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 .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 3, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on June 3, 2026 has been fully considered. The amendment to instant claim 1 and addition of new claim 16 are acknowledged. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
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.
4. Claims 1, 3-10, 16 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 Yu et al (WO 2020/000338).
It is noted that while the rejection is made over WO 2020/000338 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 11,866,567 is relied upon. All citations to paragraph numbers, etc., below refer to US 11,866,567.
5. Yu et al discloses a sintered foam made from a composition comprising:
A) from 20%wt (col. 10, lines 53-55) of a silane-functionalized ethylene/ alpha -olefin multi-block interpolymer containing 0.5%wt of silane, density of 0.865-0.900 g/cc (col. 8, lines 30-34, 55-58) and a melt index of 0.05-1 g/10 min or 2-5 g/10 min (col. 9, lines 24-28);
B) 30-80%wt (col. 13, lines 10-15, as to instant claims 1, 9-10, 16) of an ethylene-alpha olefin multi-block interpolymer having density of 0.86-0.88 g/cc (col. 11, lines 60-62; col. 12, lines 50-54) and a melt index of 0.1-1 g/10 min (col. 12, lines 13-15);
wherein the sintered foam is having a gel content of 50-80% (col. 18, lines 20-25, as to instant claim 4) and rebound of 70-90% (col. 18, lines 40-42, as to instant claims 3, 8).
6. Yu et al further teaches that the percent gel increases with increasing crosslinking levels (col. 21, lines 24-25). Since the foam of Yu et al is having gel content of as high as 80%, therefore, said foam will inherently be cross-linked (as to instant claim 4).
“Products of identical chemical composition cannot have mutually exclusive properties” (See MPEP 2112.01).
7. As to instant claims 6-7, the foam is formed by impregnating pellets comprising the ethylene/alpha olefin multi-block interpolymer composition with a blowing agent at a temperature of 100-135⁰C and pressure 15-30 MPa (col. 16, lines 40-56).
It is further noted that claims 5-7 are product-by-process claims. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
8. Though Yu et al does not explicitly and with sufficient specificity, such as by the way of a specific example, recite the foam having all the claimed properties, including gel content, rebound and elongation, since the foam of Yu et al is essentially the same as that claimed in instant invention, i.e. made from a composition comprising 30-80%wt of the ethylene/alpha olefin multi-block interpolymer having density and melt index as claimed in instant invention, therefore, the foam made from the composition of Yu et al will inherently have, or would be reasonably expected to have the properties, including gel content, rebound and elongation, that are either the same as claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention 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 foam, if not taught, may be very well met by the foam of Yu et al, since the foam of Yu et al is essentially the same as applicants’ foam, 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.
9. In the alternative, all ranges in the foam and composition of Yu et al are overlapping with the corresponding ranges of those as claimed in instant invention.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
10. Claims 1, 3-10, 16 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 Prieto et al (US 2006/0199872).
11. Prieto et al discloses foams made from a composition comprising ethylene/alpha olefin multi-block interpolymers, cross-linking agents and blowing agents (Abstract, [0112]), wherein the ethylene-alpha olefin multi-block copolymers are having density of 0.855-0.935 g/cc ([0057]) and a melt index (MI) of 0.01-1 g/10 min ([0078]).
The foams are cross-linked to a gel content of 40-95% ([0114], as to instant claim 4); the cross-linking is performed by using peroxides ([0129]-[0130], as to instant claim 5).
12. It is noted that instant claims 5-7 are product-by-process claims. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
13. The specifically exemplified ethylene-alpha olefin multi-block copolymers are having density of 0.8649 g/cc and MI of 0.9 g/10 min (example 19g in Table 9, [267], as to instant claims 1, 9-10, 16) and density of 0.8654 g/cc and MI of 1 g/10 min (example 19h of Table 9, [0267]); density of 0.866 g/cc and MI of 1 g/10 min (example, 19l Table 10).
14. Though Prieto et al does not explicitly recite the properties, specifically rebound and elongation, of the foam made from examples 19g, 19h, 19l having density of about 0.865-0.866 g/cc and MI of 0.9-1 g/10 min, since the foams of Prieto et al produced from the ethylene-alpha olefin multi-block interpolymers having said properties are essentially the same as those claimed in instant invention, therefore, the foams of Prieto et al made from said compositions will inherently have the properties including rebound and elongation as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since, as evident from the specific examples of Prieto et al, rebound values of the foam increase with the decrease of the density of the used interpolymers; e.g. the foam made of the polymer having density of 0.892 g/cc is having rebound of 56.4% and the foam made from the interpolymer having density of 0.877 is having rebound of 58.8% (as shown in Table 18), therefore, the foams made from the interpolymer having density of as low as 0.865 g/cc would be expected to have rebound higher than 58.8% and such as of at least 70% as well (as to instant claims 3, 8, 16). It is further noted that all foams exemplified in Prieto et al are having elongation of higher than 200% (Tables 17-18 of Prieto et al). 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 foam, if not taught, may be very well met by the foam of Prieto et al, since the foam of Prieto et al is essentially the same as applicants’ foam, 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.
15. In the alternative, all ranges in the foam and composition of Prieto et al are overlapping with the corresponding ranges of those as claimed in instant invention.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
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.
16. Claims 1, 3-10, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Prieto et al (US 2006/0199872) in view of Kajihara et al (US 2009/0249645).
17. The discussion with respect to Prieto et al (US 2006/0199872) set forth in paragraphs 10-15 above, is incorporated here by reference.
18. Though Prieto et al does not explicitly recite the conditions for making the foam, and the foam made from ethylene copolymers having rebound of at least 70%,
Kajihara et al discloses a foamed molded article produced from a composition comprising:
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]).
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 6-7, the foamed article is produced by subjecting the composition to foam molding at a temperature of 100-130⁰C and pressure of 150 kg/cm2 (15 MPa) ([0161], [0307]).
19. Since the foams from ethylene copolymers having low density of 0.860-0.872 g/cc are produced by foaming at a temperature of 100-130⁰C and a pressure of 15 MPa, and provide a rebound of more than 70%, as shown by Kajihara et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kajihara et al and Prieto et al, and to conduct, or obvious to try to conduct the foaming of the composition of Prieto et al comprising ethylene-alpha olefin multi-block interpolymers with density of about 0.865 g/cc, at a temperature and pressure as taught by Kajihara et al, so to ensure such produced foams are having the desired high rebound as well, and since it would be obvious to apply such process conditions to form the foam of Prieto et al, thereby arriving at the present invention. 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 the foams of Prieto et al in view of Kajihara et al are produced from the ethylene-alpha olefin multi-block interpolymers that are essentially the same as those claimed in instant invention, further under the same foaming conditions as those claimed and disclosed in instant invention, therefore, the foams of Prieto et al in view of Kajihara et al will intrinsically and necessarily have the properties including rebound and elongation as those claimed in instant invention, or having 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
21. Applicant's arguments filed on June 3, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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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
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