DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1 – 5, in the reply filed on January 8, 2026 is acknowledged.
Claims 6 – 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 8, 2026.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 5 are rejected under 35 U.S.C. 103 as being unpatentable over JPH02-240145 to Kobayashi et al. (hereinafter Kobayashi), as evidenced by JPH05-261857 to Kato et al. (hereinafter Kato) and US 6,699,923 to Tanigawa et al. (hereinafter Tanigawa). For the purposes of examination, citations for Kobayashi are taken from the translation of the document submitted by applicant on April 28, 2023. Citations for Kato are taken from a machine translation of the document obtained from the European Patent Office in March 2026.
Regarding Claims 1, 2, and 5. Kobayashi teaches a polyolefin resin foam (Page -454-, “Field of Industrial Applicability”).
In Example 1, the foam comprises a blend of 100 parts by weight linear low density polyethylene (LDPE) and 3 parts by weight of the commercially available polyorganosiloxane graft copolymer SP-300 (Page -459-, Table 1), corresponding to a polymer blend comprising roughly 97 weight percent LDPE and 3 weight percent of graft copolymer. Kato provides evidence that SP-300 comprises 40 weight percent polydimethylsiloxane [0023]. Tanigawa provides evidence that the polymer in SP-300 onto with the polydimethylsiloxane is grafted is LDPE (Column 5, Lines 52 – 56). Thus, the SP-300 used in Kobayashi is reasonably considered a polydimethylsiloxane grafted LDPE (PDMS-g-LDPE).
The Office recognizes that the amounts of LDPE (97 weight percent) and PDMS-g-LDPE (3 weight percent) in Example 1 of Kobayashi are slightly outside the claimed ranges for LDPE (70 to 95 weight percent) and PDMS-g-LDPE (5 to 30 weight percent). The Office notes that, in Example 1, a silicone content relative to the overall resin used is 1.17 parts by weight (Page -459-, Table 1). However, in the general disclosure, Kobayashi teaches the silicone content relative to the overall resin may be as high as 5 parts by weight (Page -459-, 5th Paragraph). It is consequently the Office’s position that, 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 raise the silicone content relative to the overall resin in Example 1 of Kobayashi to be as high as 5 parts by weight. The LDPE would then correspond to roughly 88.9 weight percent of the polymer blend, while the PDMS-g-LDPE would correspond to 11.1 weight percent of the polymer blend. The motivation would have been that increasing the amount of silicone would be expected to enhance the beneficial effects associated with the presence of the polyorganosiloxane-grafted polyolefin copolymers, including increases in finer cells, flexibility, and surface smoothness in the final foam product (Page -459-, 5th- and 6th Paragraphs).
Kobayashi does not expressly characterize the foam as a microcellular foam, nor teach its cell size is less than 60 microns. However, Kobayashi, when modified in the manner proposed, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a microcellular foam having a cell size of less than 60 microns, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regrading Claim 3. Kobayashi teaches the microcellular foam of Claim 1 wherein the LDPE has a density of 0.921 g/cm3 and a melt index of 0.3 (Page -457-, 1st Paragraph of “Example 1”).
Regrading Claim 4. Kobayashi teaches the microcellular foam of Claim 1 but is silent with respect to the density and melt index of the PDMS-g-LDPE. However, Kobayashi does teach the LDPE has a density of 0.921 g/cm3 and a melt index of 0.3 (Page -457-, 1st Paragraph of “Example 1”). It is consequently the Office’s position that, 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 provide the PDMS-g-LDPE in Example 1 of Kobayashi with a melt index and density which are the same or substantially similar to the LDPE used in this example. The motivation would have been that providing a PDMS-g-LDPE with a melt index and density which are the same or substantially similar to the LDPE would ensure the polymers have similar flow properties, enhancing their miscibility and also homogeneity in a blend thereof.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2021/0389537 discloses the use of AGILITY® 1021 in a foam layer, which is the same LDPE used in the inventive examples of the instant specification.
US 2018/0346676 pertains to microcellular foams based upon polyethylene.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571)270-7026. 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.
/MELISSA A RIOJA/ Primary Examiner, Art Unit 1764