DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on June 9, 2026 has been fully considered. All previous rejections cited below are maintained for the reasons set forth in “Response to Arguments” section below. The following action is made final.
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.
3. 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).
4. The rejection is adequately set forth on pages 3-8 of an Office action mailed on March 9, 2026 and is incorporated here by reference.
5. 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).
6. The rejection is adequately set forth on pages 9-13 of an Office action mailed on March 9, 2026 and is incorporated here by reference.
7. 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).
8. The rejection is adequately set forth on pages 13-20 of an Office action mailed on March 9, 2026 and is incorporated here by reference.
8. 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).
9. The rejection is adequately set forth on pages 20-26 of an Office action mailed on March 9, 2026 and is incorporated here by reference.
10. 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).
11. The rejection is adequately set forth on pages 26-29 of an Office action mailed on March 9, 2026 and is incorporated here by reference.
12. 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).
13. The rejection is adequately set forth on pages 29-32 of an Office action mailed on March 9, 2026 and is incorporated here by reference.
Response to Arguments
14. Applicant's arguments filed on June 9, 2026 have been fully considered.
15. With respect to Applicant’s arguments regarding the rejections of Claims 1-6 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) and Claims 1-6 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), it is noted that:
1) 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]).
Thus, Thoen et al recites the propylene copolymer used for making said foam beads comprising MFR of 0.5-8 g/10 min and further having high melt strength and high melt drawability, wherein said propylene copolymer is rheology modified by irradiation treatment or chemical treatment with branching agents ([0019]).
2) 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, the secondary references of Lesca et al, Stadlbauer et al, Weaver et al and Gardner et al were applied for the teachings of those, wherein each of the secondary references 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) Thus, Lesca et al explicitly teaches the use of propylene copolymers having both high melt strength and MFR, as required by Thoen et al, for forming foam beads, wherein Lesca et al further specifies such high melt strength propylene copolymers as having branched molecular structure.
4) Stadlbauer et al further teaches branched polypropylene copolymers comprising:
a branching index of less than 0.9 or 0.6-0.8 (col. 3, lines 11-55; col. 6, lines 48-57) and MFR of 3-11 g/10 min (col. 8, lines 1-4); wherein Stadlbauer et al further specifies that such branched propylene copolymers comprising up to 10%mol of ethylene are having melting temperature Tm of higher than 120⁰C, or as high as 155⁰C (col. 8, lines 32-40).
5) Furthermore, Weaver et al and Gardner et al teach the commercial product DAPLOY WB260HMS, which is a branched propylene copolymer having MFR, melt strength and melt drawability as required by Thoen et al and cited as being foamable.
6) Thus, based on the combined teachings of Thoen et al, Lesca et al, Stadlbauer et al, Weaver et al and Gardner et al, it would have been obvious to a one of ordinary skill in the art 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
7) In response to Applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
8) In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
9) Regarding Applicant’s argument that Thoen et al is rheology-modified by coupling using coupling agents, it is noted that Thoen et al teaches rheology modification not only by coupling with coupling agents, but further by irradiation treatment and chemical treatment with branching agents ([0019]), which will intrinsically and necessarily form, at least partially, branching structure as well.
10) Regarding Applicant’s arguments that not all foams produced using Daploy WB260HMS will have closed cell ratio of 80% or more, referring to Table 2 of instant specification, it is noted that the specific content of closed cells in the foam depends on the specific temperature and pressure applied during foaming. As evident from Table 2 of instant specification, lower pressures at die and lower pressure drop rate (PDR) produce the foam beads having higher content of open cells, no matter if Daploy WB260HMS or other polypropylenes are used (i.e. all examples CE1, CE3 and CE4, produced at a lower pressure of 88 bar or 60 bar and lower PDR show high content of open cells). Instant claims are silent with respect to the foaming conditions to form the claimed foam beads. On the other hand, Thoen et al explicitly teaches the foams having 0-100% vol of open cell content ([0068]), i.e. depending on the desired content of the open cells, and thus closed cells, it would have been obvious to a one of ordinary skill in the art to adjust the foaming conditions, including temperature and pressure, so to produce the foam beads having zero percent of open cells as well, given such is desired.
16. With respect to Applicant’s arguments regarding the rejections of Claims 1-6 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) and Claims 1-6 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), it is noted that:
1) The secondary references of Hughes et al and Kim 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).
2) Thus, Hughes et al explicitly shows teaches that 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).
Kim teaches that essentially closed-cell microcellular material having no connected cell pathway (i.e. containing no open cells) ([0041]) and increased cell density can be 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 importance of use of high pressure drop rates in the process for making closed-cell foams from polymeric material, no matter how these foams are intended to be used: as foamed beads further suitable to be fused and molded, or as an extrusion molded coating on wire or optical fiber.
3) In response to Applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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