DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on February 11, 2026 has been fully considered. The amendment to instant claim 1 and addition of new claims 15-21 are acknowledged. Specifically, claim 1 has been amended to recite the polyolefin interpolymer being an ethylene/alpha olefin multi-block interpolymer. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
Election/Restrictions
3. Newly submitted claims 16-21 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the newly added claims 16-20 are related to a method for producing one or more polymer beads, similar to previously withdrawn method claims 6-11; the newly added claim 21 is dependent on the withdrawn claim 13.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 16-21 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
4. Claims 1, 3-5, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hurley et al (US 5,883,145) in view of Prieto et al (US 2006/0199872).
5. Hurley et al discloses a cross-linked polymeric foam structure in the form of foam particle or foam beads (col. 11, line 65-col. 12, line 3), made of polyolefin copolymers comprising ethylene polymerized with alpha-unsaturated C3-20 olefinic comonomer (Abstract, col. 6, line 55-col. 7, line 18),
wherein the beads are cross-linked to a gel content of as high as about 95% (col. 10, lines 63-66, as to instant claims 1, 15).
6. The polyolefin composition is silane grafted (col. 9, lines 15-48, col. 10, lines 1-6, as to instant claim 3); Example 9 shows the use of silane-grafted ethylene-butene copolymer used in amount of 100 pbw (col. 22, lines 60-65, claims 13, 25, 19; as to instant claim 3).
7. Though Hurley et al does not explicitly teach the ethylene-alpha olefin copolymers as being ethylene/alpha olefin multiblock interpolymers,
Prieto et al discloses foams in the form of beads ([0113]) produced from ethylene/alpha olefin copolymers which are specifically cited as being multi-block interpolymers (Abstract; [0037]), which are crosslinked ([0126]) and further grafted with silane ([0142]-[0145]).
8. Since both Prieto et al and Hurley et al are related to cross-linked foam beads produced from ethylene-alpha olefin copolymers, including those grafted with silane, and thereby belong to the same field of endeavor, wherein Prieto et al discloses said ethylene/alpha olefin copolymers as being multi-block interpolymers, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Prieto et al and Hurley et al, and to choose and use, or obvious to try to use the ethylene/alpha olefin multiblock copolymers of Prieto et al as the ethylene/alpha olefin copolymers in the foam beads of Hurley et al, including for silane grafting those, since it would have been obvious to choose material based on its suitability (as to instant claims 1 and 3). 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).
9. As to instant claim 4, the silane-grafted polyolefin resin is having silane-graft portion of up to 6 percent (claim 13).
10. As to instant claim 5, the particle composition is crosslinked prior to expansion (col. 12, lines 1-5; col. 3, lines 1-7, 20-36).
11. Based on the teachings of Hurley et al in view of Prieto et al, it would have been obvious to a one of ordinary skill in the art to choose and use, or obvious to try to use the silane-grafted ethylene-alpha olefin multi-block interpolymers having silane graft content of up to 6% as the polyolefin interpolymer to form foam composition in the form of foam beads, and further to conduct the step of cross-linking the composition to a gel content of as high as 95% before expanding the composition as well. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
12. Since the foam in the form of foam beads of Hurley et al in view of Prieto et al is made of silane-grafted ethylene/alpha olefin multi-block interpolymers, having silane graft content of as high as 6%, and is produced by cross-linking to a gel content of as high as about 95% first, followed by foaming, which composition and process steps are the same as those claimed, disclosed and exemplified in instant invention (see Table 2 of instant specification), therefore, the foam beads of Hurley et al in view of Prieto et al will intrinsically and necessarily have, or would be reasonably expected to have tan delta at 1 rad/s having values the same as claimed in instant invention, or values 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.
Response to Arguments
13. Applicant's arguments filed on February 11, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764