DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 9, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on February 9, 2026 has been fully considered. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Thoen et al (US 2002/0151611) in view of Lesca et al (US 5,324,753), Stadlbauer et al (US 7,799,841), Weaver et al (US 2010/0152361) and Gardner et al (US 2012/0276358).
5. Thoen et al discloses foam beads ([0009], [0055]-[0059]) comprising a rheology-modified propylene copolymer composition having:
a) MFR of 0.5-8 g/10 min;
b) melt strength (maximum tensile force at break) of at least 5cN ([0009], [0011], as to instant claim 2);
c) melt drawability (maximum velocity at break) of at least 20 mm/s ([0009], [0011]),
wherein the propylene copolymer comprises 1-5%wt of ethylene ([0022]).
6. The foams are having an open cell content as low as 0%volume ([0068]) and density of 50 kg/m3 or less ([0070]-[0071], as to instant claim 6). Foams with an open cell content of 20%vol or less fall in class known as closed cell foams ([0068]).
As to instant claims 4-5, the composition comprises 0.01-5 phr of a nucleating agent ([0062]).
7. Specifically exemplified rheology modified polypropylene copolymer is having 3.2%wt of ethylene, MFR of 1.3-1.5 g/10 min; melt strength of 20-42 cN ([0080]-[0081], Table), producing foams having density of 25-33.2 kg/m3 cell with size of about 2mm and zero percent of open cells (Table 1A).
Since the produced cells are having size of about 2 mm and the content of the open cells is zero percent, therefore, it would have been obvious to a one of ordinary skill in the art that the produced cells having said size are closed cells in amount of close to 100%vol. 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 Thoen et al does not explicitly recite the used propylene copolymer as having long chain branching and some other properties as required by instant claims,
1) Lesca et al discloses foamed beads that consist essentially of propylene copolymers having:
- a melt strength determined by Rheotens test of 5-40 cN (Abstract, col. 2, lines 48-50; col. 5, lines 55-67, as to instant claim 2);
- a branched molecular structure (col. 3, lines 20-25);
- a branching index of 0.1-0.9, or 0.25-0.7 (col. 4, lines 17-32, as to instant claim 3);
- MFR of 0.5-10 g/10 min (col. 2, lines 60-62, as to instant claim 1);
- the propylene copolymers contain propylene and 1-40%wt, or 3-30%wt of ethylene (col. 2, lines 66-68, as to instant claim 1).
The produced foamed beads are having density of 10-500 kg/m3 (col. 2, lines 50-55, as to instant claim 6).
2) Stadlbauer et al discloses a branched polypropylene comprising:
a) a branching index of less than 0.9 or 0.6-0.8 (col. 3, lines 11-55; col. 6, lines 48-57);
b) MFR of 3-11 g/10 min (col. 8, lines 1-4);
c) melting temperature Tm of higher than 120⁰C, or as high as 155⁰C (col. 8, lines 32-
40);
d) being a propylene copolymer having up to 10%mol of ethylene (col. 9, lines 25-30),
wherein said branched polypropylene is used for foam applications (Abstract).
3) Weaver et al discloses a composition comprising 95%wt a branched polypropylene having MFR of 0.5-10 g/10 min ([0121]-[0122]), tan delta of less than about 2.5 ([0123]), such as specifically commercially available product DAPLOY WB260HMS ([0124]), further in combination with 0.001-5%wt of an additive such as nucleating agent ([0126]-[0127], as to instant claims 4-5).
It is noted that commercially available product DAPLOY WB260HMS is used in instant invention and is specified as having MFR of 2 g/10 min, g’ of 0.79, Fmax of 25, Vmax of 250, Tm of 145⁰C and tan delta of 2.5 (see Table 1 of instant specification).
4) Gardner et al specifically teaches that commercial product DAPLOY WB260HMS is a foamable polypropylene ([0125]).
9. Since a) Thoen et al discloses foam beads produced from a propylene copolymer composition having MFR of 0.5-8 g/10 min and high melt strength (maximum tensile force at break) of at least 5cN or 20-42 cN, said beads having closed cell structure, but
does not recite said propylene copolymer having a branched structure and some of the claimed properties;
b) Lesca et al explicitly teaches the foamed beads being produced from branched propylene copolymers having branching index of less than 0.9,
c) Stadlbauer et al discloses branched propylene copolymers used for foam applications, having branching index of less than 0.9, MFR of 3-11 g/10 min, but further specifies said copolymers having Tm of 120-155⁰C, and
d) Weaver et al discloses a composition comprising 95%wt a branched polypropylene having MFR of 0.5-10 g/10 min and tan delta of less than about 2.5 ([0123]), such as specifically commercially available product DAPLOY WB260HMS ([0124]), wherein e) Gardner et al specifically teaches that commercial product DAPLOY WB260HMS is a foamable polypropylene,
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Thoen et al, Lesca et al, Stadlbauer et al, Weaver et al and Gardner et al and to choose and use, or obvious to try to use, at least partially the branched propylene copolymer as taught by Stadlbauer et al and Weaver et al and/or the specific commercially available branched propylene copolymer DAPLOY WB260HMS as the propylene copolymer used for making foamed beads of Thoen et al, since the branched propylene copolymers are taught in the art as being used for making foamed beads, as shown by Lesca et al, since such branched propylene copolymer as taught by Stadlbauer et al and Weaver et al and/or the specific commercially available branched propylene copolymer DAPLOY WB260HMS are having the melt strength and MFR as required by Thoen 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). 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
10. Since the foamed beads of Thoen et al in view of Lesca et al, Stadlbauer et al, Weaver et al and Gardner et al are produced from the same branched propylene copolymers as claimed in instant invention, therefore, the foamed beads of Thoen et al in view of Lesca et al, Stadlbauer et al, Weaver et al and Gardner et al will intrinsically and necessarily have the properties, including density and closed cell content, as those claimed in instant invention, or having properties in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 1, 6), especially since Thoen et recites such foamed beads having zero open cell content. 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.
11. Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Thoen et al (US 2002/0151611) in view of Weaver et al (US 2010/0152361) and Gardner et al (US 2012/0276358).
12. Thoen et al discloses foam beads ([0009], [0055]-[0059]) comprising a rheology-modified propylene copolymer composition having:
a) MFR of 0.5-8 g/10 min;
b) melt strength (maximum tensile force at break) of at least 5cN ([0009], [0011]);
c) melt drawability (maximum velocity at break) of at least 20 mm/s ([0009], [0011]),
wherein the propylene copolymer comprises 1-5%wt of ethylene ([0022]).
13. The foams are having an open cell content as low as 0%volume ([0068]) and density of 50 kg/m3 or less ([0070]-[0071], as to instant claim 6). Foams with an open cell content of 20%vol or less fall in class known as closed cell foams ([0068]).
As to instant claims 4-5, the composition comprises 0.01-5 phr of a nucleating agent ([0062]).
14. Specifically exemplified rheology modified polypropylene copolymer is having 3.2%wt of ethylene, MFR of 1.3-1.5 g/10 min; melt strength of 20-42 cN ([0080]-[0081], Table), producing foams having density of 25-33.2 kg/m3 cell with size of about 2mm and zero percent of open cells (Table 1A).
Since the produced cells are having size of about 2 mm and the content of the open cells is zero percent, therefore, it would have been obvious to a one of ordinary skill in the art that the produced cells having said size are closed cells in amount of close to 100%vol. 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.
15. Though Thoen et al does not explicitly teach the propylene copolymer as being branched and some other claimed properties of the branched propylene copolymer,
1) Weaver et al discloses a composition comprising 95%wt a branched polypropylene having MFR of 0.5-10 g/10 min ([0121]-[0122]), tan delta of less than about 2.5 ([0123]), such as specifically commercially available product DAPLOY WB260HMS ([0124]), further in combination with 0.001-5%wt of an additive such as nucleating agent ([0126]-[0127], as to instant claims 4-5).
It is noted that commercially available product DAPLOY WB260HMS is used in instant invention and is specified as having MFR of 2 g/10 min, g’ of 0.79, Fmax of 25, Vmax of 250, Tm of 145⁰C and tan delta of 2.5 (see Table 1 of instant specification).
2) Gardner et al specifically teaches that commercial product DAPLOY WB260HMS is a foamable polypropylene ([0125]).
16. Since a) Thoen et al discloses foam beads produced from a propylene copolymer composition having MFR of 0.5-8 g/10 min and high melt strength (maximum tensile force at break) of at least 5cN or 20-42 cN, said beads having closed cell structure, but
does not recite said propylene copolymer having a branched structure and some of the claimed properties; but
b) Weaver et al discloses a composition comprising 95%wt a branched polypropylene having MFR of 0.5-10 g/10 min and tan delta of less than about 2.5 ([0123]), such as specifically commercially available product DAPLOY WB260HMS ([0124]), wherein
c) Gardner et al specifically teaches that commercial product DAPLOY WB260HMS is a foamable polypropylene,
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Thoen et al, Weaver et al and Gardner et al and choose and use, or obvious to try to use, at least partially the branched propylene copolymer composition as taught by Weaver et al, specifically commercially available branched propylene copolymer DAPLOY WB260HMS as the propylene copolymer used for making foamed beads of Thoen et al, since such commercial propylene copolymer is having the melt strength and MFR as required by Thoen et al, and is specifically cited by Gardner et al as being foamable, 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). 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
17. Since the foamed beads of Thoen et al in view of Weaver et al and Gardner et al are produced from the same branched propylene copolymers as claimed in instant invention, therefore, the foamed beads of Thoen et al in view of Weaver et al and Gardner et al will intrinsically and necessarily have the properties, including density and closed cell content, as those claimed in instant invention, or having properties in the ranges overlapping with those as claimed in instant invention as well (as to instant claim 1, 6), especially since Thoen et recites such foamed beads having zero open cell content. 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.
18. Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lesca et al (US 5,324,753) in view of Stadlbauer et al (US 7,799,841), Weaver et al (US 2010/0152361), Gardner et al (US 2012/0276358) and Kim (US 2001/0000930), as further evidenced by Hughes et al (US 2002/0077379).
19. Lesca et al discloses foamed beads that consist essentially of propylene copolymers having:
- a melt strength determined by Rheotens test of 5-40 cN (Abstract, col. 2, lines 48-50; col. 5, lines 55-67, as to instant claim 2);
- a branched molecular structure (col. 3, lines 20-25);
- a branching index of 0.1-0.9, or 0.25-0.7 (col. 4, lines 17-32, as to instant claim 3);
- MFR of 0.5-10 g/10 min (col. 2, lines 60-62, as to instant claim 1);
- the propylene copolymers contain propylene and 1-40%wt, or 3-30%wt of ethylene (col. 2, lines 66-68, as to instant claim 1).
The produced foamed beads are having density of 10-500 kg/m3 (col. 2, lines 50-55, as to instant claim 6).
20. Though Lesca et al does not explicitly recite said foamed beads having a closed cell content of at least 80%,
1) as evidenced by Hughes et al, high melt strength of the propylene copolymers provides sufficient strength to form closed cells (see [0029], [0016] of Hughes et al), with open cell content of less than 20% ([0025] of Hughes et al).
2) Kim teaches that essentially closed-cell microcellular material having no connected cell pathway (i.e. containing no open cells) ([0041]) is achieved by using high pressure drop rates during production ([0043]), specifically cited using said pressure drop rates of preferably at least 1 GPa/sec (at least 10,000 bar/sec), more preferably at least 3 GPa/sec ([0076]).
Thus, Kim explicitly teaches the use of high pressure drop rates in the process for making closed-cell foams.
21. Thus, based on the teachings of Hughes et al, it would have been obvious to a one of ordinary skill in the art that the melt strength of the propylene copolymers is a factor that determines the formation of the closed cells, and since the propylene copolymer of Lesca et al is having melt strength of as high as 40 cN, it would have been reasonably expected that such high-melt-strength propylene copolymers of Lesca et al will produce foam beads with closed cells, such as less than 20% of open cell content as well and b)
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.
Further, based on the teachings of Kim that high pressure drop rates during production are essential for making closed-cell foam, given the foamed beads of Lesca et al are desired to have essentially or close to 100% closed cell content, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kim and Lesca et al, and to conduct, or obvious to try to conduct the process for forming the foamed beads of Lesca et al at a pressure drop rate of at least 10,000 bar/sec, as taught by Kim as well, thereby arriving at the present invention.
22. Though Lesca et al discloses that the composition may further comprise a nucleating agent in amount of generally 0.5%wt (col. 4, lines 67-col. 5, line 2),
i) since the addition of said nucleating agent is cited as being “advisable” but not required and ii) the amount of 0.5%wt is cited as being “generally” used, but not strictly required, therefore, depending on the specifically desired cell properties of the foamed beads, such as cell density and size, it would have been obvious to a one of ordinary skill in the art either a) to use or not to use said nucleating agent, and b) in case of using it, it would have been obvious to a one of ordinary skill in the art to make variations and optimize by routine experimentation the amount of added nucleating agent, including the use in amount that is a little lower than “generally” used 0.5%wt, such as 0.3%wt or 0.299%wt as well (as to instant claims 4-5). "[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).
23. Though Lesca et al does not explicitly teach some other claimed properties of the branched propylene copolymer,
1) Stadlbauer et al discloses a branched polypropylene comprising:
a) a branching index of less than 0.9 or 0.6-0.8 (col. 3, lines 11-55; col. 6, lines 48-57);
b) MFR of 3-11 g/10 min (col. 8, lines 1-4);
c) melting temperature Tm of higher than 120⁰C, or as high as 155⁰C (col. 8, lines 32-
40);
d) being a propylene copolymer having up to 10%mol of ethylene (col. 9, lines 25-30),
wherein said branched polypropylene is used for foam applications (Abstract).
2) Weaver et al discloses a composition comprising 95%wt a branched polypropylene having MFR of 0.5-10 g/10 min ([0121]-[0122]), tan delta of less than about 2.5 ([0123]), such as specifically commercially available product DAPLOY WB260HMS ([0124]), further in combination with 0.001-5%wt of an additive such as nucleating agent ([0126]-[0127], as to instant claims 4-5).
It is noted that commercially available product DAPLOY WB260HMS is used in instant invention and is specified as having MFR of 2 g/10 min, g’ of 0.79, Fmax of 25, Vmax of 250, Tm of 145⁰C and tan delta of 2.5 (see Table 1 of instant specification).
3) Gardner et al specifically teaches that commercial product DAPLOY WB260HMS is a foamable polypropylene ([0125]).
24. Since a) Lesca et al discloses foamed beads that consist essentially of branched propylene copolymers having branching index of less than 0.9, but do not recite additional properties of said branched copolymers, but b) Stadlbauer et al discloses branched propylene copolymers used for foam applications, having branching index of less than 0.9, MFR of 3-11 g/10 min, but further specifies said copolymers having Tm of 120-155⁰C, and c) Weaver et al discloses a composition comprising 95%wt a branched polypropylene having MFR of 0.5-10 g/10 min and tan delta of less than about 2.5 ([0123]), such as specifically commercially available product DAPLOY WB260HMS ([0124]), wherein d) Gardner et al specifically teaches that commercial product DAPLOY WB260HMS is a foamable polypropylene,
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Lesca et al, Stadlbauer et al, Weaver et al and Gardner et al and to choose and use, or obvious to try to use, the branched propylene copolymer as taught by Stadlbauer et al and Weaver et al and/or the specific commercially available branched propylene copolymer DAPLOY WB260HMS as the branched propylene copolymer used for making foamed beads of Lesca et al, since such propylene copolymers are branched, having the branching index and MFR as required by Lesca 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). 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
25. Since the foamed beads of Lesca et al in view of Stadlbauer et al, Weaver et al, Gardner et al and Kim are produced from the same branched propylene copolymers as claimed in instant invention, such as commercial propylene copolymer WB260HMS, and by substantially the same process as that claimed and disclosed in instant invention, including using high pressure drop rates during production, therefore, the foamed beads of Lesca et al in view of Stadlbauer et al, Weaver et al, Gardner et al and Kim will intrinsically and necessarily have the properties, including density and closed cell content, as those claimed in instant invention, or having properties in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 1, 6), especially since, as discussed above, melt strength of propylene copolymers provides strength to form closed cells ([0029] of Hughes et al). 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.
26. Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lesca et al (US 5,324,753) in view of Weaver et al (US 2010/0152361), Gardner et al (US 2012/0276358) and Kim (US 2001/0000930), as further evidenced by Hughes et al (US 2002/0077379).
27. Lesca et al discloses foamed beads that consist essentially of propylene copolymers having:
- a melt strength determined by Rheotens test of 5-40 cN (Abstract, col. 2, lines 48-50; col. 5, lines 55-67, as to instant claim 2);
- a branched molecular structure (col. 3, lines 20-25);
- a branching index of 0.1-0.9, or 0.25-0.7 (col. 4, lines 17-32, as to instant claim 3);
- MFR of 0.5-10 g/10 min (col. 2, lines 60-62, as to instant claim 1);
- the propylene copolymers contain propylene and 1-40%wt, or 3-30%wt of ethylene (col. 2, lines 66-68, as to instant claim 1).
The produced foamed beads are having density of 10-500 kg/m3 (col. 2, lines 50-55, as to instant claim 6).
28. Though Lesca et al does not explicitly recite said foamed beads having a closed cell content of at least 80%,
1) as evidenced by Hughes et al, melt strength of the propylene copolymers provides sufficient strength to form closed cells (see [0029], [0016] of Hughes et al), with open cell content of less than 20% ([0025] of Hughes et al);
2) Kim teaches that essentially closed-cell microcellular material having no connected cell pathway (i.e. containing no open cells) ([0041]) is achieved by using high pressure drop rates during production ([0043]), specifically cited using said pressure drop rates of preferably at least 1 GPa/sec (at least 10,000 bar/sec), more preferably at least 3 GPa/sec ([0076]).
Thus, Kim explicitly teaches the use of high pressure drop rates in the process for making closed-cell foams.
29. Thus, based on the teachings of Hughes et al, it would have been obvious to a one of ordinary skill in the art that the melt strength of the propylene copolymers is a factor that determines the formation of the closed cells, and since the propylene copolymer of Lesca et al is having melt strength of as high as 40 cN, it would have been reasonably expected that such high-melt-strength propylene copolymers of Lesca et al will produce foam beads with closed cells, such as less than 20% of open cell content 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.
Further, based on the teachings of Kim that high pressure drop rates during production are essential for making closed-cell foam, given the foamed beads of Lesca et al are desired to have essentially or close to 100% closed cell content, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kim and Lesca et al, and to conduct, or obvious to try to conduct the process for forming the foamed beads of Lesca et al at a pressure drop rate of at least 10,000 bar/sec, as taught by Kim as well, thereby arriving at the present invention.
30. Though Lesca et al discloses that the composition may further comprise a nucleating agent in amount of generally 0.5%wt (col. 4, lines 67-col. 5, line 2),
i) since the addition of said nucleating agent is cited as being “advisable” but not required and ii) the amount of 0.5%wt is cited as being “generally” used, but not strictly required, therefore, depending on the specifically desired cell properties of the foamed beads, such as cell density and size, it would have been obvious to a one of ordinary skill in the art either a) to use or not to use said nucleating agent, and b) in case of using it, it would have been obvious to a one of ordinary skill in the art to make variations and optimize by routine experimentation the amount of added nucleating agent, including the use in amount that is a little lower than “generally” used 0.5%wt, such as 0.3%wt or 0.299%wt as well (as to instant claims 4-5). "[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).
31. Though Lesca et al does not explicitly teach some other claimed properties of the branched propylene copolymer,
1) Weaver et al discloses a composition comprising 95%wt a branched polypropylene having MFR of 0.5-10 g/10 min ([0121]-[0122]), tan delta of less than about 2.5 ([0123]), such as specifically commercially available product DAPLOY WB260HMS ([0124]), further in combination with 0.001-5%wt of an additive such as nucleating agent ([0126]-[0127], as to instant claims 4-5).
It is noted that commercially available product DAPLOY WB260HMS is used in instant invention and is specified as having MFR of 2 g/10 min, g’ of 0.79, Fmax of 25, Vmax of 250, Tm of 145⁰C and tan delta of 2.5 (see Table 1 of instant specification).
2) Gardner et al specifically teaches that commercial product DAPLOY WB260HMS is a foamable polypropylene ([0125]).
32. Since a) Lesca et al discloses foamed beads that consist essentially of branched propylene copolymers having branching index of less than 0.9, but do not recite additional properties of said branched copolymers, but b) Weaver et al discloses a composition comprising 95%wt a branched polypropylene having MFR of 0.5-10 g/10 min and tan delta of less than about 2.5 ([0123]), such as specifically commercially available product DAPLOY WB260HMS ([0124]), wherein c) Gardner et al specifically teaches that commercial product DAPLOY WB260HMS is a foamable polypropylene,
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Lesca et al, Weaver et al and Gardner et al and choose and use, or obvious to try to use, the branched propylene copolymer composition as taught by Weaver et al, specifically commercially available branched propylene copolymer DAPLOY WB260HMS as the branched propylene copolymer used for making foamed beads of Lesca et al, since such commercial propylene copolymer is branched, having the branching index and MFR as required by Lesca et al, is specifically cited by Gardner et al as being foamable, 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). 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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(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
33. Since the foamed beads of Lesca et al in view of Weaver et al, Gardner et al and Kim are produced from the same branched propylene copolymers as claimed in instant invention, such as commercial propylene copolymer WB260HMS, by substantially the same process including using high pressure drop rates as disclosed in instant invention, therefore, the foamed beads of Lesca et al in view of Weaver et al, Gardner et al and Kim will intrinsically and necessarily have the properties, including density and closed cell content, as those claimed in instant invention, or having properties in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 1, 6). 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.
34. Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Thoen et al (US 2002/0151611) in view of Lesca et al (US 5,324,753), Stadlbauer et al (US 7,799,841), Weaver et al (US 2010/0152361) and Gardner et al (US 2012/0276358), in further view of Kim (US 2001/0000930).
35. The discussion with respect to Thoen et al (US 2002/0151611) in view of Lesca et al (US 5,324,753), Stadlbauer et al (US 7,799,841), Weaver et al (US 2010/0152361) and Gardner et al (US 2012/0276358), set forth in paragraphs 4-10 above, is incorporated here by reference.
36. Though Thoen et al in view of Lesca et al, Stadlbauer et al, Weaver et al and Gardner et al do not explicitly recite the beads having high closed cell content,
Kim teaches that essentially closed-cell microcellular material having no connected cell pathway (i.e. containing no open cells) ([0041]) is achieved by using high pressure drop rates during production ([0043]), specifically cited using said pressure drop rates of preferably at least 1 GPa/sec (at least 10,000 bar/sec), more preferably at least 3 GPa/sec ([0076]).
Thus, Kim explicitly teaches the use of high pressure drop rates in the process for making closed-cell foams.
37. Given the foamed beads of Thoen et al in view of Lesca et al, Stadlbauer et al, Weaver et al and Gardner et al are desired to have essentially 100% or close to 100% closed cell content, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kim and Thoen et al in view of Lesca et al, Stadlbauer et al, Weaver et al and Gardner et al, and to conduct, or obvious to try to conduct the process for forming the foamed beads of Thoen et al in view of Lesca et al, Stadlbauer et al, Weaver et al and Gardner et al at a pressure drop rate of at least 10,000 bar/sec, as taught by Kim as well, thereby arriving at the present invention.The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(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
38. Since the foamed beads of Thoen et al in view of Lesca et al, Stadlbauer et al, Weaver et al, Gardner et al and Kim are substantially the same as those claimed in instant invention, i.e. produced from essentially the same commercial propylene copolymer WB260HMS as that exemplified in instant invention, and by substantially the same process, including using a pressure drop rate of at least 10,000 bar/sec, as that exemplified in instant invention, therefore, the foamed beads of Thoen et al in view of Lesca et al, Stadlbauer et al, Weaver et al, Gardner et al and Kim will intrinsically and necessarily comprise, or would be reasonably expected to comprise a closed cell ratio and density as those claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
39. Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Thoen et al (US 2002/0151611) in view of Weaver et al (US 2010/0152361) and Gardner et al (US 2012/0276358), in further view of Kim (US 2001/0000930).
40. The discussion with respect to Thoen et al (US 2002/0151611) in view of Weaver et al (US 2010/0152361) and Gardner et al (US 2012/0276358), set forth in paragraphs 11-17 above, is incorporated here by reference.
41. Though Thoen et al in view of Weaver et al and Gardner et al do not explicitly recite the beads having high closed cell content,
Kim teaches that essentially closed-cell microcellular material having no connected cell pathway (i.e. containing no open cells) ([0041]) is achieved by using high pressure drop rates during production ([0043]), specifically cited using said pressure drop rates of preferably at least 1 GPa/sec (at least 10,000 bar/sec), more preferably at least 3 GPa/sec ([0076]).
Thus, Kim explicitly teaches the use of high pressure drop rates in the process for making closed-cell foams.
42. Given the foamed beads of Thoen et al in view of Weaver et al and Gardner et al are desired to have essentially 100% or close to 100% closed cell content, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kim and Thoen et al in view of Weaver et al and Gardner et al, and to conduct, or obvious to try to conduct the process for forming the foamed beads of Thoen et al in view of Weaver et al and Gardner et al at a pressure drop rate of at least 10,000 bar/sec, as taught by Kim as well, thereby arriving at the present invention.The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(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
43. Since the foamed beads of Thoen et al in view of Weaver et al, Gardner et al and Kim are substantially the same as those claimed in instant invention, i.e. produced from essentially the same commercial propylene copolymer WB260HMS as that exemplified in instant invention, and by substantially the same process, including using a pressure drop rate of at least 10,000 bar/sec, as that exemplified in instant invention, therefore, the foamed beads of Thoen et al in view of Weaver et al, Gardner et al and Kim will intrinsically and necessarily comprise, or would be reasonably expected to comprise a closed cell ratio and density as those claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Response to Arguments
44. Applicant's arguments filed on January 21, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
45. Specifically, 1) Kim (US 2001/0000930) teaches importance of high pressure drop rates for making closed cell foams.
2) The comparative example CE4 of Table 2 of instant specification has a relatively lower content of closed cells than example IE1 due to using lower pressure drop rate (see Table 2 of instant specification).
Conclusion
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764