Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-14 are pending.
Claims 1-13 are under examination on the merits.
No claims are amended.
No claims are canceled.
Claims 10-14 are newly added.
Election/Restrictions
Newly submitted claim 14 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Inventions group I claims 1-13 and group II claim 14 are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as free-flowing beads for packaging and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 14 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection in the previous action of claims 1-9 under 35 U.S.C. 103 as being unpatentable over WO2019009094 represented herein by US 20200140643 by Takagiet al in view of JP 2015013932 by Hasegawa et al as evidenced by “Brominated Epoxy Resin Applications” by Kaiji et al is repeated and maintained herein. New claims 10-13 are also rejected under the same premise:
Takagi describes a crosslinked polyolefin elastomer expanded beads.
Regarding claim 1, Takagi describes crosslinked olefin elastomer beads (paragraphs 21-26) comprising:
a base polymer of olefin thermoplastic elastomer (paragraph 22-23) and
optionally a flame retardant (paragraph 74), which is addressed with more specificity via secondary reference JP 2015013932 by Hasegawa et al below
Takagi describes the melting point of the olefin thermoplastic elastomer as 110-130C (paragraph 83).
Takagi describes the xylene insoluble content of the thermoplastic elastomer as 60% by weight or less (paragraph 42).
Hasegawa describes flame-retardant polyethylene foam.
Regarding the instant flame retardant Hasegawa describes a brominated epoxy oligomer with the following structure (original paragraph 17):
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Hasegawa’s structure meets the instant because the R groups meet the requisite instant R1-R3 and for instant “n” the molecular weight of Hasegawa’s exemplary KBE-3020 (Hasegawa translation p.4 antepenultimate paragraph) is described by Kaiji as 2000 (p.13 first paragraph “KBE-3020…molecular weight about 2000), similar to instant exemplary flame retardant FR1 (instant publication paragraph 87/Table 1 lists a molecular weight of 2000; see also paragraph 128/Table 2). A value of n=2 gives a molecular weight of about 2000.
Hasegawa describes the softening (melting) point of the brominated epoxy oligomer as between 80-130C (translation p.3 penultimate paragraph), with examples at 106-120C (p.4 penultimate paragraph; KBE-3020) and 114-120 (p.5 paragraph 4; CXB-1020C). One of ordinary skill would reasonably expect this to be the lower of the melting vs. glass transition temperature of the brominated bisphenol epoxy oligomer because glass transition is usually higher than melting point and not all resins possess a glass transition point (e.g. all instant brominated epoxy oligomers, see instant Table 1).
Thus in combination the difference between Takagi’s olefin melting point and Hasegawa’s flame retardant melting point is, for example, 117C (Takagi TPO 1 paragraph 142) – 110C (Hasegawa’s KBE-3020)= 7C. This calculation is merely an example; see Hasegawa translation p.3 penultimate paragraph for flame retardant melting point range and Takagi paragraph 83 for olefin melting point range.
Hasegawa states that when the softening point of the brominated epoxy oligomer is less than 80C the heat resistance obtained is low, while above 130C the oligomer can be a solid at the time of foaming and act as a nucleating agent, disrupting foam formation (translation p.3 penultimate paragraph). Thus it would be obvious to one of ordinary skill to use a brominated epoxy oligomer as a flame retardant in Takagi’s polyethylene-based foam (Takagi paragraph 59) in order to achieve sufficient heat resistance without obstructing the foaming process (Takagi describes similar expansion temperatures to Hasegawa in Takagi paragraph 132).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range of TmTPO-TFR because Takagi in view of Hasegawa describes values overlapping with the claimed range.
Regarding claim 2, Hasegawa describes epoxy end groups and propane-2,2-diyl group for instant R2. See structure posted in rejection of claim 1 above.
Regarding claim 3, Hasegawa describes 4-25 parts brominated epoxy oligomer per 100 parts resin (p.4 paragraph 1).
Regarding claim 4, Hasegawa describes the softening (melting) point of the brominated epoxy oligomer as between 80-130C (translation p.3 penultimate paragraph).The instant specification states that “In compounds of this type, the glass transition temperature TgFR is often lower than the melting point TmFR” but it does not report both the TgFR and the TmFR for any of the exemplary brominated bisphenol-based flame retardants. Since Hasegawa reports a structure falling within the claimed structure and the instant structure demonstrates the claimed glass transition temperature, one of ordinary skill would reasonably expect Hasegawa’s flame retardant to exhibit glass transition temperatures at least overlapping with the claimed range.
Regarding claim 5, Kaiji describes the “molecular weight” of KBE-3020 as about 2000 (p.13 first paragraph “KBE-3020…molecular weight about 2000) but is silent as to whether this is number-average or weight-average. However, since the molecules in question are oligomers – i.e. have low molecular weights- the number- and weight- average are expected to be approximately the same. Thus Hasegawa’s description of KBE-3020 meets the instant even without the descriptor of how molecular weight was obtained.
Regarding claim 6, Takagi describes a elastomer of a polyethylene as a hard block and an ethylene/α-olefin copolymer as a soft block (paragraph 141, 143).
Regarding claim 7, Takagi describes a flexural modulus of 10-30 MPa (paragraph 86).
Regarding claim 8, Takagi describes:
-dispersing polymer beads in a closed vessel (paragraph 22) which contains the flame-retardant additive (paragraph 73-74)
-reacting the bead with an organic peroxide to crosslink (paragraph 23, 153-154)
-impregnating the polymer bead with an expanding (blowing) agent (paragraph 154)
-expanding the beads (paragraph 155)
Regarding claim 9, Takagi describes a crosslinking temperature of Tm+10C to Tm+50C (paragraph 112). Using Takagi’s TPO example with a Tm of 117C (Takagi paragraph 142), the crosslinking temperature TCI would be 127C-167C. Hasegawa’s KBE-3020 flame retardant has a softening point of 110C (Hasegawa translation p.4 penultimate paragraph), therefore the range of TCI is TFR+17 to TFR+57 in the instant terms in this example. This overlaps with the claimed range. Note that both Hasegawa and Takagi teach wider ranges and this calculation is merely an example; see Hasegawa translation p.3 penultimate paragraph and Takagi paragraph 83 for full ranges.
Regarding claims 10 and 11, Takagi describes a TmTPO of 110-130C (paragraph 83). Hasegawa describes the softening point of the flame retardant as between 80-130C (translation p.3 penultimate paragraph). Thus the difference TmTPO -TFR is -20 to 50C, which overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Takagi with Hasegawa describes values overlapping with the claimed range.
Regarding claims 12 and 13, Hasegawa describes the softening (melting) point of the brominated epoxy oligomer as between 80-130C (translation p.3 penultimate paragraph), with examples at 106-120C (p.4 penultimate paragraph; KBE-3020) and 114-120 (p.5 paragraph 4; CXB-1020C). The instant specification states that “In compounds of this type, the glass transition temperature TgFR is often lower than the melting point TmFR” but it does not report both the TgFR and the TmFR for any of the exemplary brominated bisphenol-based flame retardants. Kaiji describes the “molecular weight” of KBE-3020 as about 2000 (p.13 first paragraph “KBE-3020…molecular weight about 2000). Since Hasegawa reports a structure falling within the claimed structure and the instant structure demonstrates the claimed glass transition temperature (see instant Table 1 FR1), one of ordinary skill would reasonably expect Hasegawa’s flame retardant to exhibit glass transition temperatures around this value (87C). This touches the claimed range.
Response to Arguments
Applicant's argument p.6-7 first paragraph of Remarks submitted 8/27/25 has been considered but is not persuasive. Applicant states that Hasegawa and Takagi teach different kinds of foams and thus are not combinable. This is not found convincing because Takagi merely teaches a generic flame retardant (paragraph 74) while Hasegawa touts a specific one, the brominated epoxy oligomer. The polymeric foam in both Takagi and Hasegawa is polyethylene-based. Hasegawa points to issues when the processing temperature is near the softening point of the polyethylene but the flame retardant exists as a powder (Hasegawa background). Takagi's polyethylene is also processed near the softening point of his polyethylene (paragraph 120, 132). Thus the advantages described by Hasegawa of better control of foaming thru use of the brominated epoxy oligomer flame retardant would motivate one of ordinary skill and reasonably be expected to convey to Takagi.
Applicant's argument p.7 second paragraph has been considered but is not persuasive. Applicant states that the combination of thermoplastic elastomer and brominated bisphenol-based flame retardant in the claims is associated with unexpected improvements in the fusion rate of the expanded beads. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant' s showing of allegedly unexpected results does not satisfy these requirements. First the “unexpected result” is a property of a fused bead, not an expanded one. Fusion of the beads is a separate process that entails many variables that are not under consideration in claims to merely expanded beads. The improved fusion rate can be affected by more than the product claimed, so the attribution of this quality to the combination claimed is not clear.
Second, the claims are not commensurate in scope. The claim is to any “base polymer comprising an olefin-based thermoplastic elastomer” yet the examples do not appear to vary the base polymer at all, describing only one melting point throughout the examples. The term “comprising” regarding the base polymer leaves room for the majority of the base polymer to be something else entirely. The overarching term “comprising” in the preamble also leaves room for many ingredients which could have an effect on the “unexpected result” of fusion of beads. Furthermore, Formula (1) leaves room for many “monovalent” or “divalent” substituents; these are very broad terms which can include thousands of possibilities of varying chemical and physical properties.
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 CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766