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 January 27, 2026 has been fully considered. The amendment to instant claims 1, 9-10 is acknowledged. Specifically, claim 1 has been amended to recite the polyolefin elastomer having density of about 0.862-about 0.880 g/cc and MI of not greater than about 1 g/10 min. In light of the amendment, 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.
Election/Restrictions
3. Applicant's election with traverse of Group I, claims 10 in the reply filed on January 27, 2026 is acknowledged. The traversal is on the ground(s) that the restrictions are optional and there is no serious burden on Examiner to examine all claims, referring to MPEP § 803. This is not found persuasive because the restriction was made based on unity of invention, PCT Rule 13.1 MPEP §1850, with respect to which explanation of serious burden is not required.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 27, 2026.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kajihara et al (US 2009/0249645).
5. The rejection is adequately set forth on pages 6-9 of an Office action mailed on November 25, 2025 and is incorporated here by reference.
6. With respect to the amended claims 1, 9-10,
Kajihara et al discloses a foamed molded article produced from a composition comprising:
A) 20-100 pbw ([0131]) an ethylene-alpha olefin copolymer having:
- density of 0.855-0.910 g/cc ([0048]) and
- MFR of 0.01-200 g/10 min, preferably 0.1-10 g/10 min (Abstract, [0050], [0125]) and
B) optionally 0-80 pbw ([0131]) of ethylene-polar monomer copolymer (B1) having MFR of as high as 500 g/10 min ([0129]) or an ethylene-alpha olefin-non-conjugated polyene copolymer (B2) ([0178]).
The specifically exemplified foams are produced from ethylene-1-octene copolymer having density of 0.872 g/cc and MFR of 1.1 g/10 min ([0277]) and is having rebound resilience of 73% (Example 10 in Table 3) and from ethylene-1-butene copolymer having density of 0.860 g/cc and MFR of 0.48 g/10 min and is having rebound resilience of 78% (Example 9 in Table 3) (as to instant claims 3 and 8).
It is Examiner’s position that the value of density of 0.860 g/cc of the ethylene-1-butene copolymer of Kajihara et al is within (or very close to) the range of about 0.862 g/cc as claimed in instant invention.
It is Examiner’s position that the value of MFR of 1.1 g/10 min of the ethylene-1-octene-copolymer of Kajihara et al is within (or very close to) the range of MFR about 1 g/10min as claimed in instant invention.
It is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
7. It is further noted that Kajihara et al shows ethylene-1-octene copolymer having density of 0.871 g/cc and MFR of 0.5 g/10 min ([0280], Example 6, Table 1).
8. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kajihara et al (US 2009/0249645) in view of Takimoto et al (US 6,197,841).
9. The rejection is adequately set forth on pages 9-11 of an Office action mailed on November 25, 2025 and is incorporated here by reference.
10. With respect to the amended claims 1, 9-10,
Kajihara et al discloses a foamed molded article produced from a composition comprising:
A) 20-100 pbw ([0131]) an ethylene-alpha olefin copolymer having:
- density of 0.855-0.910 g/cc ([0048]) and
- MFR of 0.01-200 g/10 min, preferably 0.1-10 g/10 min (Abstract, [0050], [0125]) and
B) optionally 0-80 pbw ([0131]) of ethylene-polar monomer copolymer (B1) having MFR of as high as 500 g/10 min ([0129]) or an ethylene-alpha olefin-non-conjugated polyene copolymer (B2) ([0178]).
The specifically exemplified foams are produced from ethylene-1-octene copolymer having density of 0.872 g/cc and MFR of 1.1 g/10 min ([0277]) and is having rebound resilience of 73% (Example 10 in Table 3) and from ethylene-1-butene copolymer having density of 0.860 g/cc and MFR of 0.48 g/10 min and is having rebound resilience of 78% (Example 9 in Table 3) (as to instant claims 3 and 8).
It is Examiner’s position that the value of density of 0.860 g/cc of the ethylene-1-butene copolymer of Kajihara et al is within (or very close to) the range of about 0.862 g/cc as claimed in instant invention.
It is Examiner’s position that the value of MFR of 1.1 g/10 min of the ethylene-1-octene-copolymer of Kajihara et al is within (or very close to) the range of MFR about 1 g/10min as claimed in instant invention.
It is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
11. It is further noted that Kajihara et al shows ethylene-1-octene copolymer having density of 0.871 g/cc and MFR of 0.5 g/10 min ([0280], Example 6, Table 1).
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
12. Claims 1-2, 9-10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kajihara et al (US 2009/0249645).
13. Kajihara et al discloses a foamed molded article produced from a composition comprising:
A) 20-100 pbw ([0131]) an ethylene-alpha olefin copolymer having:
- density of 0.855-0.910 g/cc ([0048]) and
- MFR of 0.01-200 g/10 min, preferably 0.1-10 g/10 min (Abstract, [0050], [0125]) and
B) optionally 0-80 pbw ([0131]) of ethylene-polar monomer copolymer (B1) having MFR of as high as 500 g/10 min ([0129]) or an ethylene-alpha olefin-non-conjugated polyene copolymer (B2) ([0178]).
The specifically exemplified foams are produced from ethylene-1-octene copolymer
having density of 0.871 g/cc and MFR of 0.5 g/10 min ([0280], Example 6, Table 1, as to instant claims 1-2, 9-10).
14. Though Kajihara et al does not explicitly recite the ethylene-alpha olefin copolymer, specifically ethylene-1-octene copolymer as a polyolefin elastomer and a rebound resilience of the foamed article, since i) Kajihara et al recites the composition as a thermoplastic elastomer composition, wherein the elastomer is obtained by dynamically cross-linking the ethylenic copolymer ([0034]); ii) the used ethylene-alpha olefin copolymers are the same ethylene-octene copolymers, having low density of as low as 0.860 g/cc, which are the same as claimed and disclosed in instant invention (instant claim 2 and col. 6, lines 5-15 of instant specification), and are capable of being crosslinked, therefore, the ethylene-alpha olefin copolymers of component A) will inherently be, at least partially, elastomeric, i.e. being polyolefin elastomers as well.
Since the foamed articles of Kajihara et al are produced from the same ethylene-1-octene copolymers, having the same density and MFR, as claimed in instant invention, therefore, said foamed articles of Kajihara et al will inherently comprise, or alternatively would be reasonably expected to comprise a rebound as claimed in instant invention, and being at least partially high energy return foams as well.
The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed compositions , if not taught, may be very well met by the compositions of Kajihara et al, since the compositions of Kajihara et al are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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
15. Applicant's arguments filed on January 27, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
16. In addition, it is noted that instant claims are silent with respect to any elongation values of the foam, as argued by Applicant. Further, Takimoto et al (US 6,197,841) is a secondary reference, 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 (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