FOAMABLE RESIN COMPOSITION, MOLDED RESIN FOAM, AND PRODUCTION METHOD THEREFOR

Application No. 18/183,420

• Filed: Mar 14, 2023
• Examiner: KRYLOVA, IRINA
• Art Unit: 1764
• Tech Center: 1700 — Chemical & Materials Engineering
• Assignee: Toyoda Gosei Co., Ltd.
• OA Round: 2 (Final)

Office Action

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 .

Response to Amendment
1. The amendment filed by Applicant on December 10, 2025 has been fully considered. The amendment to instant claims 1-3 and addition of new claims 4-5 are acknowledged. In light of the amendment filed by Applicant, the previous rejections cited below are maintained but suitably framed to better address the current amendment. 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(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.

2. Claims 4-5 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.
Claims 4-5 refer to “low-temperature expandable microcapsules”, but do not have a preposition “the” or “said” in front of those, and it is not clear if “low-temperature expandable microcapsules” cited in claims 4-5 are the same or different from those cited in claims 2 and 3.

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.

3. Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (WO2020/076037) in view of Ferguson et al (US 2004/0131840).
It is noted that while the rejection is made over WO2020/076037 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2021/0340348 is relied upon. All citations to paragraph numbers, etc., below refer to US 2021/0340348.

4. The rejection is adequately set forth on pages 2-8 of an Office action mailed on September 10, 2025 and is incorporated here by reference.

5. With respect to the amended claims 2-3,
Lee discloses an extruded, i.e. molded, foam, such as hose ([0070], [0086]) and a method for making such molded foam by extrusion, i.e. molding (claim 12) of a composition comprising:
A) a peroxide-crosslinkable thermoplastic polymer which includes thermoplastic elastomers ([0019], [0011]), specifically styrene-based SBS, SIS or SEBS block copolymers, thermoplastic vulcanizates (TPV) and their combination ([0035]) and
B) thermo-expandable microspheres ([0011]) which encapsulate an expandable hydrocarbon compound ([0037]) having an expansion start temperature (Tstart) of 100-150⁰C ([0065]),
wherein the produced foam has density of 0.28-0.3 g/cc and Shore C hardness of 30-35 (Table 1, as to instant claim 3) and
wherein the extrusion is taking place at a temperature equal or higher than the Tstart of the expandable microspheres (claim 13, as to instant claim 2).
Thus, Lee explicitly teaches that the thermoplastic elastomers, specifically styrene-based SBS, SIS or SEBS block copolymers, and the thermoplastic vulcanizates (TPV) can be used in combination. Based on the teachings of Lee, it would have been obvious to a one of ordinary skill in the art to choose and use the thermoplastic elastomers, specifically styrene-based SBS, SIS or SEBS block copolymers, and the thermoplastic vulcanizates (TPV) in a mixture, 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).

6. Though Lee does not teach said thermo-expandable microspheres comprising both high-temperature expandable and low-temperature expandable microspheres,
Ferguson et al discloses high expansion structural foam made from a polymer composition using a blowing system comprising:
- a high temperature thermally activated blowing agent in the form of expandable microspheres ([0020]) and
- a low temperature thermally-activated blowing agent in the form of expandable microspheres ([0012]; [0020]),
wherein said unique combination of the high- and low-temperature blowing agents provides for the expandable foam that expands at both the core and the perimeter and has a high degree of expansion ([0014]).
Ferguson et al further teaches that using large amounts of low-temperature thermally-activated microspheres results in large voids caused by thermal breakdown of the low-temperature expandable microspheres. To avoid this problem, high temperature expandable microspheres could be used, however, a certain low amount of low-temperature activated microspheres is required for uniform expansion of the foam; without the low-temperature thermally-activated blowing agent, expansion only occurs in the center of the foam, not at the edge ([0022]).
Thus, Ferguson et al clearly teaches the advantages of using the combination of low-temperature expandable microspheres and high-temperature expandable microspheres.
The weight ratio of the high temperature blowing agent to the low-temperature blowing agent is 1:1 to 7:1 ([0023]), i.e. the low-temperature expandable microspheres are used in amount of 12.5-50%wt based on the combined weight of the low- and high-temperature expandable microspheres (as to instant claims 1, 4-5).
The polymer expandable composition comprises thermoplastic styrene-based block copolymers SEBS and SBS as the preferable rubbers well ([0049]).
Based on the teachings of Ferguson et al, it would have been obvious to a one of ordinary skill in the art to choose and use the high temperature thermally activated blowing agent in the form of expandable microspheres having onset/stating temperature of 150⁰C ([0020]) and a low temperature thermally-activated blowing agent in the form of expandable microspheres having onset/starting temperature of about 100⁰C or about 105⁰C ([0020], [0030], [0031]), as well, 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).. See In re Ruff 118 USPQ 343 (CCPA 1958).

7. Since i) the method for forming the foam of Lee in view of Ferguson et al includes molding at a temperature equal or higher than Tstart of the expandable microspheres (claim 13 of Lee), ii) the expandable particles used in the process of Lee in view of Ferguson et al are having Tstart of as high as 150⁰C (i.e. high temperature expandable microspheres), therefore, it would have been obvious to a one of ordinary skill in the art to conduct the molding at a temperature of about 150⁰C, so to allow the high temperature expandable microspheres to expand. Given the molding is conducted at a temperature of about 150⁰C, and the low temperature expandable microspheres are having Tstart of as low as about 100⁰C, therefore, molding in an extruder having a rotating shaft at a temperature of as high as 150⁰C will intrinsically and necessarily lead to, or would be reasonably expected to lead to expanding of both the high temperature expandable microspheres and the low temperature expandable microspheres, and further at least partial burst of at least some of the low temperature expandable microspheres 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.
Further, since the method for forming the foam of Lee in view of Ferguson et al includes molding at a temperature equal or higher than Tstart of the expandable microspheres (claim 13 of Lee), and the level/amount of ruptured low-temperature expandable microspheres depend on the specific molding temperature, it would have been obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the specific temperature of molding, depending on the specific chosen Tstart of the low temperature expandable microspheres and the specific chosen Tstart of the low-temperature expandable microspheres, so to produce the foam having a desired level of expanded and broken low-temperature expandable microspheres and desired level of expanded but not broken high-temperature microspheres, depending on the specifically desired structure of the finally produced foam as well. "[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).

8. Since the molded foam of Lee in view of Ferguson et al is substantially the same as that claimed in instant invention, and is produced by substantially the same process as claimed in instant invention, therefore, the foam of Lee in view of Ferguson et al will intrinsically and necessarily comprises or would be reasonably expected to comprise the properties as claimed in instant invention, including having at least some of the low temperature-expandable microcapsules burst, having values of specific gravity, Asker C hardness and compression set the same as those claimed in instant invention, or being in the ranges overlapping with those as claimed in instant invention as well (as to instant claim 2-3). 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.

9. Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (WO2020/076037) in view of Ferguson et al (US 2004/0131840), in further view of Wang (US 5,939,464) and Gehlsen et al (US 6,103,152).
It is noted that while the rejection is made over WO2020/076037 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2021/0340348 is relied upon. All citations to paragraph numbers, etc., below refer to US 2021/0340348.

10. The rejection is adequately set forth on pages 8-12 of an Office action mailed on September 10, 2025 and is incorporated here by reference.

11. Though Lee in view of Ferguson et al do not explicitly recite the use of both styrene-based thermoplastic elastomer and TPV and their weight ratios, and the amount of used microsphere blowing agent in such composition,
1) Wang discloses molded foams, including formed by extrusion (col. 6, lines 33-36) formed from a composition comprising blends of TPV and elastic thermoplastic polymers, wherein elastic thermoplastic polymer is a block copolymer of hard and soft segments including styrene block copolymers (col. 1, lines 30-35, 45-60; col. 2, lines 35-37),
wherein the foams are having density of 0.05-0.4 g/cc (col. 1, lines 45-50).
The compositions are foamed using chemical blowing agents or low-boiling hydrocarbons (col. 6, lines 65-67).
The specifically exemplified blends of TPV and elastic thermoplastic polymers comprise 25-30%wt of TPV and 70-75%wt of SBS block copolymer (Tables III-IV, as to instant claims 1).
Wang explicitly teaches that the foams based on such combination of a minor amount of TPV and a major amount of styrene-based block copolymers are having high elongation at break and good tensile strength (col.10, lines 26-30, Tables III-IV).

2) Gehlsen et al discloses polymer molded foams, including extruded foams, comprising a polymer composition and expandable microspheres (Abstract),
wherein the polymer of the composition comprises styrene block copolymers (col. 7, lines 35-38) and wherein Gehlsen et al teaches that the expandable microspheres are used in amount of 0.1-50 parts by mass based on 100 parts of the polymer resin, and the specific amount use is based upon the desired properties of the foam product: the higher the microsphere concentration, the lower the density of the foam (col. 8, lines 35-43).

12. Since i) the method for forming the foam of Lee in view of Ferguson et al, Wang, Gehlsen et al includes molding at a temperature equal or higher than Tstart of the expandable microspheres (claim 13 of Lee), ii) the expandable particles used in the process of Lee in view of Ferguson et al, Wang, Gehlsen et al are having Tstart of as high as 150⁰C (i.e. high temperature expandable microspheres), therefore, it would have been obvious to a one of ordinary skill in the art to conduct the molding at a temperature of about 150⁰C, so to allow the high temperature expandable microspheres to expand. Given the molding is conducted at a temperature of about 150⁰C, and the low temperature expandable microspheres are having Tstart of as low as about 100⁰C, therefore, molding in an extruder having a rotating shaft at a temperature of as high as 150⁰C will intrinsically and necessarily lead to, or would be reasonably expected to lead to expanding of both the high temperature expandable microspheres and the low temperature expandable microspheres, and further at least partial burst of at least some of the low temperature expandable microspheres 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.
Further, since the method for forming the foam includes molding at a temperature equal or higher than Tstart of the expandable microspheres (claim 13 of Lee), and the level/amount of ruptured low-temperature expandable microspheres depend on the specific molding temperature, it would have been obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the specific temperature of molding, depending on the specific chosen Tstart of the low temperature expandable microspheres and the specific chosen Tstart of the low-temperature expandable microspheres, so to produce the foam having a desired level of expanded and broken low-temperature expandable microspheres and desired level of expanded but not broken high-temperature microspheres, depending on the specifically desired structure of the finally produced foam as well. "[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).

13. Since the molded foam of Lee in view of Ferguson et al, Wang, Gehlsen et al is substantially the same as that claimed in instant invention, and is produced by substantially the same process as claimed in instant invention, therefore, the foam of Lee in view of Ferguson et al, Wang, Gehlsen et al will intrinsically and necessarily comprise or would be reasonably expected to comprise the properties as claimed in instant invention, including having at least some of the low temperature-expandable microcapsules burst, having values of specific gravity, Asker C hardness and compression set the same as those claimed in instant invention, or being in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 1-3). 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.

14. Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (WO2020/076037) in view of Ferguson et al (US 2004/0131840), Wang (US 5,939,464) and Gehlsen et al (US 6,103,152).
It is noted that while the rejection is made over WO2020/076037 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2021/0340348 is relied upon. All citations to paragraph numbers, etc., below refer to US 2021/0340348.

15. Lee discloses an extruded, i.e. molded, foam, such as hose ([0070], [0086]) and a method for making such molded foam by extrusion (claim 12) of a composition comprising:
A) a peroxide-crosslinkable thermoplastic polymer which includes thermoplastic elastomers ([0019], [0011]), specifically styrene-based SBS, SIS or SEBS block copolymers, thermoplastic vulcanizates (TPV) and their combination ([0035]) and
B) thermo-expandable microspheres ([0011]) which encapsulate an expandable hydrocarbon compound ([0037]) having an expansion start temperature (Tstart) of 100-150⁰C ([0065]),
wherein the produced foam has density of 0.28-0.3 g/cc and Shore C hardness of 30-35 (Table 1, as to instant claim 3) and
wherein the extrusion is taking place at a temperature equal or higher than the Tstart of the expandable microspheres (claim 13, as to instant claim 2).
Thus, Lee explicitly teaches that the thermoplastic elastomers, specifically styrene-based SBS, SIS or SEBS block copolymers, and the thermoplastic vulcanizates (TPV) can be used in combination. Based on the teachings of Lee, it would have been obvious to a one of ordinary skill in the art to choose and use the thermoplastic elastomers, specifically styrene-based SBS, SIS or SEBS block copolymers, and the thermoplastic vulcanizates (TPV) in a mixture as the component A), 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).

16. It is further noted that instant specification confirms that “dynamically crosslinked thermoplastic elastomer” is the same as thermoplastic vulcanizate TPV (see [0018] of instant specification and as represented below):

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17. Though Lee discloses the use of thermo-expandable microspheres having Tstart of 100-150⁰C, Lee does not teach said microspheres comprising both high-temperature expandable and low-temperature expandable microspheres.

18. However, Ferguson et al discloses high expansion structural foam made from a polymer composition using a blowing system comprising:
- a high temperature thermally activated blowing agent in the form of expandable microspheres having onset/stating temperature of 110-150⁰C ([0020]) and
- a low temperature thermally-activated blowing agent in the form of expandable microspheres having onset/starting temperature of 75-about 105⁰C ([0012]; [0020]),
wherein said unique combination of the high- and low-temperature blowing agents provides for the expandable foam that expands at both the core and the perimeter and has a high degree of expansion ([0014]).
Ferguson et al further teaches that using large amounts of low-temperature thermally-activated microspheres results in large voids caused by thermal breakdown of the low-temperature expandable microspheres. To avoid this problem, high temperature expandable microspheres could be used, however, a certain low amount of low-temperature activated microspheres is required for uniform expansion of the foam; without the low-temperature thermally-activated blowing agent, expansion only occurs in the center of the foam, not at the edge ([0022]).
Thus, Ferguson et al clearly teaches the advantages of using the combination of low-temperature expandable microspheres and high-temperature expandable microspheres.
The weight ratio of the high temperature blowing agent to the low-temperature blowing agent is 1:1 to 7:1 ([0023]), i.e. the low-temperature expandable microspheres are used in amount of 12.5-50%wt based on the combined weight of the low- and high-temperature expandable microspheres (as to instant claim 1).
The polymer expandable composition comprises thermoplastic styrene-based block copolymers SEBS and SBS as well, which are the most preferable rubbers ([0049]).
Based on the teachings of Ferguson et al, it would have been obvious to a one of ordinary skill in the art to choose and use the high temperature thermally activated blowing agent in the form of expandable microspheres having onset/stating temperature of 150⁰C ([0020]) and a low temperature thermally-activated blowing agent in the form of expandable microspheres having onset/starting temperature of about 100⁰C or about 105⁰C ([0020], [0030], [0031]), as well, 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).. See In re Ruff 118 USPQ 343 (CCPA 1958).

19. Since both Ferguson et al and Lee are related to foams produced from polymeric expandable compositions using thermally-expandable microspheres having expansion temperature of 100-150⁰C as blowing agent, wherein such compositions comprise styrene-based thermoplastic elastomers, and thereby belong to the same field of endeavor, wherein Ferguson et al clearly teaches the advantages of using both the low-temperature expandable microspheres (such as having Tstart of about 100⁰C) and a high-temperature expandable microspheres (such as having Tstart of about 150⁰C) ([0020]) to produce the foam having uniform expansion with both core and edges being expanded, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Lee and Ferguson et al, and to use, or obvious to try to use the combination of the low-temperature expandable microspheres (such as having Tstart of about 100⁰C) and a high-temperature expandable microspheres (such as having Tstart of about 150⁰C) as taught by Ferguson et al as the thermally-expandable microspheres component B) to make the foam of Lee, so to ensure the foam of Lee is uniform, expanded at both the core and the edge, and having at least some of the microspheres that are not burst, and since it would have been obvious to choose material based on its suitability, 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

20. Since i) the method for forming the foam of Lee in view of Ferguson et al includes molding at a temperature equal or higher than Tstart of the expandable microspheres (claim 13 of Lee), ii) the expandable particles used in the process of Lee in view of Ferguson et al are having Tstart of as high as 150⁰C (i.e. high temperature expandable microspheres), therefore, it would have been obvious to a one of ordinary skill in the art to conduct the molding at a temperature of about 150⁰C, so to allow the high temperature expandable microspheres to expand. Given the molding is conducted at a temperature of about 150⁰C, and the low temperature expandable microspheres are having Tstart of as low as about 100⁰C, therefore, molding in an extruder having a rotating shaft at a temperature of as high as 150⁰C will intrinsically and necessarily lead to, or would be reasonably expected to lead to expanding of both the high temperature expandable microspheres and the low temperature expandable microspheres, and further at least partial burst of at least some of the low temperature expandable microspheres 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.
Further, since the method for forming the foam includes molding at a temperature equal or higher than Tstart of the expandable microspheres (claim 13 of Lee), and the level/amount of ruptured low-temperature expandable microspheres depend on the specific molding temperature, it would have been obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the specific temperature of molding, depending on the specific chosen Tstart of the low temperature expandable microspheres and the specific chosen Tstart of the low-temperature expandable microspheres, so to produce the foam having a desired level of expanded and broken low-temperature expandable microspheres and desired level of expanded but not broken high-temperature microspheres, depending on the specifically desired structure of the finally produced foam as well. "[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).

21. Since the molded foam of Lee in view of Ferguson et al is substantially the same as that claimed in instant invention, and is produced by substantially the same process as claimed in instant invention, therefore, the foam of Lee in view of Ferguson et al will intrinsically and necessarily comprise or would be reasonably expected to comprise the properties as claimed in instant invention, including having at least some of the low temperature-expandable microcapsules burst, having values of specific gravity, Asker C hardness and compression set the same as those claimed in instant invention, or being in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 4-5). 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.

22. Lee in view of Ferguson et al do not explicitly recite the use of both styrene-based thermoplastic elastomer and TPV and their weight ratios, and the amount of used microsphere blowing agent in such composition.

23. However,
1) Wang discloses molded foams, including formed by extrusion (col. 6, lines 33-36) formed from a composition comprising blends of TPV and elastic thermoplastic polymers, wherein elastic thermoplastic polymer is a block copolymer of hard and soft segments including styrene block copolymers (col. 1, lines 30-35, 45-60; col. 2, lines 35-37),
wherein the foams are having density of 0.05-0.4 g/cc (col. 1, lines 45-50).
The compositions are foamed using chemical blowing agents or low-boiling hydrocarbons (col. 6, lines 65-67).
The specifically exemplified blends of TPV and elastic thermoplastic polymers comprise 25-30%wt of TPV and 70-75%wt of SBS block copolymer (Tables III-IV, as to instant claim 1).
Wang explicitly teaches that the foams based on such combination of TPV and styrene-based block copolymers are having high elongation at break and good tensile strength (col.10, lines 26-30, Tables III-IV).

2) Gehlsen et al discloses polymer molded foams, including extruded foams, comprising a polymer composition and expandable microspheres (Abstract),
wherein the polymer of the composition comprises styrene block copolymers (col. 7, lines 35-38) and wherein Gehlsen et al teaches that the expandable microspheres are used in amount of 0.1-50 parts by mass based on 100 parts of the polymer resin, and the specific amount use is based upon the desired properties of the foam product: the higher the microsphere concentration, the lower the density of the foam (col. 8, lines 35-43).

24. Since all of Wang, Gehlsen et al and Lee in view of Ferguson et al are related to molded foams produced from polymer compositions comprising styrene-based block copolymer and expandable microspheres, and thereby belong to the same field of endeavor, wherein Wang explicitly shows that addition of as low as 30%wt of TPV to said styrene-based block copolymers leads to producing foams with improved elongation at break and tensile strength, and Gehlsen et al specifies the use of expandable microcapsules in amount of 0.1-50 phr, depending on the desired density of the foam, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Wang, Gehlsen et al and Lee in view of Ferguson et al, and to use, or obvious to try to use the combination of the styrene-based block copolymers with as low as 30%wt of TPV as the component A) in the composition of Lee in view of Ferguson et al, so to further improve elongation at break and tensile strength of the composition of Lee in view of Ferguson et al, and further use the expandable microcapsules in the overall amount of up to 50 phr, so to produce the molded foam of Lee in view of Ferguson et al having very low density, given such is desired, 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

25. Since the molded foam of Lee in view of Ferguson et al, Wang, Gehlsen et al is substantially the same as that claimed in instant invention, and is produced by substantially the same process as claimed in instant invention, therefore, the foam of Lee in view of Ferguson et al, Wang, Gehlsen et al will intrinsically and necessarily comprise or would be reasonably expected to comprise the properties as claimed in instant invention, including having at least some of the low temperature-expandable microcapsules burst, having values of specific gravity, Asker C hardness and compression set the same as those claimed in instant invention, or being in the ranges overlapping with those as claimed in instant invention as well (as to instant claim 4-5). 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.

26. Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 5,939,464) in view of Gehlsen et al (US 6,103,152), Lee (WO2020/076037) and Ferguson et al (US 2004/0131840).
It is noted that while the rejection is made over WO2020/076037 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2021/0340348 is relied upon. All citations to paragraph numbers, etc., below refer to US 2021/0340348.

27. The rejection is adequately set forth on pages 12-20 of an Office action mailed on September 10, 2025 and is incorporated here by reference.

28. With respect to the amended claims 1-3,
1) Wang discloses molded foams, including formed by extrusion (col. 6, lines 33-36), formed from a composition comprising blends of thermoplastic vulcanizate (TPV) and elastic thermoplastic polymers, wherein elastic thermoplastic polymer is a block copolymer of hard and soft segments including styrene block copolymers (col. 1, lines 30-35, 45-60; col. 2, lines 35-37),
wherein the foams are having density of 0.05-0.4 g/cc (col. 1, lines 45-50).
The compositions are foamed using chemical blowing agents or low-boiling hydrocarbons (col. 6, lines 65-67).
The specifically exemplified blends of TPV and elastic thermoplastic polymers comprise 25-30%wt of TPV and 70-75%wt of SBS block copolymer (Tables III-IV, as to instant claim 1).
Wang explicitly teaches that the foams based on such combination of TPV and styrene-based block copolymers are having high elongation at break and good tensile strength (col.10, lines 26-30).

2) Gehlsen et al discloses polymer molded foams, including extruded foams, comprising a polymer composition and expandable microspheres (Abstract),
wherein the polymer of the composition comprises styrene block copolymers (col. 7, lines 35-38) and wherein Gehlsen et al teaches that the expandable microspheres are used in amount of 0.1-50 parts by mass based on 100 parts of the polymer resin, and the specific amount use is based upon the desired properties of the foam product: the higher the microsphere concentration, the lower the density of the foam (col. 8, lines 35-43).
3) Lee discloses an extruded, i.e. molded, foam, such as hose ([0070], [0086]) and a method for making such molded foam by extrusion (claim 12) of a composition comprising:
A) a peroxide-crosslinkable thermoplastic polymer which includes thermoplastic elastomers ([0019], [0011]), specifically styrene-based SBS, SIS or SEBS block copolymers, thermoplastic vulcanizates (TPV) and their combination ([0035]) and
B) thermo-expandable microspheres ([0011]) which encapsulate an expandable hydrocarbon compound ([0037]) having an expansion start temperature (Tstart) of 100-150⁰C ([0065]),
wherein the produced foam has density of 0.28-0.3 g/cc and Shore C hardness of 30-35 (Table 1) and
wherein the extrusion/molding is taking place at a temperature equal or higher than the Tstart of the expandable microspheres (claim 13, as to instant claim 2).
Thus, Lee explicitly teaches that the compositions based the combination of the styrene-based thermoplastic elastomers and thermoplastic vulcanizate can be expanded using the expandable microcapsules as the blowing agent.

4) Ferguson et al discloses high expansion structural foam made from a polymer composition comprising a blowing system comprising:
- a high temperature thermally activated blowing agent in the form of expandable microspheres ([0020]) and
- a low temperature thermally-activated blowing agent in the form of expandable microspheres ([0012]; [0020]),
wherein said unique combination of the high- and low-temperature blowing agents provides for the expandable foam that expands at both the core and the perimeter and has a high degree of expansion ([0014]).
Ferguson et al further teaches that using large amounts of low-temperature thermally-activated microspheres results in large voids cause by thermal breakdown of the low-temperature expandable microspheres. To avoid this problem, high temperature expandable microspheres could be used, however, a certain low amount of low-temperature activated microspheres is required for uniform expansion of the foam; without the low-temperature thermally-activated blowing agent, expansion only occurs in the center of the foam, not at the edge ([0022]).
Thus, Ferguson et al clearly teaches the advantages of using the combination of low-temperature expandable microspheres and high-temperature expandable microspheres.
The weight ratio of the high temperature blowing agent to the low-temperature blowing agent is 1:1 to 7:1 ([0023]), i.e. the low-temperature expandable microspheres are used in amount of 12.5-50%wt based on the combined weight of the low- and high-temperature expandable microspheres (as to instant claim 1).
The polymer expandable composition comprises thermoplastic styrene-based block copolymers SEBS and SBS as well ([0049]).
Based on the teachings of Ferguson et al, it would have been obvious to a one of ordinary skill in the art to choose and use the high temperature thermally activated blowing agent in the form of expandable microspheres having onset/stating temperature of 150⁰C ([0020]) and a low temperature thermally-activated blowing agent in the form of expandable microspheres having onset/starting temperature of about 100⁰C or about 105⁰C ([0020], [0030], [0031]), as well, 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).. See In re Ruff 118 USPQ 343 (CCPA 1958).

29. Since i) the method for forming the foam of Wang in view of Gehlsen et al, Lee and Ferguson et al includes molding at a temperature equal or higher than Tstart of the expandable microspheres (claim 13 of Lee), ii) the expandable particles used in the process of Wang in view of Gehlsen et al, Lee and Ferguson et al are having Tstart of as high as 150⁰C (i.e. high temperature expandable microspheres), therefore, it would have been obvious to a one of ordinary skill in the art to conduct the molding at a temperature of about 150⁰C, so to allow the high temperature expandable microspheres to expand. Given the molding is conducted at a temperature of about 150⁰C, and the low temperature expandable microspheres are having Tstart of as low as about 100⁰C, therefore, molding in an extruder having a rotating shaft at a temperature of as high as 150⁰C will intrinsically and necessarily lead to, or would be reasonably expected to lead to expanding of both the high temperature expandable microspheres and the low temperature expandable microspheres, and further at least partial burst of at least some of the low temperature expandable microspheres 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.
Further, since the method for forming the foam includes molding at a temperature equal or higher than Tstart of the expandable microspheres (claim 13 of Lee), and the level/amount of ruptured low-temperature expandable microspheres depend on the specific molding temperature, it would have been obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the specific temperature of molding, depending on the specific chosen Tstart of the low temperature expandable microspheres and the specific chosen Tstart of the low-temperature expandable microspheres, so to produce the foam having a desired level of expanded and broken low-temperature expandable microspheres and desired level of expanded but not broken high-temperature microspheres, depending on the specifically desired structure of the finally produced foam as well. "[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).
30. Since the molded foam of Wang in view of Gehlsen et al, Lee and Ferguson et al is substantially the same as that claimed in instant invention, and is produced by substantially the same process as claimed in instant invention, therefore, the foam of Wang in view of Gehlsen et al, Lee and Ferguson et al will intrinsically and necessarily comprise or would be reasonably expected to comprise the properties as claimed in instant invention, including having at least some of the low-temperature expandable microspheres burst, having values of specific gravity, Asker C hardness and compression set, that are either the same as those claimed in instant invention, or being in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 1-3). 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.

31. Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 5,939,464) in view of Gehlsen et al (US 6,103,152), Lee (WO2020/076037) and Ferguson et al (US 2004/0131840).
It is noted that while the rejection is made over WO2020/076037 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2021/0340348 is relied upon. All citations to paragraph numbers, etc., below refer to US 2021/0340348.

32. Wang discloses molded foams, and a method for forming said molded foam by extrusion (col. 6, lines 33-36), molded from a composition comprising blends of thermoplastic vulcanizate (TPV) and elastic thermoplastic polymers, wherein elastic thermoplastic polymer is a block copolymer of hard and soft segments including styrene block copolymers (col. 1, lines 30-35, 45-60; col. 2, lines 35-37),
wherein the foams are having density of 0.05-0.4 g/cc (col. 1, lines 45-50).
The compositions are foamed using chemical blowing agents or low-boiling hydrocarbons (col. 6, lines 65-67).
The specifically exemplified blends of TPV and elastic thermoplastic polymers comprise 25-30%wt of TPV and 70-75%wt of SBS block copolymer (Tables III-IV, as to instant claims 4-5).
Wang explicitly teaches that the foams based on such combination of TPV and styrene-based block copolymers are having high elongation at break and good tensile strength (col.10, lines 26-30).

33. It is further noted that instant specification confirms that “dynamically crosslinked thermoplastic elastomer” is the same as thermoplastic vulcanizate TPV (see [0018] of instant specification and as represented below):

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34. Though Wang discloses the use of low boiling hydrocarbons as blowing agents, Wang does not specify said blowing agent being in the form of expandable microcapsules used in amount of 25-50 phr.

35. However,
1) Gehlsen et al discloses polymer molded foams, including extruded foams, comprising a polymer composition and expandable microspheres (Abstract),
wherein the polymer of the composition comprises styrene block copolymers (col. 7, lines 35-38) and wherein Gehlsen et al teaches that the expandable microspheres are used in amount of 0.1-50 parts by mass based on 100 parts of the polymer resin, and the specific amount use is based upon the desired properties of the foam product: the higher the microsphere concentration, the lower the density of the foam (col. 8, lines 35-43).
2) Lee discloses an extruded, i.e. molded, foam, such as hose ([0070], [0086]) and a method for making such molded foam by extrusion (claim 12) of a composition comprising:
A) a peroxide-crosslinkable thermoplastic polymer which includes thermoplastic elastomers ([0019], [0011]), specifically styrene-based SBS, SIS or SEBS block copolymers, thermoplastic vulcanizates (TPV) and their combination ([0035]) and
B) thermo-expandable microspheres ([0011]) which encapsulate an expandable hydrocarbon compound ([0037]) having an expansion start temperature (Tstart) of 100-150⁰C ([0065]),
wherein the produced foam has density of 0.28-0.3 g/cc and Shore C hardness of 30-35 (Table 1) and
wherein the extrusion/molding is taking place at a temperature equal or higher than the Tstart of the expandable microspheres (claim 13, as to instant claim 2).
Thus, Lee explicitly teaches that the compositions based the combination of the styrene-based thermoplastic elastomers and thermoplastic vulcanizate can be expanded using the expandable microcapsules as the blowing agent.

36. Since i) Lee explicitly teaches that the compositions based the combination of the styrene-based thermoplastic elastomers and thermoplastic vulcanizate can be expanded using the expandable microcapsules as the blowing agent to form the molded foam, wherein the extrusion/molding is taking place at a temperature equal or higher than the Tstart of the expandable microspheres and ii) Gehlsen et al teaches that the expandable microspheres are used in amount of 0.1-50 parts by mass based on 100 parts of the polymer resin including styrenic block copolymers, and the specific amount use is based upon the desired properties of the foam product: the higher the microsphere concentration, the lower the density of the foam, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Lee, Gehlsen et al and Wang, and to use, or obvious to try to use the expandable microspheres in amount of up to 50 phr as the blowing agent to form the molded foam of Wang, so to ensure the produced foam is having very low density, given such is desired 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).

37. Though Wang in view of Gehlsen et al and Lee disclose the use of thermos-expandable microspheres having Tstart of 100-150⁰C, Wang in view of Gehlsen et al and Lee do not teach said microspheres comprising both high-temperature expandable and low-temperature expandable microspheres.

38. However, Ferguson et al discloses high expansion structural foam made from a polymer composition comprising a blowing system comprising:
- a high temperature thermally activated blowing agent in the form of expandable microspheres ([0020]) and
- a low temperature thermally-activated blowing agent in the form of expandable microspheres ([0012]; [0020]),
wherein said unique combination of the high- and low-temperature blowing agents provides for the expandable foam that expands at both the core and the perimeter and has a high degree of expansion ([0014]).
Ferguson et al further teaches that using large amounts of low-temperature thermally-activated microspheres results in large voids cause by thermal breakdown of the low-temperature expandable microspheres. To avoid this problem, high temperature expandable microspheres could be used, however, a certain low amount of low-temperature activated microspheres is required for uniform expansion of the foam; without the low-temperature thermally-activated blowing agent, expansion only occurs in the center of the foam, not at the edge ([0022]).
Thus, Ferguson et al clearly teaches the advantages of using the combination of low-temperature expandable microspheres and high-temperature expandable microspheres.
The weight ratio of the high temperature blowing agent to the low-temperature blowing agent is 1:1 to 7:1 ([0023]), i.e. the low-temperature expandable microspheres are used in amount of 12.5-50%wt based on the combined weight of the low- and high-temperature expandable microspheres (as to instant claim 1).
The polymer expandable composition comprises thermoplastic styrene-based block copolymers SEBS and SBS as well ([0049]).
Based on the teachings of Ferguson et al, it would have been obvious to a one of ordinary skill in the art to choose and use the high temperature thermally activated blowing agent in the form of expandable microspheres having onset/stating temperature of 150⁰C ([0020]) and a low temperature thermally-activated blowing agent in the form of expandable microspheres having onset/starting temperature of about 100⁰C or about 105⁰C ([0020], [0030], [0031]), as well, 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).. See In re Ruff 118 USPQ 343 (CCPA 1958).
39. Since Ferguson et al and Wang in view of Gehlsen et al and Lee are related to foams produced from polymeric expandable compositions using thermally-expandable microspheres having expansion temperature of 100-150⁰C as blowing agent, wherein such compositions comprise styrene-based thermoplastic elastomers, and thereby belong to the same field of endeavor, wherein Ferguson et al clearly teaches the advantages of using both the low-temperature expandable microspheres (such as having Tstart of about 100⁰C) and a high-temperature expandable microspheres (such as having Tstart of about 150⁰C ([0020]) to produce the foam having uniform expansion in both the core and edges, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Ferguson et al and Wang in view of Gehlsen et al and Lee, and to use, or obvious to try to use the combination of the low-temperature expandable microspheres and a high-temperature expandable microspheres, at a weight ratio as taught by Ferguson et al as the thermally-expandable microspheres blowing agent to make the foam of Wang in view of Gehlsen et al and Lee, so to ensure the foam of Wang in view of Gehlsen et al and Lee is uniform, expanded at both the core and the edge, and having at least some of the microspheres that are not burst, and since it would have been obvious to choose material based on its suitability, 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

40. Since i) the method for forming the foam of Wang in view of Gehlsen et al, Lee and Ferguson et al includes molding at a temperature equal or higher than Tstart of the expandable microspheres (claim 13 of Lee), ii) the expandable particles used in the process of Wang in view of Gehlsen et al, Lee and Ferguson et al are having Tstart of as high as 150⁰C (i.e. high temperature expandable microspheres), therefore, it would have been obvious to a one of ordinary skill in the art to conduct the molding at a temperature of about 150⁰C, so to allow the high temperature expandable microspheres to expand. Given the molding is conducted at a temperature of about 150⁰C, and the low temperature expandable microspheres are having Tstart of as low as about 100⁰C, therefore, molding in an extruder having a rotating shaft at a temperature of as high as 150⁰C will intrinsically and necessarily lead to, or would be reasonably expected to lead to expanding of both the high temperature expandable microspheres and the low temperature expandable microspheres, and further at least partial burst of at least some of the low temperature expandable microspheres 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.
Further, since the method for forming the foam includes molding at a temperature equal or higher than Tstart of the expandable microspheres (claim 13 of Lee), and the level/amount of ruptured low-temperature expandable microspheres depend on the specific molding temperature, it would have been obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the specific temperature of molding, depending on the specific chosen Tstart of the low temperature expandable microspheres and the specific chosen Tstart of the low-temperature expandable microspheres, so to produce the foam having a desired level of expanded and broken low-temperature expandable microspheres and desired level of expanded but not broken high-temperature microspheres, depending on the specifically desired structure of the finally produced foam as well. "[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).

41. Since the molded foam of Wang in view of Gehlsen et al, Lee and Ferguson et al is substantially the same as that claimed in instant invention, and is produced by substantially the same process as claimed in instant invention, therefore, the foam of Wang in view of Gehlsen et al, Lee and Ferguson et al will intrinsically and necessarily comprise or would be reasonably expected to comprise the properties as claimed in instant invention, including having at least some of the low-temperature expandable microspheres burst, having values of specific gravity, Asker C hardness and compression set, that are either the same as those claimed in instant invention, or being in the ranges overlapping with those as claimed in instant invention as well (as to instant claim 4-5). 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
42. Applicant's arguments filed on December 10, 2025 have been fully considered.

43. With respect to Applicant’s arguments regarding the rejections of Claims 2-3 under 35 U.S.C. 103 as being unpatentable over Lee (WO2020/076037) in view of Ferguson et al (US 2004/0131840); Claims 1-3 under 35 U.S.C. 103 as being unpatentable over Lee (WO2020/076037) in view of Ferguson et al (US 2004/0131840), in further view of Wang (US 5,939,464) and Gehlsen et al (US 6,103,152) and Claims 1-3 under 35 U.S.C. 103 as being unpatentable over Wang (US 5,939,464) in view of Gehlsen et al (US 6,103,152), Lee (WO2020/076037) and Ferguson et al (US 2004/0131840), it is noted that:

1) 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).

2) Lee discloses an extruded, i.e. molded, foam, and a method for making such molded foam by extrusion (claim 12) of a composition comprising:
A) a combination of a peroxide-crosslinkable thermoplastic polymer which includes thermoplastic elastomers specifically styrene-based SBS, SIS or SEBS block copolymers, and thermoplastic vulcanizates (TPV) and
B) thermo-expandable microspheres ([0011]) which encapsulate an expandable hydrocarbon compound ([0037]) having an expansion start temperature (Tstart) of 100-150⁰C ([0065]),
wherein the produced foam has density of 0.28-0.3 g/cc and Shore C hardness of 30-35 (Table 1, as to instant claim 3) and
wherein the extrusion is taking place at a temperature equal or higher than the Tstart of the expandable microspheres (claim 13, as to instant claim 2).

3) Though Lee does not teach said microspheres comprising both high-temperature expandable and low-temperature expandable microspheres, the secondary reference of Ferguson et al was applied for the teachings of that.

4) Thus, Ferguson et al discloses high expansion structural foam made from a polymer composition using a blowing system comprising:
- a high temperature thermally activated blowing agent in the form of expandable microspheres ([0020]) and
- a low temperature thermally-activated blowing agent in the form of expandable microspheres ([0012]; [0020]),
wherein said unique combination of the high- and low-temperature blowing agents provides for the expandable foam that expands at both the core and the perimeter and has a high degree of expansion ([0014]).
Ferguson et al further teaches that using large amounts of low-temperature thermally-activated microspheres results in large voids caused by thermal breakdown of the low-temperature expandable microspheres. To avoid this problem, high temperature expandable microspheres could be used, however, a certain low amount of low-temperature activated microspheres is required for uniform expansion of the foam; without the low-temperature thermally-activated blowing agent, expansion only occurs in the center of the foam, not at the edge ([0022]).
Thus, Ferguson et al clearly teaches the advantages of using the combination of low-temperature expandable microspheres and high-temperature expandable microspheres.

5) Since both Ferguson et al and Lee are related to foams produced from polymeric expandable compositions using thermally-expandable microspheres having expansion temperature of 100-150⁰C as blowing agent, wherein such compositions comprise styrene-based thermoplastic elastomers, and thereby belong to the same field of endeavor, wherein Ferguson et al clearly teaches the advantages of using both the low-temperature expandable microspheres (such as having Tstart of about 100⁰C) and a high-temperature expandable microspheres (such as having Tstart of about 150⁰C) ([0020]) to produce the foam having uniform expansion, which expands at both the core and the perimeter with at least some of the microspheres being not broken/burst, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Lee and Ferguson et al, and to use, or obvious to try to use the combination of the low-temperature expandable microspheres (such as having Tstart of about 100⁰C) and a high-temperature expandable microspheres (such as having Tstart of about 150⁰C) as taught by Ferguson et al as the thermally-expandable microspheres component B) to make the foam of Lee, so to ensure the foam of Lee is uniform, expanded at both the core and the edge, and having at least some of the microspheres that are not burst, and since it would have been obvious to choose material based on its suitability, 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

6) Since i) the method for forming the foam of Lee in view of Ferguson et al includes molding at a temperature equal or higher than Tstart of the expandable microspheres (claim 13 of Lee), ii) the expandable particles used in the process of Lee in view of Ferguson et al are having Tstart of as high as 150⁰C (i.e. high temperature expandable microspheres), therefore, it would have been obvious to a one of ordinary skill in the art to conduct the molding at a temperature of about 150⁰C, so to allow the high temperature expandable microspheres to expand. Given the molding is conducted at a temperature of about 150⁰C, and the low temperature expandable microspheres are having Tstart of as low as about 100⁰C, therefore, molding in an extruder having a rotating shaft at a temperature of as high as 150⁰C will intrinsically and necessarily lead to, or would be reasonably expected to lead to expanding of both the high temperature expandable microspheres and the low temperature expandable microspheres, and further at least partial burst of at least some of the low temperature expandable microspheres 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.

7) In paragraph [0037], to which Applicant is referring to, Lee recites that if the thermos-expandable microspheres rupture during expansion, a gas escapes during molding and little or no expansion occurs. However, in that paragraph Lee refers to a situation when substantially all, or at least a majority, of the microspheres being ruptured, so that gas can escape and being lost, thus preventing expansion. However, Lee does not require that none of microspheres are ruptured, and thereby does not teach away from at least some, or even few of the microspheres being ruptured, which may probably take place anyway during molding process such as extrusion using rotating shafts/screws.

8) On the other hand, as discussed above, Ferguson et al clearly teaches the advantages of using the combination of low-temperature expandable microspheres and high-temperature expandable microspheres for making molded foams having both center and the edge of the foam being uniformly expanded; and without the low-temperature thermally-activated blowing agent, expansion only occurs in the center of the foam, not at the edge ([0022]).
Ferguson et al does not limit the use of the combination of low-temperature expandable microspheres and high-temperature expandable microspheres to thermosettable compositions like epoxy; rather in paragraph [0049] Ferguson et al teaches that rubbers including styrene-butadiene, and in general thermoplastic block copolymers can be used as well. Ferguson et al recites that thermoplastic block copolymers are one particularly preferred class of rubber for use in the present invention ([0049]), as presented below (p. 6, right column of [0049]):

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Therefore, both Ferguson et al and Lee teach the foams being produced from thermoplastic copolymers using thermally expandable microspheres, and there by belong to the same field of endeavor as well.

9) Since the molded foam of Lee in view of Ferguson et al is substantially the same as that claimed in instant invention, and is produced by substantially the same process as claimed in instant invention, therefore, the foam of Lee in view of Ferguson et al will intrinsically and necessarily comprise or would be reasonably expected to comprise the properties as claimed in instant invention, including having at least some of the low-temperature expandable microspheres burst, having values of specific gravity, Asker C hardness and compression set, that are either the same as those claimed in instant invention, or being in the ranges overlapping with those as claimed in instant invention 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.

10) Since the method for forming the foam of Lee in view of Ferguson et al includes molding at a temperature equal or higher than Tstart of the expandable microspheres (claim 13 of Lee), and the level/amount of ruptured low-temperature expandable microspheres depend on the specific molding temperature, therefore, it would have been obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the specific temperature of molding, so to produce the foam having a desired level of expansion, desired (e.g. minor) level broken low-temperature expandable microspheres and desired level of expanded but not broken high-temperature microspheres, depending on the specifically desired structure of the finally produced foam as well. "[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).

11) It is further noted that Ferguson et al (US 2004/0131840), Wang (US 5,939,464) and Gehlsen et al (US 6,103,152) are secondary references, each of which was applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).

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 [phone]. The examiner can normally be reached 9am-5pm EST M-F.
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.

/IRINA KRYLOVA/Primary Examiner, Art Unit 1764

Prosecution Timeline

• Mar 14, 2023: Application Filed
• Sep 05, 2025: Non-Final Rejection — §103, §112
• Dec 10, 2025: Response Filed
• Feb 12, 2026: Final Rejection — §103, §112 (current)