DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on March 2, 2026 has been fully considered. The amendment to instant claims 8-11, 13-19 and addition of new claims 21-23 are acknowledged. Specifically, claim 1 has been amended to include the limitations of
an open cell polymer foam comprising: a thermoplastic polymer foam formed from a polymer composition comprising:
a polyolefin crosslinkable thermoplastic matrix;
a crosslinking agent comprising a peroxide that can crosslink the polyolefin crosslinkable thermoplastic matrix;a blowing agent; and at least one cell opener,
the at least one cell opener being selected from the group consisting of a surface tension modifier, a rheology modifier, an inorganic compound, and combinations thereof, the foam comprising:
an open cell content of at least 80%; a density ranging from 13 to 60 kg/m3; an average cell size ranging from 50 to 700 microns; and a tortuosity of 1.1 to 6.0.
In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
3. Claims 13-18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As currently amended instant claims 13-14 depend on claim 8, but recite “a cross-linkable thermoplastic polymer”, which term is broader than “a polyolefin cross-linkable thermoplastic matrix” of claim 8; recite “a crosslinking agent” which term is broader than “a peroxide cross-linking agent that can crosslink the polyolefin cross-linkable thermoplastic matrix” and recite “at least one cell opener” which term is broader than the specific cell openers of claim 8. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
4. Claims 13-19 are 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.
5. As currently amended instant claims 13-14 depend on claim 8, but recite “an open cell foam”, “a cross-linkable thermoplastic polymer”, “a crosslinking agent”, “at least one cell opener”, but do not recite prepositions “the” or “said” in front of those terms, and it is not clear if said terms cited in claims 13-14 are the same or different from those cited in claim 8.
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.
6. Claims 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over
Lopez-Gonzales et al, International Journal of Environmental Science and Technology, 2019 (submitted in IDS on 10/04/24) in view of De Vos et al (US 5,851,458) and Alvarez-Lainez et al, Material Letters, 121, 2014, 26-30 (submitted in IDS on 10/04/24).
7. Lopez-Gonzales et al discloses open cell foams formed from a composition comprising:
a) a polyethylene or ethylene-vinyl acetate polymers;
b) azodicarbonamide blowing agent;
c) dicumyl peroxide cross-linking agent,
wherein the polyethylene foam is having density of 20 kg/m3, open cell content of 95% and tortuosity of 4 (Table 1, as to instant claim 10) and having density 15.8 kg/m3, open cell content 99% and tortuosity of 1.9 (Table 1, as to instant claim 9).
8. Lopez-Gonzales et al discloses oil spill remediation/absorption material comprising said foam (Abstract, as to instant claim 12).
9. Though Lopez-Gonzales et al does not explicitly recite the cell sizes of said foam and the foam composition comprising a cell opening agent,
1) De Vos et al discloses an open celled foam made from polyethylene and polystyrenes, having at least 75% of open cells and cell sizes of 50-150 micron (col. 2, lines 55-67; col. 3, lines 65-67), wherein De Vos et al explicitly teaches that in order to decrease the closed cell content, a supplemental cell opening agent of fatty acid amides can be used in amount of 0.1-20%wt (col. 6, lines 22-67).
Thus, De Vos et al explicitly teaches the use of fatty acid amides as cell opening agents to increase the content of open cells.
It is noted that fatty acid amides are cited in instant specification as rheology modifiers and cell openers ([0028] of instant specification).
2) Alvarez-Lainez et al discloses polyolefin/polyethylene open-cell foams, produced using azodicarbonamide as foaming agent and dicumyl peroxide as a cross-linking agent, having density of 23-64 kg/m3 (Abstract, p. 26, Table 1), wherein such foams are having high acoustic absorption coefficient and are used for acoustic absorption (Abstract, page 29, Conclusion).
10. Since Lopez-Gonzales et al, De Vos et al and Alvarez-Lainez et al are related to open cell foams based on polyethylene, and thus belong to the same field of endeavor, wherein De Vos et al explicitly teaches the use of fatty acid amides to increase open cell content, and to produce the foam with cell size of 50-150 microns, and Alvarez-Lainez et al teaches the open cell polyolefin foams having high acoustic absorption coefficient and being used for acoustic absorption, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of De Vos et al, Alvarez-Lainez et al and Lopez-Gonzales et al, and to include, or obvious to try to include fatty acid amides in amount of as low as 0.1%wt in the composition for making the open cell foam of Lopez-Gonzales et al, so to produce the foam of Lopez-Gonzales et al having open cell content of about 100% and cell size of 50-150 micron as well, given such is desired depending on the specific end-use of said foam, especially since such open cell foams are having high acoustic absorption coefficient and are taught in the art as being used for acoustic absorption, as shown by Alvarez-Lainez et al as well. 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). 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
11. Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Ito (US 4,877,814) in view of Wakabayashi et al (JP2001-213988, based on machine translation, submitted in IDS on 10/04/24) and De Vos et al (US 5,851,458), as evidenced by Lausberg et al (US 2002/0111451) and Clampitt et al (US 3,819,514).
12. Ito discloses an open cell foam produced by a method comprising the steps of:
1) preparing a blend of the following components a)-e) (Abstract, Examples 1, 5, col. 7, lines 35-45) (corresponding to “a foamable precursor” of claim 19):
a) a base polymer, specifically ethylene-vinyl acetate copolymer or a low density polyethylene (col. 8, lines 34-39);
b) a foaming agent, specifically azodicarbonamide (col. 3, lines 15-22);
c) a cross-linking agent, specifically dicumyl peroxide (col. 8, lines 29-33);
d) 5-30 phr of a high melting polymer, specifically polyamide, polypropylene or polyethylene phthalate (col. 5, lines 32-38; col. 3, lines 45-49);
e) 5-30 phr of calcium carbonate or talc (col. 8, lines 15-25).
2) heating the blend under a pressure at a temperature of 110-135⁰C to obtain a primary intermediate product having expansion coefficient of 1-2 times (Abstract);
3) heating the primary intermediate product at a temperature of 150-190⁰C and thus causing complete decomposition of the foaming agent to obtain a secondary intermediate product having expansion ratio of 25-45 times (Abstract; col. 4, lines 15-20);
4) cooling the secondary intermediate product in room temperature water to form the foam (col. 10, lines 60-65).
13. As evidenced by Clampitt et al, azodicarbonamide is having a decomposition temperature of 145-165⁰C (see col. 3, lines 5-7 of Clampitt et al).
As evidenced by Lausberg et al, dicumyl peroxide is having decomposition temperature of 110⁰C ([0011] of Lausberg et al).
Therefore, heating in the step 2) at a temperature of 110-135⁰C will intrinsically and necessarily take place at a temperature greater than decomposition temperature of the dicumyl peroxide and below the decomposition temperature of azodicarbonamide; heating the primary intermediate product in the step 3) at a temperature of 150-190⁰C, i.e. as high as 190⁰C, will intrinsically and necessarily take place at a temperature greater that the decomposition temperature of the azodicarbonamide.
14. Though Ito does not teach the “foamable precursor” blend further comprising additional cells openers including polystyrene and fatty acid amides,
1) Wakabayashi et al discloses an open cell foam having density of 15-200 kg/m3 and open cell content of more than 80% ([0010], [0011], [0013]), wherein the foam is formed from a composition comprising:
5-95%wt of a polyolefin including polyethylene ([0008], [0020]) and one or more polymers selected from the group consisting of ethylene-vinyl acetate copolymer, styrene-based elastomers including styrene block copolymers ([0029]), olefin-based elastomers ([0007]), i.e. appears to be a thermoplastic foam.
The composition for making the foam further comprises azo-based foaming agents and foam regulators including talc and silica ([0052], [0053]). The composition may further comprise fatty acid amides ([0049]).
The foam is obtained by feeding the polymeric components into an extruder, adding cell regulators fatty acid amides/shrinkage inhibitor, heating and melting the mixture, feeding the foaming agent to foam the mixture ([0057]).
It is noted that all of styrene-based polymers, talc and fatty acid amides are cited in instant specification as being cell openers ([0026]-[0029] of instant specification).
2) De Vos et al discloses an open celled foam made from polyethylene and polystyrenes, having at least 75% of open cells and cell sizes of 50-150 micron (col. 2, lines 55-67; col. 3, lines 65-67), wherein De Vos et al explicitly teaches that in order to decrease the closed cell content, a supplemental cell opening agent of fatty acid amides can be used in amount of 0.1-20%wt (col. 6, lines 22-67).
Thus, De Vos et al explicitly teaches the use of fatty acid amides as cell opening agents to increase the content of open cells.
15. Since all of Wakabayashi et al, De Vos et al and Ito are related to open cell foams based on polyolefins, and thereby belong to the same field of endeavor, wherein i) Wakabayashi et al discloses the composition used as a foam precursor for making the open cell polyolefin-based foam having open cell content of more than 80% further comprising styrene-based polymers and fatty acid amides and ii) De Vos et al explicitly teaches the use of fatty acid amides as cell opening agents to increase the content of open cells, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Wakabayashi et al, De Vos et al and Ito, and to include, or obvious to try to include polystyrene and fatty acid amides cell openers into the foamable precursor composition of Ito, so that opened cells would be formed during expansion step, thereby avoiding the necessity of an additional step of mechanically rupturing the cells, and thus simplifying the process of Ito, and since it would have been obvious to choose material based on its suitability. 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).
16. Since the open cell polyolefin foam of Ito in view of Wakabayashi et al and De Vos et al is produced from substantially the same composition as that claimed in instant invention, including the use of polystyrene and fatty acid amides cell openers, by substantially the same polymerization/cross-linking/expansion process steps as claimed in instant invention, therefore, immediately following the cooling step in the process of Ito in view of Wakabayashi et al and De Vos et al the foam will intrinsically and necessarily comprise, or would be reasonably expected to comprise an open cell content of at least 80% 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.
17. Claims 8-15, 17-18, 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Ito (US 4,877,814) in view of Wakabayashi et al (JP2001-213988, based on machine translation, submitted in IDS on 10/04/24) and De Vos et al (US 5,851,458), as evidenced by Lausberg et al (US 2002/0111451) and Clampitt et al (US 3,819,514).
18. Ito discloses an open cell foam produced by a method comprising the steps of:
1) preparing a blend of the following components a)-e) (Abstract, Examples 1, 5, col. 7, lines 35-45, as to instant claim 15) (corresponding to “a foamable precursor”):
a) a base polymer, specifically ethylene-vinyl acetate copolymer or a low density polyethylene (col. 8, lines 34-39, as to instant claims 8, 12);
b) a foaming agent, specifically azodicarbonamide (col. 3, lines 15-22);
c) a cross-linking agent, specifically dicumyl peroxide (col. 8, lines 29-33);
d) 5-30 phr of a high melting polymer, specifically polyamide, polypropylene or polyethylene phthalate (col. 5, lines 32-38; col. 3, lines 45-49);
e) 5-30 phr of calcium carbonate or talc (col. 8, lines 15-25).
2) heating the blend under a pressure at a temperature of 110-135⁰C to obtain a primary intermediate product having expansion coefficient of 1-2 times (Abstract, as to instant claim 17);
3) heating the primary intermediate product at a temperature of 150-190⁰C and thus causing complete decomposition of the foaming agent to obtain a secondary intermediate product having expansion ratio of 25-45 times (Abstract; col. 4, lines 15-20, as to instant claim 18);
4) cooling the secondary intermediate product in room temperature water to form the foam (col. 10, lines 60-65, as to instant claims 13-14);
5) producing an open cell foam product having thickness of 86 mm, i.e. an article (as to instant claim 12);
the final foam is having open-cell ratio of 100% (Example 1) and density of 25-30 kg/m3 (Examples 1-2).
19. As evidenced by Clampitt et al, azodicarbonamide is having a decomposition temperature of 145-165⁰C (see col. 3, lines 5-7 of Clampitt et al).
As evidenced by Lausberg et al, dicumyl peroxide is having decomposition temperature of 110⁰C ([0011] of Lausberg et al).
Therefore, heating in the step 2) at a temperature of 110-135⁰C will intrinsically and necessarily take place at a temperature greater than decomposition temperature of the dicumyl peroxide and below the decomposition temperature of azodicarbonamide; heating the primary intermediate product in the step 3) at a temperature of 150-190⁰C, i.e. as high as 190⁰C, will intrinsically and necessarily take place at a temperature greater that the decomposition temperature of the azodicarbonamide.
20. Ito does not teach the “foamable precursor” blend further comprising additional cells openers including polystyrene and fatty acid amides, and the polystyrene and the base polymer being in molten form for mixing.
21. However,
1) Wakabayashi et al discloses an open cell foam having density of 15-200 kg/m3 and open cell content of more than 80% ([0010], [0011], [0013]), wherein the foam is formed from a composition comprising:
5-95%wt of a polyolefin including polyethylene ([0008], [0020]) and one or more polymers selected from the group consisting of ethylene-vinyl acetate copolymer, styrene-based elastomers including styrene block copolymers ([0029]), olefin-based elastomers ([0007]), i.e. appears to be a thermoplastic foam.
The composition for making the foam further comprises azo-based foaming agents and foam regulators including talc and silica ([0052], [0053]). The composition may further comprise fatty acid amides ([0049]).
The foam is obtained by feeding the polymeric components into an extruder, adding cell regulators fatty acid amides/shrinkage inhibitor, heating and melting the mixture, feeding the foaming agent to foam the mixture ([0057]).
Based on the teachings of Wakabayashi et al, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of polyethylene, polystyrene and ethylene-vinyl acetate copolymer as the polymers in the foamable composition, and further include fatty acid amides, since it would have been obvious to choose material based on its suitability. 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).
Given in the process of Wakabayashi et al all of the polyethylene, polystyrene and ethylene-vinyl acetate copolymer are heated and melted in an extruder, therefore, the polystyrene, polyethylene and ethylene-vinyl acetate copolymers will intrinsically and necessarily be in molten form and will miscibly be mixed with each other (as to instant claims 21-22). Further, since polystyrene cited by Wakabayashi et al is the same polystyrene claimed in instant invention as a surface tension modifier, therefore, the polystyrene in the foam of Wakabayashi et al will intrinsically and necessarily at least partially act as a surface modifier as well (as to instant claim 23).
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.
It is further noted that claims 21-23 are product-by process claims. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
It is noted that all of styrene-based polymers, talc and fatty acid amides are cited in instant specification as being cell openers ([0026]-[0029] of instant specification).
It is further noted that instant specification recites that the open cell foams having a high tortuosity of 2.5-6 are produced by combining polystyrene polymer with ethylene-vinyl acetate copolymer; whereas low tortuosity foams, i.e. having tortuosity of 1.1-2.5, maybe produced by including polystyrene and fatty acid amide (see [0065] of instant specification).
2) De Vos et al discloses an open celled foam made from polyethylene and polystyrenes, having at least 75% of open cells and cell sizes of 50-150 micron (col. 2, lines 55-67; col. 3, lines 65-67), wherein De Vos et al explicitly teaches that in order to decrease the closed cell content, a supplemental cell opening agent of fatty acid amides can be used in amount of 0.1-20%wt (col. 6, lines 22-67).
Thus, De Vos et al explicitly teaches the use of fatty acid amides as cell opening agents to increase the content of open cells.
3) It is noted that all of styrene-based polymers, polyamide, talc and fatty acid amides are claimed in instant invention and cited in instant specification as being cell openers ([0026]-[0029] of instant specification).
22. Since all of Wakabayashi et al, De Vos et al and Ito are related to open cell foams based on polyolefins, and thereby belong to the same field of endeavor, wherein
i) Wakabayashi et al discloses the composition, used as a foam precursor for making the open cell polyolefin-based foam having open cell content of more than 80%, further comprising styrene-based polymers and fatty acid amides and ii) De Vos et al explicitly teaches the use of fatty acid amides as cell opening agents to increase the content of open cells, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Wakabayashi et al, De Vos et al and Ito, and to include, or obvious to try to include polystyrene and fatty acid amides cell openers into the foamable precursor composition of Ito, so that opened cells would be formed during the expansion step, thereby substantially avoiding the necessity of an additional step of mechanically rupturing the cells, and thus simplifying the process of Ito, and since it would have been obvious to choose material based on its suitability. 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). 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
23. As to instant claims 13, since:
1) the compositions used for making the open cell foams of Ito in view of De Vos et al and Wakabayashi et al include styrene-based polymers or polyamide, talc and fatty acid amides, used in various amounts, and which compounds are cited in instant specification as being cell openers ([0026]-[0029] of instant specification), and thereby will intrinsically and necessarily determine the open cell structure, size and its content in the produced foams;
2) Tortuosity is defined in instant specification as the measure of how readily a fluid can be transported and as presented in Fig. 3 of instant specification and shown below:
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3) As defined above, the value of tortuosity will intrinsically and necessarily depend on the content of the open cells, their size and structure, which in turn depend on the amount and type of used foaming agents and further on the amounts and types of used cell opening agents, i.e. styrene-based polymers, polyamide, talc and fatty acid amides, used alone or in combination,
therefore,
it would have been obvious to a one of ordinary skill in the art to:
a) choose the desired value of tortuosity of the open cell foam to be produced by the process of Ito in view of De Vos et al and Wakabayashi et al, including the tortuosity in the range of 1.1-6.0 depending on the specific end-use of the desired product,
b) depending on the chosen/desired level of tortuosity, to choose and use either the styrene-based polymers, polyamide, talc/calcium carbonate alone, or in their combination, or in further combination with fatty acid amides, so to produce the final open cell having a desired open cell content, cell size and cell structure, and thus desired tortuosity, 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). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
24. Since the open cell polyolefin foam of Ito in view of Wakabayashi et al and De Vos et al is produced from substantially the same composition as that claimed in instant invention, including the use of polystyrene and fatty acid amides cell openers, by substantially the same polymerization/cross-linking/expansion process steps as claimed in instant invention, therefore, immediately following the cooling step in the process of Ito in view of Wakabayashi et al and De Vos et al the foam will intrinsically and necessarily comprise, or would be reasonably expected to comprise an open cell content of at least 80% as well (as to instant claims 8, 14), density, cell size and tortuosity having the values in the ranges that are the same as or overlapping with those claimed in instant invention. 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 8-18, 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Ito (US 4,877,814) in view of Wakabayashi et al (JP2001-213988, based on machine translation, submitted in IDS on 10/04/24) and De Vos et al (US 5,851,458), as evidenced by Lausberg et al (US 2002/0111451) and Clampitt et al (US 3,819,514), in further view of Zhu et al (CN109836667, based on machine translation, submitted in IDS on 10/04/24).
26. The discussion with respect to Ito (US 4,877,814) in view of Wakabayashi et al (JP2001-213988, based on machine translation, submitted in IDS on 10/04/24) and De Vos et al (US 5,851,458), set forth in paragraphs 17-24 above, is incorporated here by reference.
27. Though Ito discloses a composition comprising: ethylene-vinyl acetate copolymer or a low density polyethylene, azodicarbonamide foaming agent, dicumyl peroxide cross-linking agent and further polyamide, polypropylene or polyethylene phthalate and
calcium carbonate or talc, Ito does not teach said calcium carbonate or talc being added as a masterbatch with a carrier.
28. However, Zhu et al discloses a masterbatch composition comprising:
A) 45-99.9%wt of polyethylene and
B) 0.1-55%wt of an opening agent ([0014]), wherein the opening agent is selected from the group of silicon dioxide, talc, calcium carbonate ([0017]).
29. Since the composition of Ito comprises both polyethylene and talc/calcium carbonate, and Zhu et al discloses a masterbatch comprising said components, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Zhu et al and Ito, and to include, or obvious to try to use the masterbatch of Zhu et al to form the composition of Ito, and further combine said masterbatch with azodicarbonamide foaming agent, dicumyl peroxide cross-linking agent and further polyamide, since it would have been obvious to choose material based on its suitability, and selection of any order of mixing components is ingredients is prima facie obvious.
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). Ex parte Rubin , 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
30. Claims 8-15, 17-18, 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Lopez-Gonzales et al, International Journal of Environmental Science and Technology, 2019 (submitted in IDS on 10/04/24) in view of De Vos et al (US 5,851,458) and Alvarez-Lainez et al, Material Letters, 121, 2014, 26-30 (submitted in IDS on 10/04/24), in further view of over Ito (US 4,877,814) and Wakabayashi et al (JP2001-213988, based on machine translation, submitted in IDS on 10/04/24), as evidenced by Lausberg et al (US 2002/0111451) and Clampitt et al (US 3,819,514).
31. The discussion with respect to Lopez-Gonzales et al, International Journal of Environmental Science and Technology, 2019 (submitted in IDS on 10/04/24) in view of De Vos et al (US 5,851,458) and Alvarez-Lainez et al, Material Letters, 121, 2014, 26-30) set forth in paragraphs 6-10 above, is incorporated here by reference.
32. Though Lopez-Gonzales et al in view of De Vos et al and Alvarez-Lainez et al disclose open cell foams formed from a composition comprising a polyethylene or ethylene-vinyl acetate polymers; azodicarbonamide blowing agent; dicumyl peroxide cross-linking agent, further comprising cell openers,
and having density of 20 kg/m3, open cell content of 95% and tortuosity of 4 or having density 15.8 kg/m3, open cell content 99% and tortuosity of 1.9, Lopez-Gonzales et al in view of De Vos et al and Alvarez-Lainez et al do not teach the process for producing said foam.
33. However,
1) Ito discloses an open cell foam produced by a method comprising the steps of:
i) preparing a blend of the following components a)-e) (Abstract, Examples 1, 5, col. 7, lines 35-45, as to instant claim 15) (corresponding to “a foamable precursor”):
a) a base polymer, specifically ethylene-vinyl acetate copolymer or a low density polyethylene (col. 8, lines 34-39, as to instant claims 8, 12);
b) a foaming agent, specifically azodicarbonamide (col. 3, lines 15-22);
c) a cross-linking agent, specifically dicumyl peroxide (col. 8, lines 29-33);
d) 5-30 phr of a high melting polymer, specifically polyamide, polypropylene or polyethylene phthalate (col. 5, lines 32-38; col. 3, lines 45-49);
e) 5-30 phr of calcium carbonate or talc (col. 8, lines 15-25).
ii) heating the blend under a pressure at a temperature of 110-135⁰C to obtain a primary intermediate product having expansion coefficient of 1-2 times (Abstract, as to instant claim 17);
iii) heating the primary intermediate product at a temperature of 150-190⁰C and thus causing complete decomposition of the foaming agent to obtain a secondary intermediate product having expansion ratio of 25-45 times (Abstract; col. 4, lines 15-20, as to instant claim 18);
iv) cooling the secondary intermediate product in room temperature water to form the foam (col. 10, lines 60-65, as to instant claims 13-14);
v) producing an open cell foam product having thickness of 86 mm, i.e. an article;
the final foam is having open-cell ratio of 100% (Example 1) and density of 25-30 kg/m3 (Examples 1-2).
As evidenced by Clampitt et al, azodicarbonamide is having a decomposition temperature of 145-165⁰C (see col. 3, lines 5-7 of Clampitt et al).
As evidenced by Lausberg et al, dicumyl peroxide is having decomposition temperature of 110⁰C ([0011] of Lausberg et al).
Therefore, heating in the step ii) at a temperature of 110-135⁰C will intrinsically and necessarily take place at a temperature greater than decomposition temperature of the dicumyl peroxide and below the decomposition temperature of azodicarbonamide; heating the primary intermediate product in the step iii) at a temperature of 150-190⁰C, i.e. as high as 190⁰C, will intrinsically and necessarily take place at a temperature greater that the decomposition temperature of the azodicarbonamide.
2) Wakabayashi et al discloses an open cell foam having density of 15-200 kg/m3 and open cell content of more than 80% ([0010], [0011], [0013]), wherein the foam is formed from a composition comprising:
5-95%wt of a polyolefin including polyethylene ([0008], [0020]) and one or more polymers selected from the group consisting of ethylene-vinyl acetate copolymer, styrene-based elastomers including styrene block copolymers ([0029]), olefin-based elastomers ([0007]), i.e. appears to be a thermoplastic foam.
The composition for making the foam further comprises azo-based foaming agents and foam regulators including talc and silica ([0052], [0053]). The composition may further comprise fatty acid amides ([0049]).
The foam is obtained by feeding the polymeric components into an extruder, adding cell regulators fatty acid amides/shrinkage inhibitor, heating and melting the mixture, feeding the foaming agent to foam the mixture ([0057]).
Based on the teachings of Wakabayashi et al, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of polyethylene, polystyrene and ethylene-vinyl acetate copolymer as the polymers in the foamable composition, and further include fatty acid amides, since it would have been obvious to choose material based on its suitability. 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).
Given in the process of Wakabayashi et al all of the polyethylene, polystyrene and ethylene-vinyl acetate copolymer are heated and melted in an extruder, therefore, the polystyrene, polyethylene and ethylene-vinyl acetate copolymers will intrinsically and necessarily be in molten form and will miscibly be mixed with each other (as to instant claims 21-22). Further, since polystyrene cited by Wakabayashi et al is the same polystyrene claimed in instant invention as a surface tension modifier, therefore, the polystyrene in the foam of Wakabayashi et al will intrinsically and necessarily at least partially act as a surface modifier as well (as to instant claim 23).
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.
It is further noted that claims 21-23 are product-by process claims. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
It is noted that all of styrene-based polymers, talc and fatty acid amides are cited in instant specification as being cell openers ([0026]-[0029] of instant specification).
It is further noted that instant specification recites that the open cell foams having a high tortuosity of 2.5-6 are produced by combining polystyrene polymer with ethylene-vinyl acetate copolymer; whereas low tortuosity foams, i.e. having tortuosity of 1.1-2.5, maybe produced by including polystyrene and fatty acid amide (see [0065] of instant specification).
34. Since all of Ito and Lopez-Gonzales et al in view of De Vos et al and Alvarez-Lainez et al are related to open-celled foams produced from polyethylene, EVA, azodicarbonamide blowing agent and dicumyl peroxide, and thereby belong to the same field of endeavor, wherein Ito teaches a process for producing said foam at two different temperature regimes, so to separate the cross-linking and foaming steps, and further wherein Wakabayashi et al discloses further including polystyrene resins and conducting the polymer mixing step with heating/melting the polymers to ensure thorough mixing on the resins, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Ito, Wakabayashi et al and Lopez-Gonzales et al in view of De Vos et al and Alvarez-Lainez et al, and to produce the open celled foam of Lopez-Gonzales et al in view of De Vos et al and Alvarez-Lainez et al using a two-step temperature regime as taught by Ito, so to separate and improve the cross-linking and the foaming steps, and further include at least in minor amount polystyrene in the foamable composition and to conduct mixing of the polymers in molten state so to ensure thorough mixing of said polymers, as taught by Wakabayashi et al as well, 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). 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
35. Since the open cell polyolefin foam of Lopez-Gonzales et al in view of De Vos et al, Alvarez-Lainez et al, Ito and Wakabayashi et al is produced from substantially the same composition as that claimed in instant invention, including the use of polystyrene and fatty acid amides cell openers, by substantially the same polymerization/cross-linking/expansion process steps as claimed in instant invention, therefore, immediately following the cooling step in the process for producing said foam of Lopez-Gonzales et al in view of De Vos et al, Alvarez-Lainez et al, Ito and Wakabayashi et al the foam will intrinsically and necessarily comprise, or would be reasonably expected to comprise an open cell content of at least 80% as well (as to instant claims 8, 14), density, cell size and tortuosity having the values in the ranges that are the same as or overlapping with those claimed in instant invention. 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.
Response to Arguments
36. Applicant's arguments filed on March 2, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
37. In addition, it is noted that the above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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