CTFR 18/030,080 CTFR 69256 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 07-06 AIA 15-10-15 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. 07-20-fti The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made. 07-21-fti Claim s 31-42 are is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Al-Farhood et al.(2020/0172661) in view of Singh et al.(2009/0305876) . Al-Farhood et al. discloses thermoplastic foams that include poly(ethylene furanoate) copolymer in their composition and comprising blowing agents that cause an expansion thus forming a gaseous cell in the thermoplastic copolymer, wherein the foam has a cell structure which is expressed in terms of the quantity of open cells and closed cells, and has an open cell fraction of <20.0% (>80.0% closed) which corresponds with a closed cell content of at least about 50% as claimed (see paragraphs [0042]-[0046] and [0059]). Regarding claims 32, 36 and 37, Al-Farhood et al. discloses densities that correspond with those of the claims {para [0046]). Regarding claims 33-35, compressive and tensile strength characteristics are not particularly expressed by Al-Farhood et al. However, owing to the closeness of compositional make-ups and the fact that good, flexible thermoplastic products are disclosed, it is held that such characteristics would necessarily follow on formation of the products of Al-Farhood et al. Regarding claims 38-40, Al-Farhood et al. provisions for contents and make-ups of polyethylene furanoate as claimed {paras [0050]-[0059] and the Examples}, and given that the copolymer constitutes the polymeric structure, it would necessarily follow this material would constitute the cell wall structures to the degrees claimed. Al-Farhood et al. differs from applicants’ claims in that it does not require the HFO-1234ze(E) inclusion as claimed. However, Singh et al. discloses inclusion HFO-1234ze(E) in thermoplastic foam formation for the purpose of imparting its foam forming effect to be known {paras [0294]-[0296]}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the HFO-1234ze(E) of Singh et al. in the preparations of Al-Farhood et al. for the purpose of imparting its foam expansion effects in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results . 07-21-fti Claim s 43-50 are is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Al-Farhood et al.(2020/0172661) in view of Singh et al.(2009/0305876) and EP-3450500 . Al-Farhood et al. discloses thermoplastic foams that include poly(ethylene furanoate) copolymer in their composition and comprising blowing agents that cause an expansion thus forming a gaseous cell in the thermoplastic copolymer, wherein the foam has a cell structure which is expressed in terms of the quantity of open cells and closed cells, and has an open cell fraction of <20.0% (>80.0% closed) which corresponds with a closed cell content of at least about 50% as claimed (see paragraphs [0042]-[0046] and [0059]). Al-Farhood et al. has no requirement for or recognition of the inclusion of tannin moieties. Accordingly, it is held that it would necessarily follow that it contains tannins in amounts of less than 20% as required by the claims. Regarding claim 46, given that foam boards are formed {see para [0088]} is sufficient at least to meet the vehicle wall component alternative of this claim. Regarding claim 49, Al-Farhood et al. has no requirement for 1336mzz blowing agent. Accordingly, it is held that it would necessarily follow that it meets the omission requirements of this claim. Regarding claims 45, 48 and 50, Al-Farhood et al. provisions for contents and make-ups of polyethylene furanoate as claimed {paras [0050]-[0059] and the Examples}, and given that the copolymer constitutes the polymeric structure, it would necessarily follow this material would constitute the cell wall structures to any degrees as claimed. Al-Farhood et al. differs from applicants’ claims in that it does not require the HFO’s and/or HCFO’s as claimed. However, Singh et al. discloses inclusion HFO-1234ze(E) in thermoplastic foam formation for the purpose of imparting its foam forming effect to be known {paras [0294]-[0296]}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the HFO-1234ze(E) of Singh et al. in the preparations of Al-Farhood et al. for the purpose of imparting its foam expansion effects in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Additionally, regarding claim 44 as amended, applicants’ claim has been considered regarding the language “consisting essentially”. However, for purposes of considering prior art, the instant employment of the terminology “consisting essentially” has been treated as “comprising”. Further, regarding the first use of “consisting essentially”, applicants have not provided any evidence supported by the instant disclosure which establishes additional materials or process steps which would materially affect the basic and novel characteristics of the claimed methods. {see MPEP 2111.03}. Al-Farhood et al. differs from applicants’ claims in that it does not require the crystallinities as claimed. However, EP-3450500 discloses variation in crystallinity in ranges in overlap with those of the claims in forming thermoplastic materials to be known for purposes of forming a diverse array of good and acceptable materials for damping applications {see Abstract and paras [0005], [0130]}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized any crystallinity provided for by EP-3450500 in forming the preparations of Al-Farhood et al. for the purpose of achieving acceptable polymer arrangement and accompanying strength, stiffness and damping effects in products formed in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results . Double Patenting 08-33 AIA 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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-35 Claim s 31-50 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of copending Application No. 18/113,605 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they differ in make-up and overlap of material effects, including blowing agent selection, closed cell make-up and crystallinity, in a manner which would have been obvious to one having ordinary skill in the art with the expectation of success in the absence of a showing of new or unexpected results . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 08-35 Claim s 31-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 11-30 of copending Application No. 18/199,885 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they differ in make-up and overlap of material effects, including blowing agent selection and closed cell make-up, in a manner which would have been obvious to one having ordinary skill in the art with the expectation of success in the absence of a showing of new or unexpected results . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Response to Arguments Applicants’ arguments have been considered. However, they are unpersuasive. Regarding the rejections under 35USC103, applicants’ arguments are unpersuasive. As to arguments directed towards the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller , 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Motivation to utilize the blowing agent of the claims is provided through teachings and fair suggestions of the cited Singh et al. reference in its combination with the Al-Farhood et al. teaching. Combination is proper, and positions laid out have not been refuted in fact. The polyethylene furanoate component is not a deficiency of Al-Farhood et al. that Singh et al. is looked to in order to resolve. Accordingly, it is not seen required that this element be provided for by Singh et al. Further, it is seen that Singh et al.’s disclosures regarding blowing agents in thermoplastic foams is at least reasonably pertinent to the particular problem with which inventor was involved in the instant case {see MPEP 2141.01(a)}. As to applicants’ arguments concerning results, it is held that unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977. Obviousness does not require absolute predictability. In re Miegel 159 USPQ 716. Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548. In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89; In re Beattie, 24 USPQ 2d 1040. Further, evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89; Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288. See also In re Kulling, 14 USPQ 2d 1056. Applicants’ have not persuasively demonstrated unexpected results for the combinations of their claims. Applicants have not demonstrated their results to be unexpected and more than mere optimizations of the knowledge in the art or more significant than being secondary in nature. Additionally, applicants’ have not demonstrated their showing to be commensurate in scope with the scope of combinations now claimed. Regarding arguments concerning the rejections under the heading “Double Patenting”, it is held in response to applicant’s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, that it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below: “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.” Rejection(s) under 35USC112 are withdrawn in light of applicants’ amendments on reply. 07-40 AIA 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. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOHN M COONEY/ Primary Examiner, Art Unit 1765 Application/Control Number: 18/030,080 Page 2 Art Unit: 1765 Application/Control Number: 18/030,080 Page 3 Art Unit: 1765 Application/Control Number: 18/030,080 Page 4 Art Unit: 1765 Application/Control Number: 18/030,080 Page 5 Art Unit: 1765 Application/Control Number: 18/030,080 Page 6 Art Unit: 1765 Application/Control Number: 18/030,080 Page 7 Art Unit: 1765 Application/Control Number: 18/030,080 Page 8 Art Unit: 1765 Application/Control Number: 18/030,080 Page 9 Art Unit: 1765
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