DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-15 in the reply filed on 9/28/25 and the species PET in the reply filed 5/21/26 is acknowledged.
The claim set of 5/21/26 is examined below.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-7, 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Solid state foaming of poly(ethylene terephthalate) based on periodical CO2-renewing sorption process” by Xia et al.
Xia describes a series of polyethylene terephthalate foams.
Regarding claim 1, Xia describes a material of PET (p.125 section 2.2) with a thickness and a closed-cell structure (see p.130 Fig.8 images) with an average cell size of 5-22 microns (p.132 Table 1). Xia describes the density prior to foaming as 1.35 g/cm3 (p.125 section 2.1) and the expansion ratio as 3.1-5.9 (p.132 Table 1), meaning a density of the PET foams in Table 1 range from 0.23 to 0.44 g/cm3. Prior art which teaches a range overlapping or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity (see MPEP section 2131.03).
Regarding the phrase “a material for making an underlayment of a floor”, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since Xia’s material may serve as making an underlayment of a floor, Xia’s material meets this aspect of the claim.
Regarding claim 2, Xia describes PET (p.125 section 2.2).
Regarding claim 3, Xia describes solid-state microcellular foaming (p.125 section 2.2).
Regarding claims 4 and 5, notably the claim is to “a plurality of closed cells”, not “all cells” in the foam, and Xia meets the claim at least by describing specific examples with average cell diameters ranging from 5.02-22.31 microns (p.132 Table 1).
Regarding claim 6, Xia gives an example – with expansion ratio of 5.92- which has a density of 0.23 g/cm3, as well as a range up to 0.44g/cm3 (p.132 Table 1; p.125 section 2.1).
Regarding claim 7, Xia’s images show foams with a thickness of for example about 550 microns according to the sizing bar (Fig.8(a) p.130, corresponding to second entry in Table 1).
Regarding claim 15, Xia’s images show foams with a skin layer (e.g. p.130 Fig.8(a), corresponding to the second entry in Table 1).
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 9-12 is/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 “Solid state foaming of poly(ethylene terephthalate) based on periodical CO2-renewing sorption process” by Xia et al.
Xia is described above.
Regarding claims 9-12, Xia is silent as to the compressive stress that reduces the thickness by specific amounts. However, this compressive stress is a property and does have a value in Xia’s material. The instant specification states that compressive strength is generated by very small closed cells and a density greater or equal to 0.18 g/cm3 (instant publication paragraph 7). The instant example of 0.6mm-thick, 0.188 g/cm3 PET experiences a 10% deformation at about 0.6 MPa, a 25% deformation at about 2.3 MPa, and a 50% deformation at about 2.6 MPa (instant Fig.4A). Xia describes a very similar PET, also made by solid state foaming of PET with carbon dioxide (p.125 section 2.2), which is 0.5mm thick (Fig.8 item (e)) and has a density of (1.35/5.92) 0.23 g/cm3 (p.132 Table 1 item 1) with average cell diameter of 22 microns. There are no instant comparative examples. Given the extreme similarity between the exemplary PET and Xia’s PET as well as the small cell diameter of Xia, one of ordinary skill would reasonably expect Xia’s amount of stress to be close to 0.6 MPa at 10% deformation (claim 9), 2.3 MPa at 25% deformation (claim 10, 11) and 2.6 MPa at 50% (claim 12) deformation. These values fall within the claimed ranges.
If in the alternative Xia’s example is insufficient to anticipate the claimed ranges, one of ordinary skill would reasonably expect the range of Xia’s examples in density and cell size - see p.132 Table 1- to at least overlap with the claimed ranges of compressive stress because Xia’s material (PET with CO2) and preparation (solid state foaming) is so close to instant examples which fall within the claimed range.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20120232175 by Lindenfelzer et al.
Lindenfelzer dscribes PET foam articles.
Regarding claim 1, Lindenfelzer describes a PET foam sheet which has a thickness (paragraph 40) and closed cells (paragraph 38). LIndenfelzer exemplifies a cell size of 100 microns (paragraph 48) and a density which is greater than 0.15 g/cm3 (paragraph 39). Lindenfelzer also describes a cell size less than 75 microns (paragraph 37).
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 Lindenfelzer describes values overlapping with the claimed range.
Regarding the phrase “a material for making an underlayment of a floor”, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since Lindenfelzer’s material may serve as making an underlayment of a floor, Lindenfelzer’s material meets this aspect of the claim.
Regarding claim 2, Lindenfelzer describes PET (paragraph 36).
Regarding claim 3, the phrase “formed by a solid-state microcellular foaming process” is product-by-process language. “[E]ven 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 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since Lindenfelzer describes a PET foam and solid-state processing does not necessarily inflict specific permanent factors on a foam, Lindenfelzer’s foam meets the claim.
Regarding claims 4 and 5, notably the claim is to “a plurality of closed cells”, not “all cells” in the foam, and Lindenfelzer meets the claim by exemplifying a cell size of 100 microns (paragraph 48) and describing cell size of less than 75 microns (paragraph 37). Some plurality of these cells are reasonably expected to be in the claimed range, and Lindenfelzer’s description overlaps with the claimed range.
Regarding claim 6, Lindenfelzer describes a preferred density less than 0.35 g/cm3 or less than 0.25 g/cm3.
Regarding claims 7 and 8, Lindenfelzer describes a thickness of 0.05-0.1in (paragraph 40) which corresponds to 1.27-2.54mm.
Regarding claims 9-12, Lindenfelzer is silent as to the compression necessary to reduce the thickness by 10% or 25% or 25-35% or 50%. However, this compressive stress is a property and does have a value in Lindenfelzer’s material. The instant specification states that compressive strength is generated by very small closed cells and a density greater or equal to 0.18 g/cm3 (instant publication paragraph 7). Lindenfelzer has a preferred density of 0.15-0.25 g/cm3 and very small cells which coincide with the instantly preferred size of less than 200 micrometers. One of the instant examples, Fig.4a, has a thickness of 1.25mm, close to Lindenfelzer’s 1.27mm (paragraph 40). A Lindenfelzer sample of 0.25g/cm3 and 1.27mm thick would align closely with instant example 62 (bar graph 66) in instant Fig.4a. This instant example has a 10% deformation at about 1.3MPa, a 25% deformation at about 4.9MPa and a 50% deformation at about 5.8MPa (instant Fig.4a). There are no instant comparative examples. Since Lindenfelzer describes embodiments which closely parallel the instant example 62, one of ordinary skill would reasonably expect embodiments of Lindenfelzer to overlap with the claimed ranges.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 5844731 by Kabumoto et al.
Kabumoto describes a light reflecting plate.
Regarding claim 1, Kabumoto describes a thermoplastic polymer having a thickness (col 3 ln 10-15) and microstructure in the form of a mean cell diameter of less than 50 microns, preferably less than 30 microns (col 2 ln 63-col 3 ln5) and a density of 0.05-0.7 (col 3 ln 19-25). Some amount of these cells are closed, reading on the claim.
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 Kabumoto describes values overlapping with the claimed ranges.
Regarding the phrase “a material for making an underlayment of a floor”, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since Kabumoto’s material may serve as making an underlayment of a floor, Kabumoto’s material meets this aspect of the claim.
Regarding claim 2, Kabumoto describes PET (col 6 ln 12-15).
Regarding claim 3, Kabumoto describes solid state foaming (col 5 ln 1-45).
Regarding claims 4 and 5, notably the claim is to “a plurality of closed cells”, not “all cells” in the foam, and Kabumoto meets the claims by describing an average cell size of less than 50 microns, preferably less than 30 microns (col 2 ln 63-col 3 ln5) and a density of 0.05-0.7 (col 3 ln 19-25).
Regarding claim 6, Kabumoto describes density of 0.05-0.7 (col 3 ln 19-25). This overlaps with the claimed range.
Regarding claims 7 and 8, Kabumoto describes a thickness of preferably 500 microns (0.5mm) or more (col 3 ln 15-17), which overlaps with the claimed range. Kabumoto describes how to adjust the thickness (col 4 ln 50-60).
Regarding claims 9-12, Kabumoto is silent as to the amount of stress as claimed. However, this compressive stress is a property and does have a value in Kabumoto’s material. The instant specification states that compressive strength is generated by very small closed cells and a density greater or equal to 0.18 g/cm3 (instant publication paragraph 7). Kabumoto describes the small closed cells instantly preferred, i.e. an average less than 50 microns (col 2 ln 63-col 3 ln 5) and a range of density which encompasses the instantly preferred range of 0.18 to 0.3 (Kabumoto 0.05-0.7 col 3 ln 18-25), as well as a thickness overlapping with the instantly tested thickness (instant test 0.6mm and 1.27mm Fig.4A; Kabumoto 0.5 microns or more (col 3 ln 17) and examples of 0.6mm and 0.9 mm (col 4 ln 55-60). There is no instant comparative example. One of ordinary skill would reasonably expect Kabumoto’s PET resin to exhibit values in the claimed ranges because his material closely follows instant properties associated with the claimed range.
Regarding claim 13, Kabumoto describes a density ranging from 0.05-0.7 (col 3 ln 18-25), a thickness exemplified at 0.6mm (col 4 ln 56) and describes properties which affect compression which hew closely to the instant properties (see rejection of claims 9-12 directly above). Thus Kabumoto describes a material which encompasses the claimed values.
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 Kabumoto describes values overlapping with the claimed ranges.
Regarding claim 14, Kabumoto describes a density ranging from 0.05-0.7 (col 3 ln 18-25), a thickness greater than 0.5mm and how to adjust it higher (col 4 ln 55-60), and properties which affect compression which hew closely to the instant properties (see rejection of claims 9-12 above). Thus Kabumoto describes a material which encompasses the claimed values.
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 Kabumoto describes values overlapping with the claimed ranges.
Regarding claim 15, Kabumoto is silent as to the structure of the PET foam, but describes solid-state microcellular foaming of polyethylene terephthalate with carbon dioxide (col 6 ln 13-30) and subsequent heating to 150C (col 5 ln 40-45) and optionally 200-220C (col 5 ln 60-63). The instant specification states that solid state foamed PET achieves a skin layer when heated close to its glass transition temperature (instant publication paragraph 27), which is 65-80C for PET. Thus one of ordinary skill would reasonably expect Kabumoto’s heated foam to have a skin, i.e. layer that does not include closed cells.
Conclusion
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
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