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 .
Claim Rejections - 35 USC § 103
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 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, 4 – 12, and 14 – 19 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2013/191222 to Wakayama et al. (hereinafter Wakayama). For the purposes of examination, citations for Wakayama are taken from a machine translation of the document obtained from the European Patent Office website in September 2025.
Regarding Claims 1, 4, and 15. Wakayama teaches an impact absorbing material which is a foam [0011] and which is preferably formed into a sheet [0066], i.e. a foam sheet.
The foam sheet of Wakayama is comprised of resins (A) and (B) [0011]. Resin (A) has a maximum peak of the tangent loss (tan δ), i.e. a glass transition temperature, of 0 to 40°C [0010]. At this temperature, the maximum/peak value of tan δ is 1.0 to 2.5 [0010].
The foam sheet additionally has a 25% compressive strength of 20 to 200 kPa [0062].
Wakayama’s resin (B) has a glass transition temperature of preferably -14°C or lower [0041]. While this range is not identical to the range for glass transition temperature (Tg2) of -150 to -60°C set forth, it does overlap. It has been held that 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 USPG 90 (CCPA 1976) (MPEP 2144.05) Moreover, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants' claims patentable in the absence of unexpected results. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to optimize the glass transition temperature (Tg2) of resin (B) in the foam sheet of Wakayama. The motivation would have been that Wakayama teaches lower glass transition temperature values are correlated with improved bending strength and impact absorption performance in low temperature environments [0041].
Regarding Claim 5. Wakayama teaches the foam sheet of Claim 1 having a thickness of preferably 0.05 to 2 mm [0060].
Regarding Claims 6 – 8, 10 – 12, and 14. Wakayama teaches the foam sheet of Claim 1 but is silent regarding the claimed properties. However, the obtained foam sheet, when modified in the proposed in the rejection of Claim 1, is prepared from all of ingredients and amounts set forth in the instant specification as preferred, as well as by a substantially similar process. Also, per above, Wakayama’s foam sheet has all of the other instantly claimed properties. For these reasons, it is the Office’s position that the foam sheet of Wakayama, when modified in the manner proposed, corresponds to the same or substantially the same product as that disclosed in the instant specification and therefore would also be reasonably expected to have a WVTR in the instantly claimed range.
Regarding Claim 9. Wakayama teaches the foam sheet of Claim 1 having a gel fraction of preferably 20 to 78% [0069].
Regarding Claim 16. Wakayama teaches the foam sheet of Claim 15 wherein resin (A) may be an elastomer [0013] – [0014].
Regarding Claim 17. Wakayama teaches the foam sheet of Claim 15 wherein the ratio of [elastomer] resin (B) to [polyolefin] resin (A) may be 10 to 70 mass percent [0042].
Regarding Claim 18. Wakayama teaches a sealing material comprising the foam sheet of Claim 1 and a pressure sensitive adhesive layer provided on at least one surface thereof [0008], corresponding to a pressure-sensitive adhesive tape.
Regarding Claim 19. Wakayama teaches a sealing material comprising the foam sheet of Claim 1 and a pressure sensitive adhesive layer provided on at least one surface thereof [0008], corresponding to a pressure-sensitive adhesive tape. A person of ordinary skill in the art would readily envision a roll comprising this material based on this disclosure, as such tapes are commonly wound on rolls such that they are easily dispensed.
Claims 2 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2013/191222 to Wakayama et al. (hereinafter Wakayama). For the purposes of examination, citations for Wakayama are taken from a machine translation of the document obtained from the European Patent Office website in September 2025.
Regarding Claims 2 and 13. Wakayama teaches an impact absorbing material which is a foam [0011] and which is preferably formed into a sheet [0066], i.e. a foam sheet.
The foam sheet of Wakayama is comprised of resins (A) and (B) [0011]. Resin (A) has a maximum peak of the tangent loss (tan δ), i.e. a glass transition temperature, of 0 to 40°C [0010]. At this temperature, the maximum/peak value of tan δ is 1.0 to 2.5 [0010]. The foam sheet additionally has a 25% compressive strength of 20 to 200 kPa [0062].
Wakayama’s resin (B) has a glass transition temperature of preferably -14°C or lower [0041]. While this range is not identical to the ranges for glass transition temperature (Tg2) of -150 to -60°C and -150 to -80°C set forth, it does overlap. It has been held that 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 USPG 90 (CCPA 1976) (MPEP 2144.05) Moreover, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants' claims patentable in the absence of unexpected results. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to optimize the glass transition temperature (Tg2) of resin (B) in the foam sheet of Wakayama. The motivation would have been that Wakayama teaches lower glass transition temperature values are correlated with improved bending strength and impact absorption performance in low temperature environments [0041]. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05)
Though Wakayama is silent with respect to the water vapor transmission rate (WVTR) of the foam sheet, the obtained foam sheet would thus be prepared from all of ingredients and amounts set forth in the instant specification as preferred, as well as by a substantially similar process. It is further noted that WVTR is indicated to be lowered when a polyethylene resin is used as resin (B) (see [0144] of the PG-PUB of the instant application) and Wakayama uses such a resin, as detailed in preceding paragraph. Also, per above, Wakayama’s foam sheet has all of the other instantly claimed properties. For these reasons, it is the Office’s position that the foam sheet of Wakayama, when modified in the manner proposed, corresponds to the same or substantially the same product as that disclosed in the instant specification and therefore would also be reasonably expected to have a WVTR in the instantly claimed range.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2013/191222 to Wakayama et al. (hereinafter Wakayama). For the purposes of examination, citations for Wakayama are taken from a machine translation of the document obtained from the European Patent Office website in September 2025.
Regarding Claim 3. Wakayama teaches an impact absorbing material which is a foam [0011] and which is preferably formed into a sheet [0066], i.e. a foam sheet.
The foam sheet of Wakayama is comprised of resins (A) and (B) [0011]. Resin (A) has a maximum peak of the tangent loss (tan δ), i.e. a glass transition temperature, of 0 to 40°C [0010]. At this temperature, the maximum/peak value of tan δ is 1.0 to 2.5 [0010].
The foam sheet additionally has a 25% compressive strength of 20 to 200 kPa [0062].
Resins (A) and (B) are the only required resins in the foam sheet [0053] and thus may total 100 mass% of a total resin amount of the foam sheet. Resin (B) may correspond to an elastomer [0042]. Resin (A) may correspond to a 4-methyl-1-pentene/α-olefin polymer resin and preferably accounts for 50 to 90 mass% of the total resin amount of the foam sheet. [0013]
Wakayama is silent with respect to the relative dielectric constant of the foam sheet. However, Wakayama’s resin (B) may be a thermoplastic resin, such as an ethylene-α-olefin copolymer, and has a glass transition temperature of preferably -10 to -50°C [0041]. While this range is not identical to the range of glass transition temperature (Tg2) of -40°C or less indicated as preferred in the instant specification, it does overlap. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to select a Resin (B) with a glass transition temperature at the lower end of the range disclosed by Wakayama, i.e. -40 to -50°C, which is the part of the range which overlaps with the preferred range set forth in the instant application. The motivation would have been that Wakayama teaches lower glass transition temperature values are correlated with improved bending strength and impact absorption performance in low temperature environments [0041].
The obtained foam sheet would thus be prepared from all of ingredients and amounts set forth in the instant specification as preferred, as well as by a substantially similar process. Also, per above, Wakayama’s foam sheet has all of the other instantly claimed properties. For these reasons, it is the Office’s position that the foam sheet of Wakayama, when modified in the manner proposed, corresponds to the same or substantially the same product as that claimed and therefore would also be reasonably expected to have a relative dielectric constant in the instantly claimed range.
Response to Arguments
Applicant's arguments filed December 10, 2025 have been fully considered but they are not persuasive because:
A) Applicant argues that Wakayama is silent regarding a glass transition temperature (Tg2) of -150 to -60°C. However, Wakayama’s resin (B) has a glass transition temperature of preferably -14°C or lower [0041]. While this range is not identical to the claimed ranges, it does overlap. It has been held that 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
Moreover, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants' claims patentable in the absence of unexpected results. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to optimize the glass transition temperature (Tg2) of resin (B) in the foam sheet of Wakayama. The motivation would have been that Wakayama teaches lower glass transition temperature values are correlated with improved bending strength and impact absorption performance in low temperature environments [0041]. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05)
B) Applicant argues that Wakayama discloses examples in which a resin (C) is provided in an amount not permitted by instant Claim 3. However, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123)
Wakayama sets forth Resin (C) as optional in the general disclosure [0053]. Thus, Resins (A) and (B) are the only required resins in the foam sheet and, when Resin (C) is absent, will total 100 mass% of a total resin amount of the foam sheet. Resin (B) may correspond to an elastomer [0042]. Resin (A) may correspond to a 4-methyl-1-pentene/α-olefin polymer resin and preferably accounts for 50 to 90 mass% of the total resin amount of the foam sheet [0013]. The new limitations in amended Claim 3 are thus met by the general disclosure of Wakayama.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764