DETAILED ACTION
This Office Action is responsive to the amendment filed on 11/20/2025.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Information Disclosure Statement
The information disclosure statement filed 11/10/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Applicant provided machine translations of JP2003313375 and JP2002317078, but did not provide copies of the original documents as required. A copy of the cited Japanese office action (NPL 1) also was not provided. It has been placed in the application file, but the information referred to therein has not been considered with respect to these references.
Claim Rejections - 35 USC § 103
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sakai et al, WO2021/085225 (of record), in view of Watanabe et al, US4214054.
Sakai et al, US2022/0372260, has been used as an equivalent English translation of WO2021/085225 for the preparation of this Action.
Example 1 of Sakai (¶0260; Table 1) discloses a composition comprising a blend of an ethylene/1-butene copolymer; an ethylene/vinyl acetate copolymer (EVA); dicumyl peroxide, corresponding to the claimed crosslinking agent (for claim 1); azodicarbonamide, corresponding to the claimed foaming agent (for claim 1); stearic acid, corresponding to the claimed fatty acid (for claims 1, 5); and the commercially available rubber Mitsui EPT 3092PM. The prior art composition is crosslinked (for claim 6) and is characterized by a specific gravity of 0.22 (for claim 7). Sakai teaches that the prior art composition is used for soles of shoes (for claim 8) (abstract).
Regarding the claimed thermoplastic resin: As noted above, the prior art composition comprises ethylene/1-butene copolymer, corresponding to the claimed α-olefin copolymers (for claim 3), and an EVA (for claim 3). The combination of ethylene/1-butene copolymer and EVA in the composition of Sakai’ Example 1 therefore corresponds to the claimed thermoplastic resin (for claims 1, 3).
Regarding the claimed ethylene/propylene/diene monomer rubber (EPDM): As noted above, the prior art composition comprises Mitsui EPT 3092PM. As noted in the previous Action, incorporated herein by reference, this polymer is an EPDM having an ethylene content of 65 wt%. EPT 3092PM therefore corresponds to the claimed EPDM (for claim 1).
Regarding the amount of EPDM: The prior art composition comprises 5 parts ethylene/1-butene copolymer, 75 parts EVA, and 20 parts EPT 3092PM). The prior art composition therefore comprises 20 wt% EPDM relative to the sum of the amounts of thermoplastic resin and EPDM (for claims 1, 4).
Regarding the claimed hardness (for claim 2): Sakai is silent regarding the hardness of the base resin consisting of the thermoplastic resin(s) and the EPDM; however, it is reasonably expected that this property is met by the prior art.
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims; see In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As discussed above, the composition of Sakai’s Example 1 comprises the same polymers as disclosed by applicant as being suitable for use as the thermoplastic resin (i.e., an α-olefin copolymer and an EVA) and an EPDM having an ethylene content in the required range. Furthermore, the amount of EPDM in the prior art composition is the same as the amount of EPDM in the claimed composition. As the prior art composition appears to be the same as the claimed invention, it is reasonably expected that its properties would necessarily be the same as claimed and inherently be not different from those of the claimed composition. The burden is therefore shifted to the applicant to provide evidence that the properties used to the claimed composition would not be met by the composition of Sakai.
Regarding the amount of fatty acid: The composition of Sakai’s Example 1 comprises 0.7 parts stearic acid and 80 parts of the combination of EVA and an ethylene/butene copolymer (¶0260). This corresponds to about 0.875 parts stearic acid per 100 parts thermoplastic resin (i.e., about 0.875 wt%) (for claim 5).
Sakai is silent regarding the addition of a fatty acid ester which is a full ester of a fatty acid.
Watanabe discloses the production of an expanded thermoplastic resin (i.e., a foam) comprising a resin such as an EVA (abstract; Column 2, lines 7-16; Column 13, lines 6-12). As taught by Watanabe, it was known in the art to add 0.1 to 10 wt% (for claim 9) of a fatty acid ester which is a full ester of a polyhydric alcohol (for claim 1) to such thermoplastic resins (Column 5, line 36 to Column 6, line 9) as an additive. The prior art discloses that the inclusion of such compounds results in a final foam characterized by improved properties such as reduced shrinkage after expansion, good closed cellular characteristics, and higher compressive strength (abstract).
Sakai and Watanabe are both directed towards the production of foams from thermoplastic resins such as EVA. As taught by Watanabe, it was known in the art that fatty acid ester which are a full ester of a polyhydric alcohol could be used as additives for such foams to reduce shrinkage after expansion and improve properties such as compressive strength. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the composition of Sakai by adding a fatty acid ester which is a full ester of a polyhydric alcohol, with the reasonable expectation of obtaining a final foam having the improved properties taught by the prior art.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al, KR20110124836 (of record), in view of Watanabe et al, US4214054.
A machine translation of Kim was used to prepare this Office Action.
Kim discloses the production of a foamable composition comprising first and second EVA, corresponding to the claimed thermoplastic resin (for claims 1, 3); a crosslinking agent (for claim 1); a blowing agent (i.e., a foaming agent) (for claim 1); stearic acid, corresponding to the claimed fatty acid (for claims 1, 5); and an ethylene/propylene/diene rubber (EPDM) (for claim 1) (abstract). The prior art foam is crosslinked (for claim 6) (Page 3: line 49 to Page 4: line 12) and can be used in the midsole of a show (for claim 8) (abstract; Page 2: lines 1-2). Kim exemplifies the production of foams having a specific gravity of 0.17 g/cm3 (for claim 7) (Table 2; Page 6: lines 1-3).
Regarding the claimed ethylene content of the EPDM: The prior art EPDM is characterized by an ethylene content in the range of 50 to 70 wt% (for claim 1) (Page 3: lines 27-28). The prior art EAPDM therefore corresponds to the claimed EPDM (for claim 1).
Regarding the claimed amount of EPDM: The prior art foamable composition comprises the EPDM in an amount in the range of 30 to 55 wt% relative to the sum of the amounts of EVAs and EPDM (for claims 1, 4) (abstract; Page 3: lines 37-40).
Regarding the claimed hardness: As discussed above, Kim renders obvious a composition comprising the same polymer components combined in the same amounts as the claimed invention. As such, it is reasonably expected that the properties of the prior art composition would not be materially different from those of the composition. The burden is therefore shifted to applicant to provide evidence that the composition rendered obvious by the prior art would not have the same hardness properties as the claimed composition (for claim 2); see In re Fitzgerald cited earlier in this Action.
Regarding the amount of fatty acid: The prior composition comprises 0.5 to 2 parts stearic acid per 100 parts polymer mixture-i.e., about 0.5 to 2 wt%, overlapping the claimed range (for claim 5) (page 4, lines 13-17).
Kim is silent regarding the addition of a fatty acid ester which is a full ester of a fatty acid.
Watanabe discloses the production of an expanded thermoplastic resin (i.e., a foam) comprising a resin such as an EVA (abstract; Column 2, lines 7-16; Column 13, lines 6-12). As taught by Watanabe, it was known in the art to add 0.1 to 10 wt% (for claim 9) of a fatty acid ester which is a full ester of a polyhydric alcohol (for claim 1) to such thermoplastic resins (Column 5, line 36 to Column 6, line 9) as an additive. The prior art discloses that the inclusion of such compounds results in a final foam characterized by improved properties such as reduced shrinkage after expansion, good closed cellular characteristics, and higher compressive strength (abstract).
Kim and Watanabe are both directed towards the production of foams from thermoplastic resins such as EVA. As taught by Watanabe, it was known in the art that fatty acid ester which are a full ester of a polyhydric alcohol could be used as additives for such foams to reduce shrinkage after expansion and improve properties such as compressive strength. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the composition of Kim by adding a fatty acid ester which is a full ester of a polyhydric alcohol, with the reasonable expectation of obtaining a final foam having the improved properties taught by the prior art.
Response to Arguments
Applicant’s arguments, see pages 5-9, filed 11/20/2025, with respect to the use of a fatty acid ester which is a full ester of a polyhydric alcohol have been fully considered and are persuasive with respect to the following rejections.
the rejection(s) under 35 U.S.C. 102(a))(1) over Sakai and Kim, and
the rejection(s) under 35 U.S.C. 103 over Sakai in view of Brandolini and Kim in view of Brandolini
Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sakai in view of Watanabe and Kim in view of Watanabe as discussed earlier in this Action.
Regarding the argument that neither Sakai nor Kim discloses the addition of a fatty acid ester which is a full ester of a polyhydric alcohol, it is noted that this feature is taught by Watanabe as discussed earlier in this Action. Arguments that Sakai and Kim do not teach the use of the required ester therefore are not persuasive.
To the extent that applicant argues that Brandolini would have taught away from it the claimed invention because it was directed towards non-crosslinked foams, it is noted that Watanabe teaches that the expanded resin in which the full fatty acid ester is used may be crosslinked (Column 13, lines 5-12 and 22-26). Watanabe therefore teaches that the fatty acid esters of US4214054 may be used in crosslinked foams.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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, Heidi Riviere Kelley can be reached at 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.
/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765