Claims 13, and 15-24 are currently pending with claims 1-12, 14 and 25 being cancelled. Claims 13 and 15-24 are rejected.
The rejection over Honda has been maintained.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 13, and 15-24 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2018/163612 to Honda et al. (hereinafter “Honda”) wherein US 2021/0130564 will be relied upon as a translation of WO 2018/163612.
Honda discloses a polyolefin foam sheet is obtained from a resin composition comprising 40 % by mass of a polypropylene resin, 20% by mass of a polyethylene resin and 40% by mass of a thermoplastic elastomer resin (table 2, examples 9). The sum of the content of the polyethylene resin, the polypropylene resin and the thermoplastic elastomer resin is 100%. The resin composition further includes a foaming agent, a crosslinking agent, and an antioxidant with their contents within the ranges outlined in the Applicant’s disclosure (table 2). The polyolefin foam sheet has a thickness of 1 to 3 mm, an apparent density of 30 to 350 kg/m3 and a gel fraction of 35 to 55% (paragraph 167). In particular, the polyolefin foam sheet has an apparent density of 64 kg/m3 and a gel fraction of 33% (table 2, example 8). The thickness, the apparent density and the gel fraction are within the claimed ranges.
The polyolefin foam sheet exhibits the thermal shrinkage rate in MD and TD after 1 hour at the temperature of 100oC of -5% (table 3, example 21).
Honda does not explicitly disclose the polyolefin foam comprising: -28.9% to 0% for dimensional change in MD and -21% to 0% for dimensional change in MD under heating for 10 mins at a temperature 20oC higher than a maximum melting point that is a highest melting peak in a differential scanning calorimetry; and a -24.5% to 0% for an average of dimensional change in the MD and dimensional change in the TD under heating for 10 mins at a temperature 20oC higher than a maximum melting point that is a highest melting peak in a differential scanning calorimetry.
However, it appears that the polyolefin foam sheet is obtained from a similar resin composition set forth in the claims. The resin composition comprises 40% by mass of a polypropylene resin, 20% by mass of a polyethylene resin and 40% by mass of a thermoplastic elastomer resin (table 2, examples 9). The sum of the content of the polyethylene resin, the polypropylene resin and the thermoplastic elastomer resin is 100%. The resin composition further includes a foaming agent, a crosslinking agent, an antioxidant with their contents within the ranges outlined in the Applicant’s disclosure. The polyolefin foam sheet has a thickness of 1 to 3 mm, an apparent density of 30 to 350 kg/m3 and a gel fraction of 35 to 55% (paragraph 167). In particular, the polyolefin foam sheet has an apparent density of 64 kg/m3 and a gel fraction of 33% (table 2, example 8). The thickness, the apparent density and the gel fraction are within the claimed ranges.
The polyolefin foam sheet exhibits the thermal shrinkage rate in MD and TD after 1 hour at the temperature of 100oC of -5% (table 3, example 21). This is within the claimed range.
Therefore, the Examiner takes the position that the -28.9% to 0% for dimensional change in MD, the -21% to 0% for dimensional change in TD under heating for 10 mins at a temperature 20oC higher than a maximum melting point that is a highest melting peak in a differential scanning calorimetry; and the -24.5% to 0% for the average of the dimensional change in the MD and dimensional change in the TD under heating for 10 mins at a temperature 20oC higher than a maximum melting point that is a highest melting peak in a differential scanning calorimetry would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Honda does not explicitly disclose that the MD stretch ratio is controlled within approximately 2.0-3.1 and the drawn draw down ratio is held at or near 1.0-1.6 during sheet formation.
However, they are directed to product-by-process limitations not as yet shown to produce a patentably distinct article. The polyolefin foam sheet of Honda is identical to or only slightly different than the claimed polyolefin foam sheet prepared by the method set out in the claim, because both foam sheet are formed from the same materials, having structural similarity. The polyolefin foam sheet of Honda is obtained from a similar resin composition set forth in the claims. The resin composition comprises 40% by mass of a polypropylene resin, 20% by mass of a polyethylene resin and 40% by mass of a thermoplastic elastomer resin (table 2, examples 9). The sum of the content of the polyethylene resin, the polypropylene resin and the thermoplastic elastomer resin is 100%. The resin composition further includes a foaming agent, a crosslinking agent, an antioxidant with their contents within the ranges outlined in the Applicant’s disclosure. The polyolefin foam sheet has a thickness of 1 to 3 mm, an apparent density of 30 to 350 kg/m3 and a gel fraction of 35 to 55% (paragraph 167). In particular, the polyolefin foam sheet has an apparent density of 64 kg/m3 and a gel fraction of 33% (table 2, example 8). The thickness, the apparent density and the gel fraction are within the claimed ranges. The polyolefin foam sheet exhibits the thermal shrinkage rate in MD and TD after 1 hour at the temperature of 100oC of -5% (table 3, example 21). This is within the claimed range.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or an obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to the applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289,291 (Fed. Cir. 1983). It is noted that if the applicant intends to rely on Examples in the specification or in a submitted Declaration to show non- obviousness, the applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with Honda.
As to claim 15, Honda discloses that the polyolefin foam sheet has a thickness of 1 to 3 mm, an apparent density of 30 to 350 kg/m3 and a gel fraction of 35 to 55% (paragraph 167). In particular, the polyolefin foam sheet has an apparent density of 64 kg/m3 and a gel fraction of 33% (table 2, example 8). The thickness, the apparent density and the gel fraction are within the claimed ranges.
As to claim 17, Honda discloses that the polyolefin foam sheet exhibits the thermal shrinkage rate in MD and TD after 1 hour at the temperature of 100oC of -5% (table 3, example 21). This is within the claimed range.
As to claim 16, and 18-23, Honda does not explicitly disclose the polyolefin foam sheet comprising:
(i) a ratio of 0.5 to 1.5 for the dimensional change in the MD to the dimensional change in TD on heating for 10 mins at a temperature 20oC higher than the maximum melting point that is the highest peak in the differential scanning calorimetry;
(ii) an average cell size ratio BDMD/ BDTD of 0.7:1 to 1.3:1;
(iii) a ratio of the tensile strength in the MD to the tensile strength in the TD of 0.7:1 to 1.3:1;
(iv) a curl height of greater than or equal to a thickness of the foam sheet, and the curl height of the foam sheet is less than or equal to 15 mm, the curl height being obtained on the heating;
(v) 1.0 to 1.2 for a surface layer gel fraction ratio of GFA/GFB wherein GFA and GFB, respectively represent larger and smaller gel fractions of first and fifth layers obtained by equally dividing the polyolefin foam sheet into five layers in a thickness direction;
(vi) 1.0 to 1.2 for a surface layer average cell size ratio of BDA / BDB wherein BDA and BDB respectively represent larger and smaller ones of average cell sizes BD of first and fifth layers obtained by divine the polyolefin foam sheet equally into five layers, which are labeled as the first to fifth layers on this order, in a thickness direction; and
(vii) 1.0 to 1.5 for an average cell size ratio before and after heating of BDBF / BDAF, where BDBF and BDAF respectively represent average cell sizes of the polyolefin foam sheet obtained before and after the heating.
However, it appears that the polyolefin foam sheet is obtained from a similar resin composition set forth in the claims. The polyolefin foam sheet is obtained from a resin composition comprising comprising 40% by mass of a polypropylene resin, 20% by mass of a polyethylene resin and 40% by mass of a thermoplastic elastomer resin (table 2, examples 9). The sum of the content of the polyethylene resin, the polypropylene resin and the thermoplastic elastomer resin is 100%. The resin composition further includes a foaming agent, a crosslinking agent, and an antioxidant with their contents within the ranges set forth in the Applicant’s disclosure (table 2). The polyolefin foam sheet has a thickness of 1 to 3 mm, an apparent density of 30 to 350 kg/m3 and a gel fraction of 35 to 55% (paragraph 167). In particular, the polyolefin foam sheet has an apparent density of 64 kg/m3 and a gel fraction of 33% (table 2, example 8). The thickness, the apparent density and the gel fraction are within the claimed ranges.
The polyolefin foam sheet exhibits the thermal shrinkage rate in the MD and TD after 1 hour at the temperature of 100oC of -5% (table 3, example 21). This is within the claimed range.
Therefore, the Examiner takes the position that properties (i)-(vii) would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claim 24, Honda discloses that a laminate is formed by laminating an adhesive layer on the polyolefin resin foam sheet (paragraph 69).
Response to Arguments
The declaration of Hirotaka Kondo filed on 12/23/2025 has been thoroughly reviewed and considered; however, it has not been found effective to overcome the rejection over Honda for the following reasons.
The data presented in the declaration are not aligned with the scope of the claim. As shown in table 3 of the declaration, the sample with the MD stretch ratio of 3.1 at foaming step exhibits dimensional changes on heating in the MD and TD of -36.7% and -22.9%, respectively, which are outside the claimed ranges (comparative example). In contrast, the claim specifies that the dimensional changes on heating in the MD and TD of -28.9% to 0%, -21% to 0%, respectively can be achieved with all samples having the MD stretch ratio of 3.1. Thus, the claim is inconsistent with the data in the declaration.
Further, the sample comprising 10-13 wt% of polyethylene, 50-67 wt% polypropylene and 20-40 wt% of polyolefin elastomer, wherein the sum of the content of the polyethylene, polypropylene and the polyolefin elastomer is 100%, experiences the dimensional changes on heating in the MD and TD of -28.9% to 0%, -21% to 0%, respectively when the MD stretch ratio is controlled within a range of 2.0 to 2.7 and the draw down ratio is held at or near 1.0-1.6 during sheet formation (tables 1, 3 and 4 of the declaration). Therefore, it remains unclear whether the same dimensional changes can be achieved for the claimed sample, which comprises 11-30 wt% of polyethylene, 30-80 wt% polypropylene, and 20-40 wt% of polyolefin elastomer.
Accordingly, the rejection over Honda has been maintained.
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.
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/Hai Vo/
Primary Examiner
Art Unit 1788