DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: 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
As previously set forth: Applicant's election with traverse of Group I and the species associated with Example 7 (blend of 2 ethylene-octene polymers and 4, 4 oxybisbenzene sulfonylhydrazide) in the reply filed on 8/12/25 is acknowledged. The traversal is on the ground(s) that there are no MW teachings in the reference thus it is impossible to know if the MW is sufficient to promote chain entanglement. This is not found persuasive because a polymer is not an oligomer or monomer, by definition. A polymer has a MW and such would be expected to implicitly entangle. There is no showing of MW’s in the instant application nor an explanation of what MW would or would not achieve such. Even short MW polymers will intertwine (e.g. entangle) in bulk, it is unclear why Applicant would not expect such especially when the polymer genus (foamable thermoplastic polymers such as those made from polyolefins) is met. Arguments herein are thusly not persuasive. The Examiner requests quantifiably data/evidence to rebut this argument.
The requirement is still deemed proper and is therefore made FINAL.
Claim 40 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/12/25.
Priority
As previously set forth: The claims have an effective date of the filing of the provisional application: 3/27/20
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/26/26, 1/9/26, 12/19/25, 10/6/25 have been considered by the examiner.
Response to Arguments/Amendements
Applicant’s amendments overcome Pillars, since it incorporates claim 4 into claim 1 (which was not met by Pillars). Pillars is thusly withdrawn.
Regarding arguments drawn to Gossi v. Yalvac, Applicant argues i-vii (of the remarks) are not met.
The Examiner disagrees. The density of the uncured ethylene octene polymer is rendered obvious by the rejection, thus ii) is met, the elected foaming agent is met as is an exemplified foaming agent having the claimed activation temperature, as required by iv). The other properties of i), iii), v), vi) and vii) are all expected to be embraced by the combination of references since the composition requirements are met. There being no other key elements/factors needed to take into account in order to obtain such. The Examiner notes that there are some examples in Table 4 of the instant specification that have a Asker C of 28 and 23, however, the paragraph below seems to infer a +5 error bar in relation to the data, thus it seems reasonable that a Asker C of 30 is expected to be embraced by the use of the polymers of the reference.
Applicant argues the Office Action has not identified wherein the art is taught a filament with sufficient uncured density to allow for stitching, and, instead relies on making a significant number of assumptions. Applicant argues it is unclear if the density of Yalvac with the uncured, cured or foamed state density. Applicant argues the open cell size is not explicitly taught in any of the cited references.
The Examiner disagrees. The cited density in Yalvac is expected to be the uncured density. The Examiner is not aware of one regularly citing ‘cured’ density of a composition. The Examiner is confused why Applicant believes such and requests clarification or evidence to the contrary. The density, and, other composition elements meet all key elements of the claims/specification in order to achieve the claimed filament. The Examiner is unable to test compositions in a laboratory and thus must work with what is available. Applicant is welcome to show that there are other key features that the examiner has not appreciated that are needed in order to achieve the end product. Likewise that the open cell size is not explicitly disclosed is found moot unless Applicant can show that such would not be necessarily met by the references. The Examiner has met the composition components, thus, it seems reasonable to expect that when foaming one would achieve the same properties as currently claimed. As such Applicant’s arguments are not found persuasive and the rejection stands as set forth below.
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.
Claim 1, and its dependents, 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.
Claim 1 has the limitation “Asker C hardness of the foamed composition is greater than 30” is new matter. The Asker C hardness is found in [0011] and [0018] of the instant specification. While an Asker C hardness of “less than 30” is found in [0018] the open ended range, and, the ‘greater than’ is not found.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 33, and its dependents, is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 33 depends from cancelled claim 4 and is thus indefinite. It will be treated as depending from claim 1.
Additionally “the water absorption” lacks antecedent basis.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 22, and its dependents, is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 22 has “after foaming” whilst claim 1 has the same limitation without such. Though this is slightly different from the open cell limitation now in claim 1, open cell can only occur after foaming. Thus the claim fails to further limit claim 1
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Rejection over Claim(s) 1, 3, 7, 10, 13, 16, 18, 20-22, 24, 33-34, 37 under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, 35 U.S.C. 103 as being unpatentable over Pillars (US 2014/0042706) is withdrawn for reasons set forth above.
Rejection over Claim(s) 1-3, 7, 10, 13, 16, 18, 20-22, 24, 28, 33-34, 37 under 35 U.S.C. 103 as being unpatentable over Gossi (US 2015/0225527) is withdrawn due to amendment.
Claim(s) 1, 3, 5, 18, 20-22, 24, 33-34, 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gossi (US 2015/0225527) in view of Yalvac (US 2006/0030667).
Gossi discloses thermoplastic foamable mixtures comprising polymers A and B (title/abstract). Both polymers A and B may be ethylene-octene copolymers, though note there are other options to choose from. Both A and B may be long chain branched thermoplastic polymers [0020]. The composition comprises blowing agents (foaming agents) such as diphenyl oxide 4, 4-disulfonic acid hydrazide [0047] (meeting the elected foaming agent). The composition can be injected molded without foaming (last sentence of abstract) (meeting the melt processable at a temperature sufficiently below the activation temp of the foaming agent).
Though the above is picked from a list of possible combinations, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985)
Gossi includes elements as set forth above. Gossi discloses the use of ethylene-octene polymers. Said polymers implicitly have a density associated therewith, but Gossi does not disclose the density thereof.
Yalvac discloses polymer compositions comprising ethylene octene copolymers (abstract). The polymers may be foamed [0085], thus akin to Gossi. Yalvac discloses the density of the ethylene octene polymers to be less than 0.9130 g/cm3 [0080]. Yalvac thusly teaches this density to be suitably known for ethylene octene polymer compositions that may be foamed.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Gossi the use of an ethylene octene copolymer density of equal or less than 0.9130 g/cm3, as taught by Yalvac, since it is recognized in the art to be suitable for the intended use thereof. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.
Since the composition requirements are met, and, long chain polymers may be used, the “sufficient molecular weight to allow for polymer chain entanglement” is deemed to be embraced by the reference, thus rendering the claims prima facie obvious.
Elements above meet the compositional elements of claim 1. The average cell size, the open cell, the Asker C Hardness and density post foaming are future intended use, and, properties associated with the future intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The activation temperature of the exemplified foaming agent is 191C [0078], though since the elected foaming agent is met this claim is alternatively met by such (the elected species would implicitly meet this). The claimed/elected foaming agents, and, polymers are met, thus the combination embraces those future use properties of claims 1, 5, 18, 20, 21, 22.
The composition is melt processable at 105C [0077], as required by claim 3. Particulates such as hydrophobic silica may be added [0050], as required by claim 24. Claims 33-34 are drawn to properties of the composition, which must be embraced since the genus (polyolefin thermoplastic polymer having an activator as claimed) is met. The foaming agent is added in amounts ranging 0.1-20% [0048], meeting claim 37.
Rejection over Claim(s) 4-6 under 35 U.S.C. 103 as being unpatentable over Gossi in view of Yalvac (US 2006/0030667) has been incorporated into the rejection above.
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.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759