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 .
Election/Restrictions
Applicant's election with traverse of Group I. in the reply filed on 6/24/2026 is acknowledged. The traversal is on the ground(s) that each of the features of the various groups have not been shown to fail to make a contribution over the cited reference. This is not found persuasive because the special technical feature has been shown to not make a contribution over the art, and the extra address alluded to on reply is not required for requirement.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5 and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected grouping of invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/24/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 defines the functionalizing agent as an adhesive, and claim 4 defines an adhesive as an alternative among other possible alternatives that the functionalizing agent may be. Accordingly, claim 4 is an improper dependent form for failing to further limit the subject matter of the claim upon which it depends, and/or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 108659254A in view of CN102702562A and Tayagaki et al.(2018/0208733).
CN 108659254A discloses methods for forming polyetherimide [note: claims 2 & 6] particle foam molding materials wherein base polyetherimide base particles are combined with blowing agent [note: claim 3] and solvent in an autoclave meeting the device requirements of applicants claims, followed by addition of functionalized solutions of adhesive materials to the particles wherein the base particles become treated with the solvent and functionalizing agent adhesive solution as claimed with adhesive layer and functionalization to the degree claimed, and, finally, foam moulding the particles with heating and shaping to the degree claimed in order to form moulded foams {see paras [0010]-[0029] and the Examples}. Though CN 108659254A does not specifically recite the glass transition values of its polyetherimide base particles, it is held that, owing to the closeness of the make-up of the polyetherimide material selections set forth by CN 108659254A and the closeness of their deployments in particle foam moulding preparations, it would necessarily follow that these materials of CN 108659254A would have glass transition temperatures as defined by the claims.
CN 108659254A differs from applicants’ claims in that it does not require nucleating agents. However, CN102702562A discloses employment of nucleators to be known for use in closely related particle foam moulding preparations to those of the instant concern {para [0021]}. Accordingly, it would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to have utilized the nucleators of CN102702562A in the methods of CN 108659254A for the purpose of imparting their recognized cell nucleating function and effect in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
CN 108659254A differs from applicants’ claims in that it does not require simultaneous foaming/pre-foaming of particles at time of coating with the adhesive. However, Tayagaki et al. discloses it to be known to simultaneously coat and expand particles for the purpose of efficiently contacting materials to the surface of such expandable particles {paras [0105]-[0109]}. Accordingly, it would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to have simultaneously coated and (pre)expanded the particles of CN 108659254A in the manner provided for by Tayagaki et al. in performing the methods of CN 108659254A for the purpose of efficiently contacting materials to the surface of such expandable particles in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO 2007/146875 is cited for its disclosure of relevant functionalized adhesives in the related arts.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. 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.
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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