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
1. Applicant’s election without traverse of Group I, claims 1-28 in the reply filed on January 6, 2026 is acknowledged.
Claims 29-51 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 6, 2026.
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.
2. Claims 1-28 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 1 refers to “elastomer component” for the second time, but does not have preposition “the” or “said” in front of it. Therefore, it is not clear if the “elastomer component” cited for the second time is the same or different from that cited previously.
Claim Rejections - 35 USC § 102/103
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.
3. Claims 1-6, 20-28 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 Gopalan (US 2020/0199349, Gopalan’349).
4. As to instant claim 1, Gopalan’349 discloses a shoe sole, including midsoles ([0040]), comprising a cross-linked foam polyolefin elastomer comprising:
A) a silane-grafted polyolefin elastomer (as to instant claim 5),
B) a silane-grafted block olefin copolymer,
C) a polyolefin elastomer comprising an olefin block copolymer, EPDM ([0043]), as to instant claims 22-23),
D) an ethylene-vinyl acetate copolymer comprising 10-35%mol of vinyl acetate ([0068]-[0069], as to instant claims 20-21),
E) a foaming agent [0077]-[0083], as to instant claim 26),
F) a peroxide and/or a condensation catalyst ([0041]),
G) metal oxides, silicas ([0085]-[0086], as to instant claim 25);
wherein said polyolefin elastomer is crosslinked by peroxide ([0072]), comprises carbon-carbon crosslinks ([0074]) and comprises a closed cell foam ([0109]),
wherein Gopalan’349 teaches that the silane-grafted polyolefin may have a catalyst added to form a silane-crosslinkable polyolefin elastomer; the silane-crosslinkable polyolefin may then be crosslinked upon exposure to moisture or heat to form final crosslinked foam ([0040]).
5. Thus, Gopalan’349 teaches that i) the condensation catalyst “may be” added to form silane-crosslinkable polyolefin elastomer, but is not required and ii) said crosslinking maybe conducted by heat, and not by exposure to moisture, thereby the producing the peroxide-crosslinked foam in a moisture-free environment, i.e. in environment substantially free of water, as claimed in instant invention, and without producing silane crosslinks as well.
Further, though Gopalan’349 teaches that the condensation catalyst maybe present in the composition to facilitate both the hydrolysis and subsequent condensation of the silane grafts on the silane-grafted polyolefin elastomer to form crosslinks ([0075]), said condensation catalyst is present in amount of about 0.01%wt based on the weight of the blend composition ([0075], as to instant claim 24). Since the term “about 0.01%wt” includes values of less than 0.01%wt, i.e. extremely low, substantially close to zero, amounts, therefore, the shoe sole of Gopalan’349 will intrinsically and necessarily be, or would be reasonably expected to be “substantially” free of silane crosslinking and “substantially” free of water as well, especially since instant specification recites the term “substantially” as signifying values within 0.1-10% of the value or relative characteristic ([0039] of instant specification). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
6. As to instant claim 2, the foamed composition is injection molded into a shoe sole element ([0008]).
As to instant claim 3, the shoe sole comprises a compression set of about 1 to about 50% (48 hours at 50⁰C) ([0006]).
As to instant claim 27, the crosslinked foam used for making the midsole is having rebound resilience of at least 60% ([0116]).
As to instant claim 28, the crosslinked foam used for making the midsole is having crystallinity of as high as 40% ([0114]). Since i) crystallinity is directly related to a melting temperature, i.e. the higher the crystallinity, the higher its melting temperature, and ii) the crosslinked foam used for making the midsole of Gopalan’349 is substantially the same as that claimed in instant invention, therefore, the crosslinked foam used for making the midsole of Gopalan’349 will inherently have, or would be reasonably expected to have melting temperature of greater than 40⁰C, as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
7. In the alternative, based on the teachings of Gopalan’349, it would have been obvious to a one of ordinary skill in the art to choose and use the components A)-G) above for making the cross-linked foam, further to choose peroxide as the only cross-linking agent without condensation catalyst, or in the presence of as low as 0.01%wt of condensation catalyst and in the absence of water, as well, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
8. Further, since the midsole of Gopalan’349 is produced from substantially the same composition as claimed and disclosed in instant invention, including using two silane-grafted polyolefins, in the presence of peroxide as crosslinking agent, in substantial absence of water/moisture and substantial absence of the condensation catalyst, therefore, the midsole of Gopalan’349 will inherently have, or alternatively would be reasonably expected to have the properties that are either the same as those as claimed in instant invention, or having values overlapping with those as claimed in instant invention as well, including being substantially free of silane cross-linking as formed, substantially free of water, having connected network of closed cells, at least partial having cross-linked C-C bonds between the polymers as well (as to instant claims 1, 3-6, 25, 27-28). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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.
9. Claims 1-6, 20-28 are rejected under 35 U.S.C. 103 as being unpatentable over Gopalan (US 2020/0199349, Gopalan’349) in view of Bambara et al (US 5,883,144).
10. The discussion with respect to Gopalan (US 2020/0199349, Gopalan’349), set forth in paragraphs 3-8 above, is incorporated here by reference.
11. Though Gopalan’349 does not explicitly recite cross-linking of the silane-grafted polyolefin-based composition taking place by peroxide only, in the absence of condensation catalyst and in the absence of moisture,
Bambara et al discloses cross-linked polymeric closed cell foam compositions based on silane-grafted polyolefins, blended with ethylene-vinyl acetate copolymers and ethylene-propylene -diene terpolymers (Abstract, col. 3, lines 4-30; col. 10, lines 1-35, 55-56), wherein Bambara et al explicitly teaches that such compositions can be crosslinked by:
i) exposing such mixture to moisture, preferably in the presence of condensation catalyst;
ii) reacting the blend with a peroxide or
iii) both i) and ii) (col. 3, lines 55-57; col. 4, lines 4-15, 41-50; col. 5, lines 26-34; col. 13, lines 12-25).
12. Thus, Bambara et al explicitly teaches that cross-linking of polyolefins with silane-grafted polyolefins can alternatively be by peroxide, or by condensation in the presence of moisture, or both.
13. Since Bambara et al teaches that cross-linking of polyolefins with silane-grafted polyolefins in foams can be conducted by peroxide only (and not only by combination of peroxide-crosslinking and by condensation in the presence of moisture as taught by Gopalan’349), therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Gopalan’349 and Bambara et al, and to modify, or obvious to try to modify the teachings of Gopalan’349 by conducting the crosslinking of the composition Gopalan’349 in the presence of peroxide only, as taught by Bambara et al, without presence of a condensation catalyst and in the absence of moisture, since such method of crosslinking of silane-grafted polyolefin foams in the presence of peroxide only is taught in the art, and it would have been obvious to choose and use such method for crosslinking the silane-grafted polyolefin-based compositions, thereby arriving at the present invention. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141.
14. Since the midsole of Gopalan’349 in view of Bambara et al is produced from substantially the same composition as claimed and disclosed in instant invention, including using two silane-grafted polyolefins, in the presence of peroxide only as the crosslinking agent, in substantial absence of water/moisture and in substantial absence of the condensation catalyst, therefore, the midsole of Gopalan’349 in view of Bambara et al will intrinsically and necessarily have, or would be reasonably expected to have the properties that are either the same as those as claimed in instant invention, or having values overlapping with those as claimed in instant invention as well, including being substantially free of silane cross-linking as formed, substantially free of water, having connected network of closed cells, at least partial having cross-linked C-C bonds between the polymers as well; rebound resilience; melting temperature as claimed in instant invention (as to instant claims 1, 3-6, 25, 27-28). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
15. Claims 1-28 are rejected under 35 U.S.C. 103 as being unpatentable over Gopalan et al (US 2019/0029361, Gopalan’361) in view of Bambara et al (US 5,883,144).
16. Gopalan’361 discloses a shoe sole, such as midsole ([0002]), made from a foamed closed cell cross-linked polyolefin elastomer comprising a blend of:
A’) 50-80%wt ([0042], as to instant claim 17) of a first polyolefin, such as an olefin block copolymer, an ethylene/alpha-olefin copolymer, a propylene/alpha-olefin copolymer, EPDM, or an olefin homopolymer, density of less than 0.85 g/cc and a melt index of as low as 0.5 g/10 min ([0036], [0044], [0045], Abstract.as to instant claims 5, 7, 10, 11, 12, 15, 16);
A”) 20-50%wt ([0052], as to instant claim 18) of a second polyolefin, such as an olefin block copolymer, an ethylene/alpha-olefin copolymer, a propylene/alpha-olefin copolymer, EPDM, or an olefin homopolymer, having crystallinity of less than 40%, a melt index of as high as 3,500g/10 min ([0048]-[0050], [0056], [0054], Abstract, as to instant claims 5, 7, 12-14, 16);
B) a silane cross-linker used for grafting the polyolefins A’) and A”);
C) a grafting initiator;
D) about 0.01%wt ([0072]) of a condensation catalyst and
E) a foaming agent (Abstract,
Wherein by using the grafting initiator C), the silane-crosslinker B), and a peroxide, the first polyolefin and the second polyolefin are covalently grafted with silane moieties ([0062]), such as trimethoxysilane ([0064]), thus forming the silane-grafted first and the second polyolefins ([0089]) according to the scheme below:
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and thus forming the silane functional groups grafted on the polyolefin chain having the formula 1 as shown below (Fig. 3, as to instant claims 8-9):
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Formula 1,
Wherein by using trimethoxysilane as the grafting silane, R1, R2 and R3 will be methyl (as to instant claim 9).
17. Based on the teachings of Gopalan’361, it would have been obvious to a one of ordinary skill in the art to choose and use: A’) an olefin block copolymer, an ethylene/alpha-olefin copolymer, a propylene/alpha-olefin copolymer, EPDM, or an olefin homopolymer, having density of less than 0.85 g/cc and a melt index of as low as 0.5 g/10 min, in amount of 50-80%wt as the first polyolefin subjected to grafting with silane moieties; A”) an olefin block copolymer, an ethylene/alpha-olefin copolymer, a propylene/alpha-olefin copolymer, EPDM, or an olefin homopolymer, having crystallinity of less than 40%, and a melt index of as high as 3,500g/10 min in amount of 20-50%wt as the second polyolefin, both A’) and A”) subjected to grafting with silane moieties, and a condensation catalyst in amount of as low as about 0.01%wt, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Further, since the first polyolefin is having melt index lower than the melt index of the second polyolefin, and the melt index is inversely related to molecular weight, therefore, the first polyolefin will intrinsically and necessarily have a higher weight average molecular weight than the second polyolefin (as to instant claim 19). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
18. Though Gopalan’361 recites the presence of the condensation catalyst (Abstract), said condensation catalyst is present in amount of as low as about 0.01%wt ([0072]), i.e. in amounts even lower than 0.01%wt, and thereby the composition for making the foamed cross-linked midsole will be substantially free from the condensation catalyst as well (as to instant claim 24).
19. The foam is a closed cell foam, having compression set 5-30% ([0120], [0118], as to instant claims 3-4) and crystallinity of about 40% ([0122]); and exemplified rebound of 63.4% (Table 6, as to instant claim 27).
20. As to instant claims 25-26, the foamed midsole further comprises silicas, metal oxide and foaming agents ([0074]-[0082]).
As to instant claim 2, the composition is injected into a shoe sole mold to form a shoe sole element ([0109]-[0112]).
21. Though Gopalan’361 recites the composition being cross-linked in the presence of the condensation catalyst when exposed to humidity ([0093]), but does not recite cross-linking of the silane-grafted polyolefin-based composition taking place by peroxide only, in the absence of condensation catalyst and in the absence of moisture, and does not explicitly teach said silane-grafted polyolefins being used in combination with ethylene-vinyl acetate copolymer and/or polyolefin elastomers,
Bambara et al discloses cross-linked polymeric closed cell foam compositions based on silane-grafted polyolefins, blended with ungrafted polymers, such as ethylene-vinyl acetate copolymers and ethylene-propylene -diene terpolymers (Abstract, col. 3, lines 4-30; col. 9, line 65-col. 10, line 35; col. 10, lines 55-56; col. 16, lines 16-20; col. 15, lines 25-27, as to instant claims 20-23),
wherein Bambara et al explicitly teaches that such compositions can be crosslinked by i) exposing such mixture to moisture, preferably in the presence of condensation catalyst;
ii) reacting the blend with a peroxide or
iii) both i) and ii) (col. 3, lines 55-57; col. 4, lines 4-15, 41-50; col. 5, lines 26-34; col. 13, lines 12-25).
Bambara et al specifically teaches combining polyolefinic materials with silane-grafted materials and a peroxide for cross-linking (col. 16, lines 16-23).
The specifically exemplified ethylene-vinyl acetate copolymer is having 9%, 17% or 23% of vinyl acetate units (Examples 11 and 12, as to instant claim 21).
22. Thus, Bambara et al explicitly teaches that cross-linking of polyolefins with silane-grafted polyolefins can alternatively be conducted by peroxide, or by condensation in the presence of moisture, or both.
23. Since Bambara et al teaches that cross-linking of polyolefins with silane-grafted polyolefins in foams can be conducted by peroxide only (and not only by condensation in the presence of moisture as taught by Gopalan’361), therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Gopalan’361 and Bambara et al, and to modify, or obvious to try to modify the cross-linking step to form the cross-linked foam of Gopalan’361 by crosslinking in the presence of peroxide only, as taught by Bambara et al, without presence of a condensation catalyst and in the absence of moisture, since such method of crosslinking of silane-grafted polyolefin foams in the presence of peroxide is taught in the art, and it would have been obvious to choose and use such method for crosslinking the silane-grafted polyolefin-based compositions, thereby arriving at the present invention. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
24. Since the midsole of Gopalan’361 in view of Bambara et al is produced from substantially the same composition as claimed and disclosed in instant invention, including using two silane-grafted polyolefins combined with ethylene-vinyl acetate copolymer and/or EPDM, in the presence of peroxide only as the crosslinking agent, in substantial absence of water/moisture and in substantial absence of the condensation catalyst, therefore, the midsole of Gopalan’361 in view of Bambara et al will intrinsically and necessarily have, or would be reasonably expected to have the properties that are either the same as those as claimed in instant invention, or having values overlapping with those as claimed in instant invention as well, including being substantially free of silane cross-linking as formed, substantially free of water, having, at least partially connected network of closed cells, having at least partially cross-linked C-C bonds between the polymers, and having rebound resilience and melting temperature as claimed in instant invention as well (as to instant claims 1, 3-6, 25, 27-28). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
25. Claims 1-28 are rejected under 35 U.S.C. 103 as being unpatentable over Gopalan (US 2020/0199349, Gopalan’349) in view of Bambara et al (US 5,883,144), in further view of Gopalan et al (US 2019/0029361, Gopalan’361).
26. The discussion with respect to Gopalan (US 2020/0199349, Gopalan’349) in view of Bambara et al (US 5,883,144), set forth in paragraphs 9-14 above, is incorporated here by reference.
27. Though Gopalan’349 does not explicitly recite the properties of the silane-grafted polyolefins, and the structure of the silane functional groups grafted on the polyolefins,
Gopalan’361 discloses a shoe sole, such as midsole ([0002]), made from a foamed closed cell cross-linked polyolefin elastomer comprising a blend of:
A’) 50-80%wt ([0042], as to instant claim 17) of a first polyolefin, such as an olefin block copolymer, an ethylene/alpha-olefin copolymer, a propylene/alpha-olefin copolymer, EPDM, or an olefin homopolymer, density of less than 0.85 g/cc and a melt index of as low as 0.5 g/10 min ([0036], [0044], [0045], Abstract.as to instant claims 5, 7, 10, 11, 12, 15, 16);
A”) 20-50%wt ([0052], as to instant claim 18) of a second polyolefin, such as an olefin block copolymer, an ethylene/alpha-olefin copolymer, a propylene/alpha-olefin copolymer, EPDM, or an olefin homopolymer, having crystallinity of less than 40%, a melt index of as high as 3,500g/10 min ([0048]-[0050], [0056], [0054], Abstract, as to instant claims 5, 7, 12-14, 16);
B) a silane cross-linker used for grafting the polyolefins A’) and A”);
C) a grafting initiator;
D) about 0.01%wt ([0072]) of a condensation catalyst and
E) a foaming agent (Abstract,
Wherein by using the grafting initiator C), the silane-crosslinker B), and a peroxide, the first polyolefin and the second polyolefin are covalently grafted with silane moieties ([0062]), such as trimethoxysilane ([0064]), thus forming the silane-grafted first and the second polyolefins ([0089]) according to the scheme below:
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and thus forming the silane functional groups grafted on the polyolefin chain having the formula 1 as shown below (Fig. 3, as to instant claims 8-9):
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Formula 1,
Wherein by using trimethoxysilane as the grafting silane, R1, R2 and R3 will be methyl (as to instant claim 9).
Based on the teachings of Gopalan’361, it would have been obvious to a one of ordinary skill in the art to choose and use: A’) an olefin block copolymer, an ethylene/alpha-olefin copolymer, a propylene/alpha-olefin copolymer, EPDM, or an olefin homopolymer, having density of less than 0.85 g/cc and a melt index of as low as 0.5 g/10 min, in amount of 50-80%wt as the first polyolefin subjected to grafting with silane moieties; A”) an olefin block copolymer, an ethylene/alpha-olefin copolymer, a propylene/alpha-olefin copolymer, EPDM, or an olefin homopolymer, having crystallinity of less than 40%, and a melt index of as high as 3,500g/10 min in amount of 20-50%wt as the second polyolefin, both A’) and A”) subjected to grafting with silane moieties, and a condensation catalyst in amount of as low as about 0.01%wt, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Further, since the first polyolefin is having melt index lower than the melt index of the second polyolefin, and the melt index is inversely related to molecular weight, therefore, the first polyolefin will intrinsically and necessarily have a higher weight average molecular weight than the second polyolefin (as to instant claim 19). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
28. Since both Gopalan’349 and Gopalan’361 are related to shoe midsoles produced from a cross-linked foamed silane-grafted polyolefin-based compositions, and thereby belong to the same field of endeavor, wherein Gopalan’361 teaches the properties of both silane-grafted polyolefins, and the structure of the silane functional groups grafted on the polyolefins, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Gopalan’349 in view of Bambara et al and Gopalan’361, and to use, or obvious to try to use, at least partially, the first silane-grafted polyolefin and the second silane-grafted polyolefins having the structures and properties as taught by Gopalan’361 to form the cross-linked foamed composition for shoe midsole of Gopalan’349 in view of Bambara et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
29. Since the midsole of Gopalan’349 in view of Bambara et al and Gopalan’361 is produced from substantially the same composition as claimed and disclosed in instant invention, including using two silane-grafted polyolefins, in the presence of peroxide only as the crosslinking agent, in substantial absence of water/moisture and in substantial absence of the condensation catalyst, therefore, the midsole of Gopalan’349 in view of Bambara et al and Gopalan’361 will intrinsically and necessarily have, or would be reasonably expected to have the properties that are either the same as those as claimed in instant invention, or having values overlapping with those as claimed in instant invention as well, including being substantially free of silane cross-linking as formed, substantially free of water, having connected network of closed cells, at least partial having cross-linked C-C bonds between the polymers as well; rebound resilience; melting temperature as claimed in instant invention (as to instant claims 1, 3-6, 25, 27-28). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
30. Claims 1-28 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-33 of a copending application 18/028,918 (published US 2023/0363490). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
31. The copending application 18/028,918 claims:
a shoe midsole composed of a foamed peroxide-crosslinked polyolefin elastomer comprising:
-a silane-grafted polyolefin component;
- an elastomer component including one or more elastomeric polymers selected from the group consisting of ethylene vinyl acetate copolymer, polyolefin elastomers, olefin block copolymer, polyoctenamer, anhydride modified ethylene copolymers, ethylene propylene diene terpolymer, and combinations thereof,
the silane-grafted polyolefin component and elastomer component being crosslinked with C-C bonds; and additives dispersed in the foamed peroxide-crosslinked polyolefin elastomer, wherein the foamed peroxide-crosslinked polyolefin elastomer includes a plurality of closed cells, the foamed peroxide-crosslinked polyolefin elastomer being substantially free of silane crosslinking as formed and substantially free of water wherein the additives and elastomer polymers are in sufficient amount that a melting temperature of crystalline regions in the foamed peroxide-crosslinked polyolefin elastomer is greater than 100 0C as measured by differential scanning calorimeter thermographs.
The elastomer component includes an ethylene propylene diene terpolymer and/or ethylene vinyl acetate copolymer, or an olefin block copolymer.
The shoe midsole includes additives selected from the group consisting of silicon rubber, zinc oxide, stearic acid, silane-modified amorphous poly-alpha- olefins, trans-Polyoctenamer-Rubber (TOR), silica/ silicon oxide, titanium oxide, organic pigments, triallyl cyanurate, and combinations thereof.
The shoe midsole comprises the foamed peroxide-crosslinked polyolefin elastomer shaped/configured to be place in a shoe above an outsole.
The shoe midsole exhibits a compression set of from about 1.0% to about 67.0%, as measured after 6 hours being tested at 50 C.
The shoe midsole comprises the plurality of closed cells including a connected network of closed cells.
The silane-grafted polyolefin component includes a first silane-grafted polyolefin and a second silane-grafted polyolefin, wherein the first silane-grafted polyolefin and the second silane-grafted polyolefin each independent includes internal C-C crosslinking.
The first silane-grafted polyolefin and the second silane-grafted polyolefin are each independently selected from the group consisting of silane-grafted ethylene a-olefin copolymers, silane-grafted olefin block copolymers, and combinations thereof.
The first silane-grafted polyolefin and the second silane-grafted polyolefin each independently include silane functional groups grafted thereon having formula I:
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126
123
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Greyscale
Formula I
R1, R2, and R3 are each independently H or C1-8 alkyl.
and wherein R1, R2, and R3 are specifically each methyl, ethyl, propyl, or butyl.
The first silane-grafted polyolefin has a first melt index less than about 5 and the second silane-grafted polyolefin has a second melt index greater than about 20.
The first silane-grafted polyolefin is selected from the group consisting of silane-grafted olefin homopolymers, blends of silane-grafted homopolymers, silane-grafted copolymers of two or more olefins, blends of silane-grafted copolymers of two or more olefins, and a combination of silane-grafted olefin homopolymers blended with silane- grafted copolymers of two or more olefins.
The first silane-grafted polyolefin and the second silane-grafted polyolefin are each independently a silane-grafted copolymer of an olefin selected from the group consisting of ethylene, propylene, 1-butene, 1-propene, 1-hexene, 1-octene, C9-16 olefins, and combinations thereof.
The second silane-grafted polyolefin is selected from the group consisting of silane-grafted olefin homopolymers, blends of silane-grafted homopolymers, silane-grafted copolymer of two or more olefins, blends of silane-grafted copolymers of two or more olefins, and blends of silane-grafted olefin homopolymers with silane-grafted copolymers of two or more olefins.
The second silane-grafted polyolefin is a silane grafted homopolymer or copolymer of an olefin is selected from the group consisting of ethylene, propylene, 1-butene, 1-propene, 1-hexene, 1-octene, and C9-16 olefins.
The first silane-grafted polyolefin and the second silane-grafted polyolefin independently include a polymer selected from the group consisting of silane-grafted block copolymers, silane-grafted ethylene propylene diene monomer polymers, silane- grafted ethylene octene copolymers, silane-grafted ethylene butene copolymers, silane-grafted ethylene a-olefin copolymers, silane-grafted 1-butene polymer with ethene, silane-grafted polypropylene homopolymers, silane-grafted methacrylate-butadiene-styrene polymers, silane- grafted polymers with isotactic propylene units with random ethylene distribution, silane-grafted styrenic block copolymers, silane-grafted styrene ethylene butylene styrene copolymer, and combinations thereof.
The first silane-grafted polyolefin has a density less than 0.86 g/cm3 and the second silane-grafted polyolefin has a crystallinity less than 40%.
The first silane-grafted polyolefin is present in an amount from about 60 to 80 weight percent of the total weight of the shoe midsole.
The second silane-grafted polyolefin is present in an amount from about 20 to 40 weight percent of the total weight of the shoe midsole.
The first silane-grafted polyolefin has a higher weight average molecular weight that the second silane-grafted polyolefin.
The elastomer component includes ethylene vinyl acetate copolymer with vinyl acetate content from about 10 to 50 mole percent.
The elastomer component includes a copolymer of an olefin selected from the group consisting of ethylene, propylene, 1-butene, 1-propene, 1-hexene, 1-octene, C9-16 olefins, and combinations thereof.
The elastomer component includes a polymer selected from the group consisting of block copolymers, ethylene propylene diene monomer polymers, ethylene octene copolymers, ethylene butene copolymers, ethylene a-olefin copolymers, 1- butene polymer with ethene, polypropylene homopolymers, methacrylate-butadiene-styrene polymers, polymers with isotactic propylene units with random ethylene distribution, styrenic block copolymers, styrene ethylene butylene styrene copolymer, and combinations thereof.
The shoe midsole is substantially free of a condensation catalyst or a residue thereof. The shoe midsole includes an additive selected from the group consisting of stearic acid, zinc oxide, titanium oxide, silicon oxide, and combinations thereof and one or more residues of a blowing agent, cross linkers, and addition promotors.
The shoe midsole is having a rebound resilience of at least 60%.
32. Thus, the limitations claimed in the present applications are the same as the limitations claimed in the copending application 18/028,918.
Conclusion
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764