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 .
Election/Restrictions
2. Applicant's election with traverse of Group I, claims 1-3 in the reply filed on October 15, 2025 is acknowledged. The traversal is on the ground(s) that the cited references do not establish a lack of unity based on the amended claim 1. This is not found persuasive because even the limitations of the amended claim 1, i.e. common technical feature, do not constitute a special technical feature as discussed in the new grounds of rejections of the amended claim 1 as shown below. See discussion in paragraphs 6-18 below, which is incorporated here by reference.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 15, 2025.
Response to Amendment
3. The amendment filed by Applicant on October 15, 2025 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to recite the polyamide having a flexural modulus of 1000 MPa or more. This limitation was not previously presented and was taken from instant specification. In light of the amendment, all previous rejections are withdrawn.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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
4. Claim 8 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
5. The newly added claim 8 recites a limitation:” the polyamide-based resin expanded beads do not comprise an elastomer”.
This is a negative limitation, which is not supported by instant specification in its entirety. Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) (“[the] specification, having described the whole, necessarily described the part remaining.”). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff ’d mem., 738 F.2d 453 (Fed. Cir. 1984). The mere absence of a positive recitation is not basis for an exclusion (MPEP 2173.05(i)).
Thus, paragraph [0043] of instant specification recites the positive citation of the polyamide-based resin expanded beads containing one or more of other thermoplastic resins and thermoplastic elastomers.
Paragraph [0043] of instant specification is presented below:
The polyamide-based resin expanded beads may contain one or more of other thermoplastic resins and thermoplastic elastomers as long as the object and effect of the present invention are not impaired. Examples of the other thermoplastic resins and the thermoplastic elastomers include one or more selected from polyethylene-based resins, polypropylene-based resins, polystyrene-based resins, vinyl acetate resins, thermoplastic polyester resins, acrylic acid ester resins, methacrylic acid ester resins, rubbers such as ethylene-propylene-based rubbers, ethylene-1-butene rubbers, propylene-1-butene rubbers, ethylene-propylene-diene-based rubbers, isoprene rubbers, neoprene rubbers, and nitrile rubbers, and hydrogenated products of styrene-diene block copolymers and styrene- diene block copolymers.
Thus, instant specification provides a support for negative limitation of instant claim 8 with respect to only thermoplastic elastomers and rubbers listed above, but not to any elastomer as currently claimed in instant claim 8.
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.
6. Claims 1-3, 8 are rejected under 35 U.S.C. 103 as being unpatentable over
Shiro et al (US 3,770,663) in view of Kondo et al (US 2018/0044497), UBE Nylon 1022B flyer, 2014, Kiguchi et al (US 2002/0143076) and Yoshimura et al (US 4,704,239).
7. Shiro et al discloses foamed beads based on crystalline polymers including polyamide resins and polyolefins (col. 2, lines 48-56), produced by a process comprising:
1) dispersing particles of the crystalline polymer in a dispersing medium;
2) holding the dispersion at a high pressure and at a temperature lower than the melting point of the polymer and within the range of temperature at which crystallization of the polymer progresses thereby causing infiltration/impregnation of the particles with the dispersion medium to form foamable polymer particles;
3) ejecting the dispersion from the high pressure region into a low pressure region to produce foamed beads (col. 2, lines 1-28).
8. The step 2) of heat treatment is the step for crystallization of the crystalline polymer (col. 4, lines 42-60). The dispersion of the polymer particles is maintained at the temperature at which crystallization will progress for a time period required to obtain desired voids; generally speaking for polypropylene the time is 15-30 minutes at a crystallization temperature of 135-150⁰C (col. 4, line 42-col. 5, line 20).
9. Thus, Shiro et al explicitly teaches the step of heat treatment of the crystalline polymer to further induce crystallization. Given the original crystalline polymer has a melting point intrinsic to said polymer, and said crystalline polymer is further heat treated to induce further crystallization, therefore, the finally produced foamed beads of said polymer will intrinsically and necessarily have two peaks on DSC curve: one- according to the intrinsic melting point of the polymer, and the other- resulting from further crystallization due to said heat treatment 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. Furthermore, since i) the heat treatment step 2) in the process of Shiro et al is specifically cited to be conducted at a temperature range at which crystallization of the polymer progresses, ii) the longer period of the heat treatment intrinsically and necessarily leads to higher crystallinity of the resin, and thus higher heat of fusion, and iii) the purpose of said heat treatment to induce further crystallization, therefore, it would have been obvious to a one of ordinary skill in the art to conduct the heat treatment of the resin, which maybe polyamide or polyolefin, for a period of time long enough to induce a production of a desired level of secondary crystals, to obtain a desired level of secondary crystallinity, and thus the desired level of heat fusion, such as low as 5 J/g.
It would have been further obvious to a one of ordinary skill in the art to make variations and optimize by routine experimentation the heat treatment conditions, such as the temperature and duration of the heat treatment of the polyolefin or polyamide in the process of Shiro et al so induce the formation of secondary crystals at least to a minor extent, such as having an amount of heat fusion of said secondary crystallization of at least 5 J/g as well, thereby arriving at the present invention (as to instant claim 1). "[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).
11. Based on the teachings of Shiro et al that not only crystalline polyolefins, such as polypropylene, but further crystalline polyamide maybe used to form the foamed particles, it would have been obvious to a one of ordinary skill in the art to choose and use crystalline polyamide as the crystalline polymer either alone or in admixture with the polyolefin to form the foamed beads 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).
12. As to instant claim 8, Shiro et al is silent with respect to the presence of elastomers, including thermoplastic elastomers.
13. Shiro et al does not recite the flexural modulus of said crystalline polyamide and the polyamide being a modified polyamide modified with carbodiimide.
14. However,
1) Kondo et al discloses polyamide resin pre-expanded particles ([0074]) formed from a nylon 6, commercial product UBE Nylon 1022B ([0153]), and further polyamide modified with functional groups at the end of the polyamide including a carbodiimide group, to increase degree of cross-linking ([0069], [0070], [0058], as to instant claim 2). Kondo et al further teaches that pre-expanded particles are subjected to pre-heating, which results in increased crystallinity of the polyamide foam article ([0105], [0106]).
The foam article is having crystallinity of 10-50% and a closed cell ratio of 85% or more ([0021], [0023], [0047]).
Given the pre-expanded particles of Kondo et al are subjected to heat treatment to increase crystallinity, and the final foam article formed from said pre-expanded particles is having crystallinity of 10-50% and a closed cell ratio of 85% or more, therefore, the heat-treated pre-expanded particles used for making said foam article would be reasonably expected to provide said increased crystallinity and a closed cell ratio of more than 85% as well (as to instant claim 3). 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.
2) As shown by UBE Nylon 1022B flyer, the commercial polyamide 6 Nylon 1022B is having flexural modulus of 2700 MPa (see the flyer, as to instant claim 1).
15. Since both Kondo et al and Shiro et al are related to polyamide-based pre-expanded beads that are at least partially crystalline and were subjected to heat treatment, and thereby belong to the same field of endeavor, wherein Kondo et al teaches the original polyamide used being a commercial product UBE Nylon 1022B and further the polyamide modified with carbodiimide groups, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Shiro et al and Kondo et al, and to use, or obvious to try to use the commercial product UBE Nylon 1022B having flexural modulus of 2700 MPa and further carbodiimide-modified polyamide which is used to increase cross-linking, as the polyamide resin for making the foamed beads by the process of Shiro et al, so to ensure the foamed beads of Shiro et al are having increased crystallinity, increased cross-linking and a closed cell ratio of more than 85% as well 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).
16. Though Shiro et al teaches the step of heat treatment of the crystalline polymer polyamide or polyolefin to further induce crystallization, Shiro et al does not explicitly teach such beads having two melting peaks and does not teach a coefficient of variation of the high-temperature peak.
16. However,
1) Kiguchi et al discloses pre-expanded particles based on thermoplastic resins such as polyolefins having two fusion peaks on DSC curve, wherein the proportion of the heat of fusion Qh of the high temperature peak to the total heat of fusion is 10-60% (Abstract), i.e. the particles being crystalline, wherein Kiguchi et al explicitly teaches said particles having a uniform crystal state which is achieved by carrying out pressure release expansion in such manner than temperature of the pressure vessel is raised ([0009]; [0012]), specifically wherein temperature of the pressure vessel during release for expansion is raised stepwise or continuously at a rate of 0.03-0.5⁰C per 10 min ([0012]). The standard deviation of the peak ratio of the expanded particles is not more than 1 ([0020]), specifically exemplified values include 0.51-0.55 (Table 1).
Thus, Kiguchi et al explicitly teaches the advantages of conducting the expansion step in the process of preparing the expanded particles of thermoplastic resins by releasing the impregnated particles into a low pressure atmosphere while increasing the temperature, so to ensure uniform crystal state of said expanded particles with very low standard deviation of the heat of fusion of the high temperature peak.
2) Yoshimura et al discloses expanded particles of the polymeric material, produced by the steps of impregnating the unexpanded particles with gas, heating the unexpanded impregnated particles and subjecting the impregnated unexpanded particles to a second pressure lower than the first pressure for expansion (col. 1, lines 55-col. 2, line 5), wherein the expanded particles comprise two peaks in the DSC curve with peak at lower temperature corresponding to melting point of the polymer (point P in Fig 1) and further a second peak at a higher temperature (Fig. 1), wherein Yoshimura et al explicitly teaches the particles having secondary crystals formed when the gas-impregnated unexpanded particles are subjected to heat treatment; the presence of the second peak at a high temperature is attributed to the absorption of heat the secondary crystals, and the existence of the secondary crystals can be seen from the presence of the high temperature peak (col. 6, lines 13-43).
Thus, Yoshimura et al explicitly teaches the expanded polymeric particles, produced by the process comprising impregnating the particles with a gas, heating said particles to form the second crystals, followed by expanding said particles, are having two peaks in the DSC curve with high temperature peak corresponding to the presence of second crystals, i.e. the expanded particles being crystalline,
wherein the polymeric material used for making said expanded crystalline particles include polyolefins and polyamide (col. 2, lines 19-31).
17. Since all of Kiguchi et al, Yoshimura et al and Shiro et al in view of Kondo et al are related to expanded particles based on thermoplastic resins, produced by processes including impregnating the unexpanded particles with gas, heating the unexpanded particles for crystallization, followed by releasing said particles into a low pressure atmosphere, and thereby belong to the same field on endeavor, wherein Kiguchi et al explicitly teaches the step of expanding the thermoplastic polyolefin particles by releasing those into a vessel of lower pressure being conducted while increasing temperature, so to ensure uniform crystal state and low standard deviation of the peak ratio of the expanded particles such as no more than 1 and as low as 0.51-0.55, and Yoshimura et al teaches such expanded polymeric particles, produced by the process comprising impregnating the particles with a gas, heating said particles to form the second crystals, followed by expanding said particles, are having two peaks in the DSC curve with high temperature peak corresponding to the presence of second crystals, i.e. the expanded particles being crystalline, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Shiro et al in view of Kondo et al, Kiguchi et al and Yoshimura et al, and to modify, obvious to try to modify the process of Shiro et al in view of Kondo et al by conducting the step 3) of expanding the foamable particles to produce foamed beads in the process of Shiro et al in view of Kondo et al while increasing the temperature, as taught by Kiguchi et al, since such step leads to uniform crystal state and very low standard deviation of the high temperature peak ratio of the expanded particles, especially since Yoshimura et al teach that both types of thermoplastic resins including polyolefins and polyamides can be used to form said crystalline expanded particles having two peaks in the DSC curve with high temperature peak corresponding to the presence of second crystals as well. 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
It is noted that standard deviation of the amount of heat fusion of high temperature peak of inventive examples of instant specification is in the range of 0.38-0.94 (see Table 3 of instant specification), i.e. lower than 1 as well.
18. Since the expanded beads of Shiro et al in view of Kondo et al, Kiguchi et al and Yoshimura et al are substantially the same as those claimed in instant invention, and are produced by the process that is substantially the same as that disclosed in instant invention, i.e. including the steps of heating the impregnated particles to promote crystallization and further releasing the impregnated particles into a vessel of low pressure for expanding while raising the temperature to ensure uniform crystal state, therefore, the expanded particles of Shiro et al in view of Kondo et al, Kiguchi et al and Yoshimura et al will intrinsically and necessarily have the properties, including the amount of heat of fusion of the high temperature peak, a coefficient of variation of the amount of heat of fusion of the high temperature peak, and the closed cell ratio, which are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 1,3). 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.
Response to Arguments
19. Applicant's arguments filed on October 15, 2025 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
20. In addition, it is noted that:
1) The above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
2) Kondo et al (US 2018/0044497), Kiguchi et al (US 2002/0143076) and Yoshimura et al (US 4,704,239) are secondary references, each of which was applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
3) Referring to Applicant’s argument on page 10 that “instant specification recommends that the polyamide-based resin expanded beads having a high temperature peak being maintained at a temperature much lower than the melting point of the polyamide resin in order to form the high temperature peak”, the newly applied reference of Shiro et al explicitly teaches holding the dispersion at a temperature lower than the melting point of the polymer and within the range of temperature at which crystallization of the polymer progresses (col. 2, lines 15-18). Instant claims are silent with respect to specific temperature of heat treatment.
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