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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2008/0161438 to Wang et al. (hereinafter Wang) in view of US 2019/0071570 to Cocquet et al. (hereinafter Cocquet).
Regarding Claims 1 and 14 – 19. Wang teaches a foam prepared with a crosslinking agent [0005], i.e. a crosslinked foam.
The crosslinked foam comprises:
about 50 to about 98 weight percent, or about 70 to about 90 weight percent, of an ethylene polymer which may be ethylene vinyl acetate (EVA) [0029]; and
about 0.1 to about 20 weight percent of a thermoplastic elastomer [0029], wherein the thermoplastic elastomer may correspond to a copolyether amide comprising polyamide segments/blocks and polyether segments/blocks [0021].
Wang is silent regarding the density of the foam produced. However, Cocquet also teaches a foam comprising a copolymer containing polyamide and polyether blocks [0020], which may also further comprise an ethylene vinyl acetate copolymer [0092]. The foam may be prepared to have a density as low as 50 kg/m3 [0098]. Wang and Cocquet are analogous art as they are from the same field of endeavor, namely copolymer foams. Before the effective filing date, it would have been obvious to prepare the foam of Wang with a density as low as 50 kg/m3. The motivation would have been that it has been held that Cocquet discloses this range to be a suitable density range for foams which are ultimately used in applications such as footwear, railway pads, and other industrial applications [0098] – [0104], which are applications also envisioned for the foams of Wang [0034].
Wang is silent with respect to the rebound resilience of the crosslinked foam according to the standard ISO 8307:2007. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Wang, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a crosslinked foam having a rebound resilience according to the standard ISO 8307:2007 greater than or equal to 50%, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claims 2, 7, 8, and 20. Wang teaches the crosslinked foam according to Claim 1 but is silent with respect to the mass ratio of the polyamide blocks relative the polyether blocks, as well as the specific compounds on which each of these blocks is based. However, Cocquet also teaches a foam comprising a copolymer containing polyamide and polyether blocks. The mass ratio of the polyamide blocks relative to the polyether blocks is from 0.3 to 0.6 [0020]. The polyamide blocks are preferably based on PA 6, PA 11, PA 12, PA 6.10, PA 10.10, PA 10.12, or mixtures thereof [0062]. The polyether blocks are particular preferably based on polyethylene glycol or polytetramethylene ether glycol [0073] – [0081]. This copolymer also preferably has an instant hardness of less than or equal to 40 D [0089]. Wang and Cocquet are analogous art as they are from the same field of endeavor, namely copolymer foams. Before the effective filing date, it would have been obvious to select a PEBA copolymer having the mass ratio of the polyamide blocks relative to the polyether blocks, as well polyamide and polyether blocks based on the polyamide and polyether compounds, as disclosed by Cocquet as the PEBA copolymer in the foam of Wang. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Cocquet shows that such PEBA copolymers are known in the art to be suitable for the production of copolymer foams.
Regarding Claim 3. Wang teaches the crosslinked foam according to Claim 1 comprises about 0.1 to 10 weight percent activator and 0.0001 to about 10 weight percent one or more other additives [0029], corresponding to about 0.1001 to about 20 weight percent additives.
Regarding Claims 4 and 5. Wang teaches the crosslinked foam according to Claim 1 which may comprise about 50 to about 98 weight percent ethylene polymer. About 60 to about 90 weight% of this component may be ethylene vinyl acetate (EVA). The remainder may be an additional ethylene copolymer [0029]. The additional ethylene copolymer may be then be calculated to correspond to 5 to 39.2 weight precent of the crosslinked foam.
Suitable ethylene copolymers are ethylene acid copolymers and ionomers [0012] – [0015], corresponding to polyethylene/polyolefin copolymers which are functionalized with acid compounds.
Regarding Claim 6. Wang teaches the crosslinked foam according to Claim 1. Neither Wang nor the instant claims require the presence of thermoplastic elastomeric polymer (d). Thus, limitations direct to thermoplastic elastomeric polymer (d) do not further limit embodiments in which this component is not present.
Regarding Claim 9. Wang teaches the crosslinked foam according to Claim 1 wherein the number average mass of the polyamide blocks is between 300 and 15,000 [0021].
Wang further teaches the number average mass of the polyether blocks is less than or equal to 6,000 [0021]. While this range is not identical to the claimed range of between 100 and 3,000 g/mol, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 10. Wang teaches a process for preparing the crosslinked foam of Claim 1 comprising providing a mixture comprising:
about 50 to about 98 weight percent of an ethylene polymer which may be ethylene vinyl acetate (EVA) [0029], corresponding to instantly claimed copolymer (a);
about 0.1 to about 20 weight percent of a thermoplastic elastomer [0029], wherein the thermoplastic elastomer may correspond to a copolyether amide comprising polyamide segments/blocks and polyether segments/blocks [0021] and thus corresponds to instantly claimed copolymer (b);
to about 2 weight percent crosslinking agents [0029];
about 0.5 to about 10 weight percent blowing/foaming agent [0029]; and
0.0001 to 10% one or more additives [0029].
The mixture may then be shaped by injection molding, compression molding, or extrusion. The mixture is subsequently foamed [0030] – [0033].
Regarding Claim 11. Wang teaches a foam obtained by the process of Claim 10 [0029] – [0033].
Regarding Claims 12 and 13. Wang teaches an automotive seat, i.e. a motor vehicle part article, comprising an element consisting of the foam of Claim 1 [0034].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 –20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 19 of copending Application No. 18/245,201 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
The claims of Application No. 18/245,201 differ from the instant claims in that they do not expressly set forth the density and/or rebound resilience of the obtained foam. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the claims of Application No. 18/245,201 set forth a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a crosslinked foam having a density and rebound resilience according to the standard ISO 8307:2007 in the instantly claimed ranges, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed February 10, 2026 have been fully considered. The Office responds as follows:
Claim Objections
The Office agrees that the amendments to the claims overcome all outstanding claim objections. Accordingly, all claim objections have been withdrawn.
35 U.S.C. 112
The Office agrees that the amendments to the claims overcome all outstanding rejections under 35 U.S.C. 112(b). Accordingly, all outstanding rejections under 35 U.S.C. 112(b) have been withdrawn. However, no amendment or argument has been made in response to the outstanding rejection of Claim 11 under 35 U.S.C. 112(d). This rejection has consequently been maintained.
35 U.S.C. 102, 103
The Office agrees that Wang is silent with respect to the density of the disclosed crosslinked foams. The reference is then no longer suitably relied upon to anticipate the claims, which now require the crosslinked foam have a density of less than or equal to 200 kg/m3. The rejection of Claims 1, 3 – 6, and 10 – 13 under 35 U.S.C. 102 in view of Wang has consequently been withdrawn.
A. In response to applicant’s argument that density and rebound resilience are competing properties
Applicant argues that there is no technical basis to assume that Wang’s disclosure would necessarily produce the claimed combination of a density of less than 200 kg/m3 and a rebound resilience of less than or equal to 50%. However, the Office respectfully submits that Claim 1 is now rejected under 35 U.S.C. 103 in view of a combination of Wang with Cocquet. While Wang does not provide a general teaching of the density of the foams disclosed, Cocquet teaches foams based on the same copolymers disclosed by Wang may be prepared to have densities as low as 50 kg/m3 [0098]. It is consequently the Office’s position that it would have been obvious to prepare the foam of Wang with a density as low as 50 kg/m3, for the reasons detailed in the new grounds of rejection under 35 U.S.C. 103 above.
This modification of Wang results in a foam which is prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a crosslinked foam having a rebound resilience according to the standard ISO 8307:2007 greater than or equal to 50%, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
B. In response to applicant’s argument that Wang does not provide a basis for inherency
Applicant argues that Wang is silent regarding rebound resilience and density. However, it is the Office’s position that a crosslinked foam having a rebound resilience and density in the instantly claimed ranges would be reasonably expected when Wang is combined with Cocquet in the manner proposed (see previous section A.)
Applicant additionally argues that Wang broadly lists copolyetheramide as one among many elastomers and provides no specific examples using PEBA and no disclosure of polyamide-to-polyether block ratios, block molecular weights. However, when a species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex part A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (MPEP 2131) Thus, the comprehensiveness of the list of possible elastomers including PEBA does not negate the fact that PEBA is specifically taught by Wang. Additionally, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123)
With specific respect to polyamide-to-polyether block ratios and block molecular weights, these limitations presented in the dependent claims are met by secondary reference Cocquet in the present and outstanding rejections.
Applicant also argues that Wang does not identify rebound resilience at a low density as a problem or target or recognize foamability limits associated with PEBA content. In response, it has been held that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (MPEP 2144) Thus, it is not necessary for Wang or Cocquet to have the same objective of achieving rebound resilience at a low density to render obvious the instant claimed. The Office maintains the position that a crosslinked foam having a density and rebound resilience in the instantly claimed ranges would flow naturally from the proposed combination of Wang with Cocquet for the reasons detailed in the rejection of independent Claim 1 set forth in the present Office action under 35 U.S.C. 103.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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