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
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, 6-10, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Gopalan et al. (US 2018/0160767) and further in view of Wolschleger et al. (2018/0355138).
Gopalan et al. teaches a composition comprising a silane-grafted polyolefin (at least one polymer wherein the composition comprises silane groups), a free radical initiator (¶7 and ¶58), and a chemical blowing agent. The composition is expandable in that it comprises a blowing agent and is foamed (expanded). Gopalan et al. teaches an expandable composition a) at least one polymer P, b) at least one free radical initiator I, and c) at least one chemical blowing agent CBA, wherein the composition comprises silane groups of formula I (¶63-67). Examples of preferable initiator include peroxides. ¶58. Gopalan teaches that the foamed silane crosslinked polyolefin is produced by combining the disclosed components (¶ 85) including the polyolefin, silane crosslinker (such as vinyl trimethoxysilane), and grafting initiator (¶ 98) and other additives (¶ 98) (including chemical blowing agents (¶ 72)) before molding the composition. Examples of the silane crosslinking agent include vinyltrimethoxysilane, vinyltriethoxysilane. This meets instant claims 3-4. The silane crosslinker is present in the silane-grafted copolymer in an amount of from about 0.5 to about 5wt% (¶69 of Gopalan). This meets instant claims 2 and the amount in new claims 17, 18, and 20. The silane-grafted polyolefin of Gopalan also meets instant claims 1, 3, and 5-6.
Gopalan et al. do not expressly disclose that the composition comprising an epoxy-functional polymer EP in an amount of from 5 to 30wt%; that the composition includes an activator of instant claim 9; or that the composition includes a co-agent of claim 10.
However, Wolschleger et al. teach a thermally expandable composition including at least one polymer P; at least one peroxide; at least one chemical blowing (CBA), and at least one activator, wherein the activator includes at least one compound selected from formula (I),
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Wherein R1 and R4 are hydrogen atoms or monovalent alkyl radicals with 1 to 10 carbon atoms which optionally include oxygen atoms; R2 and R3 represent hydrogen atoms or monovalent alkyl radicals with 1 to 10 carbon atoms which optionally include oxygen atoms, nitrogen atoms, and/or aromatic moieties and R2 and R3 together form a divalent alkyl radical with 1 to 10 carbon atoms which optionally includes oxygen atoms, nitrogen atoms, and/or aromatic moieties. See ¶63-67 of Wolschleger et al. This meets instant claim 9.
The compositions of Wolschleger et al. further comprise polyfunctional acrylates with an acrylate functionality of at least 2 or 3 (¶78). This meets the co-agent of instant claim 10. See ¶78-79 of Wolschleger et al.
The compositions of Wolschleger et al. further comprise from, preferably, 9 to 15wt% of an adhesion promoter (¶77), with an expressly named example being ethylene-glycidyl-methacrylate copolymers. This meets the epoxy-functional polymer of instant claim 8 and the epoxy-functional polymer of instant claim 1, as well as the amount of instant claim 17. The amount overlaps the amount of EP recited in new claims 19-20. 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). It would have been obvious to one of ordinary skill in the art, based on the teachings of Wolschleger et al. to use an amount of adhesion promoter, which meets the instantly claimed EP, which meets the instant claim limitations of instant claims 19-20 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Both Gopalan and Wolschleger et al. relate to the field of expandable compositions including foams produced from polymeric compositions including a polymer, a peroxide initiator, and a chemical blowing agent. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the 9 to 15wt% of the adhesion promoter (¶77), with an expressly named example being ethylene-glycidyl-methacrylate copolymers, of Wolschleger et al. in the invention of Gopalan in order to improve the adhesion of the expanded compositions of Gopalan. See ¶76.
Additionally and alternatively, 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, addition of the epoxy resin of Wolschleger et al. is not only reasonable pertinent to the Applicant’s reason for addition, but is added for the exact reason as Applicants: i.e. as an adhesion promoter. Thus, it would have been obvious to one of ordinary skill in the art to add the 9 to 15wt% of an adhesion promoter (¶77), with an expressly named example being ethylene-glycidyl-methacrylate copolymers, as disclosed in Wolschleger et al., to the compositions of Gopalan, to solve the same problem as Applicants, i.e. to promote adhesion of the composition of Gopalan.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the activator disclosed in Wolschleger et al. in the invention of Gopalan in order to enable the controlled decomposition of the chemical blowing agents of Gopalan, especially at lower temperatures, for example below 150ºC (¶62).
Additionally and alternatively, 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, addition of the activator of Wolschleger et al., is not only reasonably pertinent to the Applicant’s reason for addition: i.e. to provide exceptional expansion volumes and highly stable foams when used together with a chemical blowing agent, including expansions over 1000% (see ¶71 of Wolschleger et al. and see page 22, lines 21 to page 23, line 2 of the instant specification). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the activator disclosed in Wolschleger et al. in the invention of Gopalan, to solve the same problem as Applicants, i.e. to provide exceptional expansion volumes and highly stable foams when used together with a chemical blowing agent, including expansions over 1000%, as expressly disclosed in Wolschleger et al.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the polyfunctional acrylates with an acrylate functionality of at least 2 or 3 as disclosed in Wolschleger et al. in the invention of Gopalan in order to improve the crosslinking of the polymers of Gopalan which thereby helps ensure formation of a stable foam structure. See ¶78 of Wolschleger et al.
Additionally and alternatively, 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, addition of the multifunctional acrylates of Wolschleger et al., is not only reasonable pertinent to the Applicant’s reason for addition, but is added for the exact reason as Applicants: i.e. to improve the crosslinkingof polymer components and aid in forming a stable foam. See page 24, lines 14-21 of the instant specification. Thus, it would have been obvious to one of ordinary skill in the art to add the polyfunctional acrylates with an acrylate functionality of at least 2 or 3 as disclosed in Wolschleger et al. in the invention of Gopalan to solve the same problem as Applicants, i.e. to improve the crosslinking of the polymers of Gopalan which thereby helps ensure formation of a stable foam structure. See ¶78 of Wolschleger et al.
Claims 1-4, 6-10, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wolschleger et al. (2018/0355138) and further in view of Gopalan et al. (US 2018/0160767).
Wolschleger et al. teach a thermally expandable composition including at least one polymer P; at least one peroxide (corresponding to the instantly claimed initiator of instant claims 1 and 7); at least one chemical blowing (CBA), and at least one activator, wherein the activator includes at least one compound selected from formula (I),
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Wherein R1 and R4 are hydrogen atoms or monovalent alkyl radicals with 1 to 10 carbon atoms which optionally include oxygen atoms; R2 and R3 represent hydrogen atoms or monovalent alkyl radicals with 1 to 10 carbon atoms which optionally include oxygen atoms, nitrogen atoms, and/or aromatic moieties and R2 and R3 together form a divalent alkyl radical with 1 to 10 carbon atoms which optionally includes oxygen atoms, nitrogen atoms, and/or aromatic moieties. See ¶63-67 of Wolschleger et al. This meets instant claim 9.
The compositions of Wolschleger et al. further comprise polyfunctional acrylates with an acrylate functionality of at least 2 or 3 (¶78). This meets the co-agent of instant claim 10. See ¶78-79 of Wolschleger et al.
The compositions of Wolschleger et al. further comprise from, preferably, 9 to 15wt% of an adhesion promoter (¶77), with an expressly named example being ethylene-glycidyl-methacrylate copolymers. This meets the epoxy-functional polymer of instant claim 8 and the epoxy-functional polymer of instant claim 1 and meets the amount of new claim 17. The amount also overlaps the amounts of new claims 19-20. 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). It would have been obvious to one of ordinary skill in the art, based on the teachings of Wolschleger et al. to use an amount of adhesion promoter, which meets the instantly claimed EP, which meets the instant claim limitations of instant claims 19-20 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Wolschleger et al. does not expressly disclose that the polymer P comprises silane groups of formula (I) of instant claim 1, in an amount of from 0.05 to 10wt% base on the expandable composition, wherein the silane groups are bonded to the at least one polymer P and/or the composition further comprises at least one alkoxysilane of formula (II) of instant claim 3, wherein the polymer P is a silane-functionalized polymer containing silane groups of formula (I), wherein the polymer is selected from silane-grafted ethylene-vinyl acetate copolymers, olefin silane copolymers, and olefin alkyl (meth)acrylate silane terpolymers as recited in instant claim 6.
However, Gopalan et al. teaches a composition comprising a silane-grafted polyolefin (at least one polymer wherein the composition comprises silane groups), a free radical initiator (¶7 and ¶58), and a chemical blowing agent. The composition is expandable in that it comprises a blowing agent and is foamed (expanded). Gopalan et al. teaches an expandable composition a) at least one polymer P, b) at least one free radical initiator I, and c) at least one chemical blowing agent CBA, wherein the composition comprises silane groups of formula I (abstract). Examples of preferable initiator include peroxides. ¶58. Gopalan teaches that the foamed silane crosslinked polyolefin is produce by combining the disclosed components (¶ 85) including the polyolefin, silane crosslinker (such as vinyl trimethoxysilane), and grafting initiator (¶ 98) and other additives (¶ 98) (including chemical blowing agents (¶ 72)) before molding the composition. Examples of the silane crosslinking agent include vinyltrimethoxysilane, vinyltriethoxysilane. This meets instant claims 3-4. The silane crosslinker is present in the silane-grafted copolymer in an amount of from about 0.5 to about 5wt%, preferably (¶69 of Gopalan). This meets instant claim 2 and also meets the amount of new claims 17-18 and 20. The silane-grafted polyolefin of Gopalan also meets instant claims 1, 3, and 5-6.
Both Gopalan and Wolschleger et al. relate to the field of expandable compositions such as foams producing using polyolefin polymers, initiators, and chemical blowing agents. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention use the silane-crosslinked polyolefin polymers disclosed in Gopalan in place of the polymers disclosed in Wolschleger et al. in order to provide improved mechanical properties including density, rebound, compression set, and durability. See ¶77 of Gopalan.
Claims 1-4, 6-10, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wolschleger et al. (2018/0355138) and further in view of Abe (US 2003/0199597).
Wolschleger et al. teach a thermally expandable composition including at least one polymer P; at least one peroxide (corresponding to the instantly claimed initiator of instant claims 1 and 7); at least one chemical blowing (CBA), and at least one activator, wherein the activator includes at least one compound selected from formula (I),
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Wherein R1 and R4 are hydrogen atoms or monovalent alkyl radicals with 1 to 10 carbon atoms which optionally include oxygen atoms; R2 and R3 represent hydrogen atoms or monovalent alkyl radicals with 1 to 10 carbon atoms which optionally include oxygen atoms, nitrogen atoms, and/or aromatic moieties and R2 and R3 together form a divalent alkyl radical with 1 to 10 carbon atoms which optionally includes oxygen atoms, nitrogen atoms, and/or aromatic moieties. See ¶63-67 of Wolschleger et al. This meets instant claim 9.
The compositions of Wolschleger et al. further comprise polyfunctional acrylates with an acrylate functionality of at least 2 or 3 (¶78). This meets the co-agent of instant claim 10. See ¶78-79 of Wolschleger et al.
The compositions of Wolschleger et al. further comprise from, preferably, 9 to 15wt% of an adhesion promoter (¶77), with an expressly named example being ethylene-glycidyl-methacrylate copolymers. This meets the epoxy-functional polymer of instant claim 8 and the optional epoxy-functional polymer of instant claim 1, and the amount of EP in new claim 17. The amount also overlaps the amount of new claims 19-20. 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). It would have been obvious to one of ordinary skill in the art, based on the teachings of Wolschleger et al. to use an amount of adhesion promoter, which meets the instantly claimed EP, which meets the instant claim limitations of instant claims 19-20 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Wolschleger et al. does not expressly disclose that the polymer P comprises silane groups of formula (I) of instant claim 1, in an amount of from 0.05 to 10wt% base on the expandable composition, wherein the silane groups are bonded to the at least one polymer P and/or the composition further comprises at least one alkoxysilane of formula (II) of instant claim 3, wherein the polymer P is a silane-functionalized polymer containing silane groups of formula (I), wherein the polymer is selected from the functional polymers of instant claim 6.
However, Abe teaches a silane-crosslinking expandable polyolefin resin composition comprising a silane-grafted polyethylene resin and a blowing agent (¶15). The silane-grafted polyethylene resin is produced by using vinyl-functional silane compounds which preferably have the formula RSiY3, with preferable examples being vinyl methoxysilane and vinyl triethoxysilane. This meets the formula (I) of instant claim 1 and also meets instant claims 3-6. The compositions of Abe further comprise a free radical generator with preferred examples being peroxides (¶25). Examples of the blowing agent used in Abe are chemical blowing agents. See ¶31. Abe teaches that the silane-grafted polyethylene resin is obtained by compounding 0.1 to 5 parts by weight of the vinyl-functional silane compound with 100 parts by weight of the linear low-density polyethylene. This amount falls within the range of instant claim 2 and the amounts of silane recited in new claims 17-18 and 20.
Both Abe and Wolschleger et al. relate to the field of expandable compositions such as foams comprising polyolefin polymers, peroxide initiators, and chemical blowing agents. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the silane-grafted polyethylene resin is produced by using vinyl-functional silane compounds which preferably have the formula RSiY3, with preferable examples being vinyl methoxysilane and vinyl triethoxysilane, including amounts of the silane compound, disclosed in Abe as the polymer in the expandable compositions of Wolschleger et al. in order to provide products having superior uniformity of cell structure and superior heat resistance, while also cutting down the time necessary for moisture crosslinking while providing uniform crosslinking. Using the polymers of Abe in Wolschleger et al. would improve the products of Wolschleger et al. (including uniform cell structure and improved heat resistance) while cutting down on production costs. See ¶77 of Abe.
Response to Arguments
Applicant's arguments filed with respect to the rejection of the claims over Gopalan et al. (US 2018/0160767) in view of Wolschleger et al. (2018/0355138); over Wolschleger et al. (2018/0355138) in view of Gopalan et al. (US 2018/0160767); and over Wolschleger et al. (2018/0355138) in view of Abe (US 2003/0199597) have been fully considered but they are not persuasive.
Applicant argues that the references are not combinable, alleging they are not analogous art.
This is not persuasive.
The test for analogous art is not whether the references are related to each other. The test is whether the references are in the field of the instantly claimed invention. As set forth in the discussion above, the references all relate to the same field as the instantly claimed invention, the field of the instantly claimed invention of which is expandable compositions such as foams comprising polyolefin polymers, peroxide initiators, and chemical blowing agents.
Additionally, there is no requirement that each reference teach identical materials in order to be combinable. If there was such a requirement, combinations of references would be essentially impossible. However, the rejection establishes that all of the references are from the field of the endeavor of the instantly claimed invention: expandable compositions such as foams comprising polyolefin polymers, peroxide initiators, and chemical blowing agents. This means the reference are analogous art to the instantly claimed invention, as set forth in MPEP 2141.01(a).
Applicant’s generalization regarding drill bits and metal alloys (see page 8, last 2 lines to page 9, 4) is not persuasive. The rejection is not analogous to something as simplified as “all references related to metal alloys are combinable,” which appears to be what Applicant is alleging. On the contrary, the combination of the references is based on their teaching of polymer compositions, comprising the same types of polymers, the same initiators, and the same type of chemical foaming agents, to produce the same type of product: foamed articles, which is the field of the instantly claimed invention.
Furthermore, in response to applicant's argument that the applied prior art references 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). As discussed in the rejection above, the components used in Wolschleger et al. (2018/0355138) cited to as not expressly disclosed in Gopalan, are not only reasonably pertinent to the Applicant’s problem, they are added for identical reasons. See the discussion in the rejection above. See MPEP 2141.01(a) for a detailed discussion regarding Analogous and Non-Analogous art.
As to Applicant’s argument on page 9 of the Remarks filed on 4/16/2026, Applicant argues that the temperatures disclosed in Gopalan et al. (US 2018/0160767) and Wolschleger et al. (2018/0355138) render the references not combinable.
This is not persuasive.
Neither reference is relied on for a processing temperature. A processing temperature is not recited in the elected instant claims. The elected invention of the instant claims is a product and not a method. Again, there is no requirement that the teachings of references be identical or that they require identical processing parameters in order to render the references combinable.
Applicant asserts that adding the silane-grafted polyolefin of Gopalan into Wolschleger would not allow low temperature curing.
This is not persuasive.
Applicant has provided no evidence in support of the contention that using the silane-crosslinked polyolefin polymers disclosed in Gopalan in place of the polymers disclosed in Wolschleger et al. would require higher temperature cures. As stated in MPEP 2145, “arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).”
Furthermore, Applicant has provided no evidence that using the silane-crosslinked polyolefin polymers disclosed in Gopalan in place of the polymers disclosed in Wolschleger would not provide improved mechanical properties including density, rebound, compression set, and durability. (¶34 of Gopalan). There is no requirement that the reference set forth specific ranges of numerical properties in order for a proper rationale to be present for the references to be combined. Gopalan expressly teaches that the purpose of the silane-crosslinked polyolefin is improved mechanical properties including density, compression set, and durability as recited in See ¶34. Thus, one of ordinary skill in the art would readily expect that addition of the silane-crosslinked polyolefin polymers disclosed in Gopalan would provide the improvement disclosed therein, i.e. density, compression set, and durability, when added to a foamed polymer composition (the field of endeavor of the instantly claimed invention).
Applicant asserts that the reference compositions of the instant specification, “represent what a person of ordinary skill in the art would expect from the prior art combinations cited by the Office Action,” on page 10 of the Remarks filed on 4/16/2026.
This is not persuasive.
First, Applicant has provided neither explanation nor evidence in support of the contention that the reference examples “represent what a person of ordinary skill in the art would expect from the prior art combinations cited by the Office Action.”
Furthermore, the requirements to persuasively demonstrate criticality and unexpected results are set forth in MPEP 716.02(a) through (f). Applicant has not met these requirements.
Data must be commensurate in scope with the claimed invention in order to persuasively demonstrate unexpected results, as stated in MPEP 716.02(d). Instant claim 1 recites “at least one polymer P…wherein the at least one polymer P is a silane-functionalized polymer containing silane groups of formula 1.” The data cited to as alleged support is not commensurate in scope with the genus “polymer,” which can be literally any polymer. The genus “polymer” contains hundreds of thousands of species (with branching and substitutions) and is not limited to the extremely specific polymer P used in the inventive examples requiring extremely specific amounts of ethylene, butyl acrylate, and vinyl silane (polymer P). Instant claim 1 does not even include a TP1 or TP2 polymer which are used in the examples of the instant specification. Instant claim 1 is not limited to the extremely specific initiator, chemical blowing agent, or epoxy resin used in the examples of the data of the instant invention. Claim 1 does not even include an activator, which is present in each of the inventive examples of the instant specification. One species of initiator is not sufficient to show that the alleged unexpected or critical results are achieved over the entire genus of “at least one free radical generator.” One species of chemical blowing agent is not sufficient to show that the alleged unexpected or critical results are achieved over the entire genus of “at least chemical blowing agent.” One species of epoxy-functional polymer is not sufficient to show that the alleged unexpected or critical results are achieved over the entire genus of “at least one epoxy-functional polymer.” Each of those genuses (for components (a) through (d)) contain hundreds, if not thousands with branching and substitutions, of species, and one material within each genus of component is not sufficient to show that the allegedly unexpected or critical results over the entire claimed genuses of compounds. Thus, at least MPEP 716.02(d) has not been met, which is required to persuasively show unexpected results.
Claim 1 is not limited to a copolymer of ethylene and glycidyl methacrylate as the at least one epoxy polymer EP. It is not clear from the data that use of a different epoxy resin would not produce the same or identical results. This is one reason why Applicants have not compared a sufficient number of tests inside and outside the instantly claimed composition, which is required to show unexpected results.
It is also not clear what trend the data is supposedly showing. In order to persuasively demonstrate unexpected results, the data must show what is expected, and how the instantly claimed invention deviates from what is expected, in order to show unexpected results. As there is no indication of what would be expected and no discussion of how the instantly claimed invention deviates from what is expected, the data does not provide evidence of unexpected results.
Furthermore, in Table 4, Ref-3 uses entirely different polymers, not only in that they are not silane grafted. Ref-3 appears to use a combination of 2 different ethylene vinyl acetate polymers while Ex. 6 uses a terpolymer of ethylene with 17wt% butyl acrylate and 2wt% vinyl silane. Of course these give different properties. However, the presence of different properties does not amount to unexpected results. The properties are not recited in the instant claims. It is also not clear that the alleged “unexpected improvement” is due to the silane-grafted polymer. It is also not clear that the same alleged expansion is achieved with any other silane-grafted polymer than the one which is a terpolymer of ethylene with 17wt% butyl acrylate and 2wt% vinyl silane. What happens with a different silane-grafted polymer? What happens with a different amount of vinyl silane? Because these questions are not answered, persuasive evidence of unexpected results is not present in the data of the instant specification.
The examples only show an ethylene vinyl acetate polymer which is grafted with silane. This is not sufficient to show that the same allegedly unexpected or surprising results occur over the entire claimed genus of silane-grafted polymers. This is another reason why the data does not show unexpected results.
Furthermore, Ex-1 contains no initiator, making this example outside the scope of instant claim 1, which requires an initiator. This provides evidence against criticality and unexpected results, because this example has a better Expansion 7d CKD @200ºC [%], which is 1197, than Examples falling within the scope of the instant claims, i.e. Ex-2 and Ex. 4. Ex-1 also has a better expansion loss @200ºC [%] than Inventive Ex-2 (41 versus 44%). This also provides evidence against unexpected results.
Applicant argues that Wolschleger in view of Abe does not teach the instantly claimed invention. Applicant then points out what each respective reference is missing.
This is not persuasive.
There is no requirement that a component “improve the suitability of” a composition “for its intended purpose,” nor does Applicant cite to where such a requirement is present in the MPEP. On the contrary, references are combinable when they both relate to the field of endeavor of the instantly claimed invention, which they are, as indicated in the rejection above. The rejection provides an express rationale to use the silane-grafted polymer of Abe in the invention of Wolschleger.
Applicant asserts that the improvements disclosed in Abe are “relative to a baseline polymer composition defined in Abe” as argued on page 13 of the Remarks filed on 4/16/2026.
This is erroneous and not persuasive.
First, Abe recites no such teaching that the comparison is “relative to a baseline foam” as asserted by Applicant, nor has Applicant cited to any portion of Abe which supports such a contention. Secondly, Applicant has provided no evidence to support the assertion that improvements are “relative to a baseline” foam of Abe. As stated in MPEP 2145, “arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).” Finally, Abe specifically and unambiguously states, it is the silane-crosslinking polyolefin resin composition disclosed therein which provides superior uniformity of cell structure and superior heat resistance. The improvements are specifically attributed, to the silane-grafted polyolefin of Abe. Thus, to say that it is “relative to a baseline foam,” is baseless and contradicts the teachings expressly stated in the reference. The combination is not “arbitrarily incorporating features of Abe into Wolschelger” as asserted on page 13 of the Remarks filed on 4/16/2026. The rationale to use the silane grafted polymer of Abe in Wolschleger, is disclosed in Abe, and that is for the purpose of providing superior cell structure and superior heat resistance. Again, a combination of references, does not require each feature of each reference to be the same, nor does a combination requirement that every feature of the secondary be imported into the primary reference. There is also no requirement that the primary reference teach a need for the rationale of the secondary reference. If there was such a requirement, combinations of references would be essentially impossible.
The secondary Abe reference, teaches the silane-grafted polymer of the instant claims, and a rationale to use it in the compositions of Wolschleger. The references are analogous art in that they are both from the field of endeavor of the instantly claimed invention. A known component is added to a known composition for a specific reason. Thus, the combination is proper.
There is no requirement that references contain identical teachings in order to be combinable, which is what appears to be what Applicant is arguing with regards to cure temperature. The claims do not recite a cure temperature, nor does the rejection rely on a cure temperature from one reference to be imported into the second reference. Abe is relied on for its teaching of a silane-grafted polymer, and Abe provides a rationale for using such a polymer in the invention of Abe. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the silane-grafted polyethylene resin is produced by using vinyl-functional silane compounds which preferably have the formula RSiY3, with preferable examples being vinyl methoxysilane and vinyl triethoxysilane, including amounts of the silane compound, disclosed in Abe as the polymer in the expandable compositions of Wolschleger et al. in order to provide products having superior uniformity of cell structure and superior heat resistance, while also cutting down the time necessary for moisture crosslinking while providing uniform crosslinking. Using the polymers of Abe in Wolschleger et al. would improve the products of Wolschleger et al. (including uniform cell structure and improved heat resistance) while cutting down on production costs. See ¶77 of Abe. These improvements have nothing to do with a particular temperature and thus, their combination is proper for the reasons provided in the rejection.
Furthermore, Wolschleger et al. expressly teaches a range of expansion over a wide temperature range, which is from 120-200ºC (see ¶7), which includes the 180ºC argued by Applicants as being used in Abe. The cure temperature disclosed in Wolschleger et al. is from 120ºC to 250ºC (see ¶89), which again, includes the 180ºC disclosed in Abe. Thus, even if temperatures were being imported from the secondary Abe reference into the primary Wolschleger et al. reference, the temperature disclosed in Abe falls within the cure temperature disclosed in Wolschleger et al. See ¶89 of Wolschleger et al. and ¶59 of Abe. Therefore, a person of ordinary skill could have and would have been expected that the teachings of the references are ‘compatible,’ contrary to Applicant’s argument at page 13 of the Remarks filed on 4/16/2026.
As expressly stated in the rejection above, both Abe and Wolschleger et al. relate to the field of expandable compositions such as foams comprising polyolefin polymers, peroxide initiators, and chemical blowing agents. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the silane-grafted polyethylene resin is produced by using vinyl-functional silane compounds which preferably have the formula RSiY3, with preferable examples being vinyl methoxysilane and vinyl triethoxysilane, including amounts of the silane compound, disclosed in Abe as the polymer in the expandable compositions of Wolschleger et al. in order to provide products having superior uniformity of cell structure and superior heat resistance, while also cutting down the time necessary for moisture crosslinking while providing uniform crosslinking. Using the polymers of Abe in Wolschleger et al. would improve the products of Wolschleger et al. (including uniform cell structure and improved heat resistance) while cutting down on production costs. See ¶77 of Abe. Thus, there is an express rationale to combine the references.
The rejection is based on the combinations of the references discussed above and not any reference individually. There is an express rationale to combine the teachings of the references as discussed in the rejections above. Applicant has not met the burden to properly establish unexpected results, the requirements of which are set forth in MPEP 716.02, and thus any arguments of synergy or benefits are also not persuasive.
With regards to Applicant’s arguments on page 13 discussing that Wolschleger and Abe allegedly do not teach or suggest the “superior humidity storage at elevated temperatures,” the discussion above regarding unexpected results is incorporated herein by reference. The data argued by Applicants does not mee the requirements of MPEP 716.02 for the reasons discussed above and therefore does not provide persuasive evidence of unexpected results.
For the reasons discussed above, Applicant's arguments filed with respect to the rejection of the claims over Gopalan et al. (US 2018/0160767) in view of Wolschleger et al. (2018/0355138); over Wolschleger et al. (2018/0355138) in view of Gopalan et al. (US 2018/0160767); and over Wolschleger et al. (2018/0355138) in view of Abe (US 2003/0199597) are not persuasive.
Conclusion
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/K. BOYLE/Primary Examiner, Art Unit 1766
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