and Lin et al, it would have been obvious to a one of ordinary skill in the art to choose and use in the composition of Chou et al in view of Martinez et al and Lin et al, at least partially, the ethylene-octene multi-block copolymer further in combination with a paraffin oil so to improve heat resistance, flexibility, elasticity of the foam composition and foamed articles of Chou et al in view of Martinez et al and Lin et al, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
20. Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Chou et al (US 2005/0288440) in view of Martinez et al (US 2006/0205833), Lin et al (US 2019/0276624) and Kajihara et al (US 2009/0249645), as evidenced by Lotader AX8900 flyer, in further view of Chee et al (US 2012/0108134).
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
21. The discussion with respect to Chou et al (US 2005/0288440) in view of Martinez et al (US 2006/0205833), Lin et al (US 2019/0276624) and Kajihara et al (US 2009/0249645), set forth in paragraphs 15-19 above, is incorporated here by reference.
22. Though Chou et al in view of Lin et al, Martinez et al and Kajihara et al do not teach the foam being used as one of the layers in an artificial leather article,
Chee et al discloses an artificial leather comprising a multi-layer structure, wherein the middle layer is a foam layer (Abstract), said foam layer is based on ethylene-alpha olefin copolymers, blowing agents, processing aids ([0008], [0049]).
23. Since Chee et al explicitly teaches the ethylene-alpha olefin copolymer-based foams being used as the middle layer of the multi-layer artificial leather, therefore, based on the combined teachings of Chee et al and Chou et al in view of Lin et al, Martinez et al and Kajihara et al, it would have been obvious to a one of ordinary skill in the art to use, or obvious to try to use the ethylene-alpha olefin copolymer-based foam of Chou et al in view of Lin et al, Martinez et al and Kajihara et al as the middle layer in the artificial leather, since such foam of Chou et al in view of Lin et al, Martinez et al and Kajihara et al comprises high resilience and high softness, elasticity and flexilibity, and since it would be obvious to choose material based on its suitability. 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
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
24. Claims 1-15 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of a copending application 17/788,593 (published US 2023/0036124) in view of Martinez et al (US 2006/0205833), Chou et al (US 2005/0288440), Kajihara et al (US 2009/0249645), and Chee et al (US 2012/0108134). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
25. The copending application 17/788,593 claims a foam formed from a composition, wherein the composition comprises:
at least 40 wt.%, based on the composition, of an E/X/Y/Z epoxy-containing ethylene interpolymer, wherein E is an ethylene monomer and comprises greater than 50 wt.% of the interpolymer, X is an (meth)acrylate, alkyl (meth)acrylate, or vinyl acetate and comprises from 0 to 40 wt.% of the interpolymer, Y is glycidyl methacrylate and comprises 0.5 to 15 wt.% of the interpolymer, wherein the wt.% is based on the total amount of polymerizable monomers, and Z is a copolymer unit derived from comonomers selected from the group consisting of carbon monoxide, sulfur dioxide, and acrylonitrile and comprises from 0 to 10 wt.% of the interpolymer;
from 0.1 to 10 wt.%, based on the composition, of a chemical blowing agent;
from 0.1 to 10 wt.%, based on the composition, of an activator; and
less than 0.05 wt.%, based on the composition, of a curing agent.
X comprises from 1 to 40 wt.% of the interpolymer.
The chemical blowing agent decomposes to liberate one or more azo or nitrogen-containing compounds, specifically is azodicarbonamide.
The epoxy-containing ethylene interpolymer is a cross-linked epoxy-containing ethylene interpolymer produced by reaction of the glycidyl methacrylate and the one or more azo compounds or nitrogen-containing compounds liberated by the chemical blowing agent. The activator is a metal stearic acid salt, specifically zinc stearate.
The composition is free of peroxides.
26. The application 17/788,593 does not specify the composition further comprising ethylene-alpha olefin block copolymer, specifically ethylene-octene copolymer, having specific density and melt index.
27. However,
1) Martinez et al discloses a foamable composition and soft foams produced from said composition (Abstract) comprising:
a) ethylene/alpha olefin multi-block copolymers (Abstract), wherein the multi-block copolymer comprises at least one hard block/segment and as high as 99%wt of a soft block/segment ([0049]), having density of 0.855-0.935 g/cc ([0075], [0068], as to instant claims 1, 10) and MFR of most preferably 0.3-10 g/10 min, or 5 g/10 min ([0095], as to instant claims 1, 11), specifically ethylene-octene block copolymer ([0070], as to instant claims 8-9);
b) a blowing agent (Abstract) including azodicarbonamide ([0139]);
further in combination with other polymers including functionalized, such as EVA ([0134]).
2) Chou et al discloses a foam composition and foam articles comprising:
A) 40-95%wt of ethylene acrylate copolymer further comprising glycidyl methacrylate units, and may further comprise carbon monoxide units ([0014]-[0015]); the acrylate monomer units are present in amount of 15-40%wt ([0022], as to instant claims 1-2);
B) 5-60%wt of ethylene polymer (Abstract), such as copolymer of ethylene and alpha olefin ([0018]), specifically low density polyethylene, including metallocene-catalized; having density of less than 0.89 g/cc and melt index of 0.5-30 g/10 min ([0019], as to instant claims 1, 10-11);
C) about 0.01%wt of a cross-linking agent ([0029]);
D) 0.2-10%wt of a blowing agent, specifically azodicarbonamide ([0030]-[0031], as to instant claims 3, 5);
E) about 1%wt of an activator, specifically Zn stearate ([0032], as to instant claims 6-7).
The composition is having high resilience and high softness, low compression set ([0047]).
3) Kajihara et al discloses a foam composition used for making foamed articles having consistent quality ([0015]), comprising:
an ethylene-alpha olefin copolymer having density of 0.850-0.910 g/cc, MFR of 0.1-25 g/10 min, or 0.1-10 g/10 min ([0048], [0050], [0216]), produced in the presence of metallocene catalyst ([0052]), specifically ethylene-octene copolymer ([0276]) further in combination with azodicarbonamide blowing agent ([0142]) and paraffin oil ([0193], as to instant claim 13).
4) Chee et al discloses an artificial leather comprising a multi-layer structure, wherein the middle layer is a foam layer (Abstract), said foam layer is based on ethylene-alpha olefin copolymers, blowing agents, processing aids ([0008], [0049]).
28. Since application 17/788,593 and Chou et al are related to foam compositions based on ethylene-acrylate-glycidyl methacrylate copolymers, further comprising azo-based blowing agent, and thereby belong to the same field of endeavor, wherein Chou et al further discloses such composition comprising low density ethylene-alpha olefin copolymers, providing foams with high resilience and high softness, low compression set, Martinez et al specifically discloses the use of ethylene/alpha olefin multi-block copolymers for such soft foams, and Kajihara et al specifies the ethylene-alpha olefin copolymers used in foams being ethylene-octene copolymers and used in combination with paraffin oil, therefore, based on the combined teachings of application 17/788,593, Chou et al, Martinez et al and Kajihara et al, it would have been obvious to a one of ordinary skill in the art to introduce, at least partially ethylene-alpha olefin multi-block copolymers, such as ethylene-octene multi-block copolymers of Martinez et al, into the composition of application 17/788,593, so to further improve resilience, softness, flexibility of the composition of application 17/788,593 as well, especially since the ethylene/alpha olefin copolymers used in combination with ethylene-acrylate-glycidyl methacrylate copolymers for making foams are taught in the art, as shown by Chou et al. Further, since such ethylene-alpha olefin copolymer-containing foams are used as one of the layers in a multi-layer artificial leather, as shown by Chee et al, therefore, it would have been obvious to a one of ordinary skill in the art to use, or obvious to try to use said foam of application 17/788,593 in view of Chou et al, Martinez et al and Kajihara et al as a middle layer in the multi-layer artificial leather article as well, since it would have been obvious to choose material based on its suitability. 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
29. Therefore, the limitations claimed in instant invention are obvious variants of the limitations claimed in application 17/788,593 in view of Chou et al, Martinez et al, Kajihara et al and Chee et al.
30. Claims 1-15 are directed to an invention not patentably distinct from claims 1-9 of a copending application 17/788,593 (published US 2023/0036124) in view of Martinez et al (US 2006/0205833), Chou et al (US 2005/0288440), Kajihara et al (US 2009/0249645), and Chee et al (US 2012/0108134).
Specifically, see the discussion in paragraphs 24-29 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). The copending application 17/788,593, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
Response to Arguments
31. Applicant's arguments filed on July 1, 2025 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764