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 with traverse of Group I, claims 1-9, in the reply filed on 4/7/2026 is acknowledged. The traversal is on the grounds that “finding lack of unity is premature in the present application as a full search of the prior art has yet to be conducted.” This is not found persuasive because a full search of the prior art is not a requirement for Restriction set forth in MPEP 1850.
Rather, the test for unity of invention is whether there is a technical relationship among the claimed inventions involving one or more special technical features as stated, in MPEP 1850. As discussed in the Restriction mailed on 2/13/2026, Groups I through IV lack unity of invention because even though the inventions of these groups require the technical feature of a filler composition comprising a liquid epoxy resin; a polyvinylchloride resin and/or acrylic resin powder; a foaming agent; and 1 to 5wt% based on the total weight of the composition of at least one calcium or zinc salt of a fatty acid AMS (AMS appears to mean alkali metal salt), this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Hacker et al. (US 2011/0275747) as evidenced by the data sheet for Vinnolit S41710 from Westlake, September 2025.
Hacker et al. (US 2011/0275747) teaches a composition comprising blowing agents (¶77 and ¶158), epoxy plasticizers which includes liquid epoxies (see ¶161, (iv)) as well as liquid bisphenol A diglycidyl ether (¶146, a)); calcium stearate which is a calcium salt of a C16-C18 fatty acid (see ¶105-106) and/or zinc stearate (¶110); and polyvinyl chloride resin (¶181). The metal soap, of which calcium stearate and zinc stearate are specifically named examples, is present in an amount of from 0.05 to 5 parts by weight per 100 parts by weight of PVC (¶111). The epoxy compounds are present in an amount of from 0.5 to 5.0 phr (¶150). The amount of metal soap, of which calcium stearate and zinc stearate are named preferred examples, overlaps the amount of calcium or zinc salt of C16-C18 fatty acid recited in instant claim 1. Examples of blowing agent are thermally expandable blowing agents. This makes the composition of Hacker et al. “thermally expandable.” The PVC used in the examples of Hacker et al. is a powder (see attached data sheet for Vinnolit S4170). As the composition comprises the same materials as recited in the instant claims, the composition also meets “pumpable” and “filler” as recited in the instant claims, as these are both intended uses and properties of the instantly claimed composition.
Thus, the feature which is common among Groups I through IV is present in the prior art; the feature does not amount to a special technical feature because it is present in the prior art; unity of invention is not present; and Restriction is proper.
Claims 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/7/2026, the traversal of which is not persuasive for the reasons discussed above.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 1 and 6-8 are objected to because of the following informalities:
Claim 1 recites “based on the total weight of the pumpable thermally foaming filler composition” in lines 3-4, 5-6, and 7-8. While this is not unclear, the claim does not recite an amount of the material, meaning “based on the total weight of the pumpable thermally foaming filler composition” is unnecessary.
Claim 6 recites “The pumpable thermally foaming filler comprising of claim 1 further comprising a rubber, relative to the total weight of the composition.” While this is not unclear, as a rubber is present in the composition, the claim does not recite an amount of the material, meaning “relative to the total weight of the composition” is unnecessary.
Claim 7 recites “The pumpable thermally foaming filler comprising of claim 1 further comprising at least one plasticizer, based on the total weight of the pumpable thermally foaming filler composition.” While this is not unclear, as at least one plasticizer is present in the pumpable thermally foaming filler composition, the claim does not recite an amount of the material, meaning “based on the total weight of the pumpable thermally foaming filler composition” is unnecessary.
Claim 8 recites “The pumpable thermally foaming filler comprising of claim 1 further comprising a curing agent for the liquid epoxy resin, based on the total weight of the pumpable thermally foaming filler composition.” While this is not unclear, as curing agent for the liquid epoxy resin is present in the pumpable thermally foaming filler composition, the claim does not recite an amount of the material, meaning “based on the total weight of the pumpable thermally foaming filler composition” is unnecessary.
Appropriate correction is required and is respectfully requested.
Claim Rejections - 35 USC § 112
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.
Claims 6 and 9 are 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 6 recites “the composition” at the end of the claim. There is insufficient antecedent basis for this limitation. The claim previously recites a “pumpable thermally foaming filler composition.” Claim language must be kept consistent in order for proper antecedent basis to be present.
Claim 9 recites “The pumpable thermally foaming filler composition of claim 1 further comprising one or more based on the total weight of the pumpable thermally foaming filler composition.” The claim is indefinite because the claim does not recite what the pumpable thermally foaming filler composition further comprises. It states “one or more” and does not recite what the material is. It is not clear what the claim intends to recite is further present in the claimed pumpable thermally foaming filler composition. Therefore, claim 9 is indefinite.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hacker et al. (US 2011/0275747) as evidenced by the data sheet for Vinnolit S41710 from Westlake, September 2005.
Hacker et al. teaches a composition comprising blowing agents (¶77 and ¶158), epoxy plasticizers which includes liquid epoxies (see ¶161, (iv)) as well as liquid bisphenol A diglycidyl ether (¶146, a)); calcium stearate which is a calcium salt of a C16-C18 fatty acid (see ¶105-106) and/or zinc stearate (¶110) (which meet instant claims 3-4); and polyvinyl chloride resin (¶181). Bisphenol A diglycidyl ether meets instant claim 5 when s is 0 and R’ and R’’ are methyl. The metal soap, of which calcium stearate and zinc stearate are specifically named examples, is present in an amount of from 0.05 to 5 parts by weight per 100 parts by weight of PVC (¶111). The epoxy compounds are present in an amount of from 0.5 to 5.0 phr (¶150). The amount of metal soap, of which calcium stearate and zinc stearate are named preferred examples, overlaps the amount of calcium or zinc salt of C16-C18 fatty acid recited in instant claim 1. Examples of blowing agent are thermally expandable blowing agents. This makes the composition of Hacker et al. “thermally expandable.” The PVC used in the examples of Hacker et al. is a powder (see attached data sheet for Vinnolit S4170). As the composition comprises the same materials as recited in the instant claims, the composition also meets “pumpable” and “filler” as recited in the instant claims, as these are both intended uses and properties of the instantly claimed composition.
The amount of metal soap disclosed in Hacker et al. overlaps the amount of calcium or zinc salt of fatty acid as recited in instant claims 1-2. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings of Hacker to use an amount of calcium stearate or zinc stearate which meets the instant claim limitations of instant claims 1-2 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Hacker et al. teach that rubbers can be added to the compositions of the invention. See ¶180. Hacker et al. expressly recites using PVC with elastomeric (rubber) polymers. This meets instant claim 6.
Hacker et al. teaches that the compositions include plasticizers. See ¶67, ¶153, and ¶161-162. This meets instant claim 7.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US 2018/0037708) and further in view of Shimizu et al. (EP 0672709A2).
Lin et al. teach a pumpable thermally foaming filler composition comprising a combination of a liquid epoxy resin and a polyvinylchloride resin and/or acrylic resin powder (abstract). The composition further comprises a foaming agent (¶33), a rubber (¶36), a plasticizer (¶38), and a curing agent (¶41), which meets instant claims 6, 7, and 8, respectively. The liquid epoxy resin disclosed in Lin et al. meets instant claim 5 (see ¶15-16).
Lin et al. does not expressly recite that the compositions include calcium or zinc salt of fatty acid containing 16 C-atoms or 18 C-atoms, specifically the compounds recited in instant claim 4, in the amount recited in instant claim 2.
However, EP 0672709A2 teaches an expandable PVC resin composition comprising a PVC powder, a plasticizer and a foaming agent and expanded (foamed) articles formed therefrom. See page 1, lines 36-40 and line 42. The compositions comprise, for example, epoxy compounds (page 5, line 6) and further comprising a zinc stearate foaming agent in an amount of from 0.2 to 3 parts by weight per 100 parts by weight of the PVC resin. See page 5, ln. 18-21. This is an amount of about 0.2wt% to about 2.9wt%. This overlaps the amounts of instant claims 1-2. Zinc stearate meets instant claims 1-2 and 4. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings of EP 0672709A2, to use zinc stearate in an amount which meets the instant claim limitations of instant claim 2 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Both Lin and Shimizu relate to the field of PVC compositions and foams produced therefrom. It would have been obvious to one of ordinary skill before the effective filing date of the instant invention to use zinc stearate in the amount disclosed in Shimizu in the invention of Lin in order to provide foaming assistance to the foaming agent of Lin et al., thereby controlling the foaming rate and ratio of the foams of Lin et al. See page 5, lines 16-21 of Shimizu et al.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US 2018/0037708) and further in view of Shimura (WO 2016/152085). Because WO 2016/152085 is not in English, the machine-translated English equivalent is cited below and is attached.
Lin et al. teach a pumpable thermally foaming filler composition comprising a combination of a liquid epoxy resin and a polyvinylchloride resin and/or acrylic resin powder (abstract). The composition further comprises a foaming agent (¶33), a rubber (¶36), a plasticizer (¶38), and a curing agent (¶41), which meets instant claims 6, 7, and 8, respectively. The liquid epoxy resin disclosed in Lin et al. meets instant claim 5 (see ¶15-16).
Lin et al. does not expressly recite that the compositions include calcium or zinc salt of fatty acid containing 16 C-atoms or 18 C-atoms, specifically the compounds recited in instant claims 3-4, in the amount recited in instant claim 2.
However, Shimura teaches polyvinyl chloride compositions and molded articles produced therefrom. The polyvinyl chloride resin comprises foaming agents (¶57), making the composition foamable, and a plasticizer (¶43) with examples being liquid epoxy resins (¶44). The polyvinyl chloride resin further comprises a fatty acid metal salt, with expressly named examples being calcium stearate and zinc stearate (¶53). The amount of fatty acid metal salt, with expressly named examples being calcium stearate and zinc stearate, is preferably 0.1 parts by mass or more and 5 parts by mass or less per 100 parts by mass of the vinyl chloride resin, making the amount about 0.1wt% to about 4.7 wt%. This overlaps the amount recited in instant claim 2. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings of Shimura, to use calcium stearate or zinc stearate in an amount which meets the instant claim limitations of instant claim 2 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Both Lin and Shimura relate to the field of foamable/expandable PVC compositions comprising liquid epoxy (plasticizer) and a foaming agent and used to produce, for example, interior materials for vehicle (automative) body members (see ¶1 of Lin and ¶68 of Shimura). It would have been obvious to one of ordinary skill before the effective filing date of the instant invention to use fatty acid metal salts such as calcium stearate or zinc stearate in the amount disclosed in Shimura in order to provide good flexibility at lower temperatures to the compositions of Lin, reduced lintiness to the compositions of Lin, and minimization of discoloration after heating to the compositions of Lin et al. See ¶54 of Shimura et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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