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 June 26, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to limit the polymer component (i) to epoxy prepolymer only. 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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
3. Claims 1, 8, 14, 30, 33, 35, 38, 45, 47, 51, 57, 65, 97, 104-107 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
4. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1, 8, 30, 35, 45, 65, 97, 104 recite the broad recitations of limitations and in the same claims also recite narrower statements of the range/limitations. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Even though in the current amendment Applicant deleted the actual word “preferably” from said claims, the scope of said claims is still the same as before, i.e. broader ranges are used together with narrower ranges in the same claims.
Claims 14, 33, 38, 45, 47, 51, 57, 105-107 are rejected as being dependent on claim 1.
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.
5. Claims 51, 57, 65, 97, 104 are 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 51 recites the limitation of the polymer component comprising the epoxy prepolymer, which limitation is already present in claim 1. 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
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.
6. Claims 1, 8, 14, 30, 33, 35, 38, 45, 47, 51, 57, 97, 104-107 are rejected under 35 U.S.C. 103 as being unpatentable over Frick et al (WO 2019/134842) in view of Hosoyama et al (JPH02222425, based on machine translation).
It is noted that while the rejection is made over WO 2019/134842 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 11,365,310 is relied upon. All citations to paragraph numbers, etc., below refer to US 11,365,310.
7. The rejection is adequately set forth on pages 5-9 of an Office action mailed on March 26, 2026 and is incorporated here by reference.
8. With respect to the amended claim 1,
1) Frick et al discloses a thermally expandable composition comprising:
A) 30-80%wt (col. 4, lines 5-10, as to instant claim 35) of a polymer P cross-linkable (as to instant claims 1, 33) by peroxide, including an ethylene-vinyl acetate copolymer, ethylene-(meth)acrylate copolymer or polyolefins such as polyethylene or polypropylene which polymers may also be functionalized with glycidylmethacrylate groups (col. 3, lines 40-54), and more than one type of polymer maybe used (col. 4, lines 11-12);
B) 0.1-5%wt of at least one acrylate, which is a cross-linker for the polymer P (col. 4, lines 30-31, 45-60);
C) 2.5-5%wt of a peroxide (col. 5, lines 14-16, as to instant claims 97, 104);
D) 1-15%wt, or 5-10%wt azodicarbonamide (col. 6, lines 7-17, as to instant claims 1, 30);
E) 0.25-2%wt of a zinc compound, specifically zinc oxide as an activator for the azodicarbonamide (col. 7, lines 42-55, as to instant claims 1, 8, 14, 104);
F) 1-15%wt of fillers (col. 8, lines 25-27, as to instant claim 38);
wherein the exemplified weight ratio of the azodicarbonamide to the zinc oxide is 8.14 (example 8 of Table 2) and 16.4 (example 7 of Table 2, as to instant claim 104);
wherein the composition leads to low odor formation (abstract),
and wherein the exemplified volume expansion at 180⁰C is 1934-2073% and at 200⁰C volume expansion is 968-1321%.
The expansion is triggered by heat, wherein both azodicarbonamide and peroxide are activated by thermal processes, and the expandable material is expanded and cured into its intended state (col. 9, lines 37-55, as to instant claims 105-106), and further the composition is used for making articles such as baffle and reinforcement elements (col. 11, lines 1-55), wherein it would have been obvious to a one of ordinary skill in the art to cool the produced article to room temperature before using it (as to instant claim 107).
2) Thus, Frick et al explicitly teaches the polymer P comprising ethylene-based copolymers which contain glycidylmethacrylate groups (col. 3, lines 50-53); and based on said teachings of Frick et al, it would have been obvious to a one of ordinary skill in the art to choose and use the ethylene-based copolymers as cited by Frick et al comprising glycidyl methacrylate groups as the polymer P, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
3) It is further noted that instant specification defines “epoxy prepolymer” as the material that comprises reactive epoxy functional groups, i.e. at least one epoxy functional group, or reactive oxirane moiety (see [0073]-[0074] of instant specification) and as shown below:
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The epoxy prepolymer may include ethylene copolymer ([0077] of instant specification). Therefore, the ethylene-based copolymers of Frick et al comprising glycidylmethacrylate functional groups corresponds to the “epoxy prepolymer” as defined and claimed in instant invention.
4) Though Frick et al does not explicitly teach said zinc oxide having particle size of about 2 micron,
Hosoyama et al discloses a foaming powder resin composition comprising a polyolefin resin such as copolymers of ethylene or propylene, including (meth)acrylic-modified olefins (p. 2, lines 1-7 of translation), azodicarbonamide as a foaming agent (p. 2, lines 15-20 of the translation) and zinc oxide, wherein the zinc oxide powder is having particle size of approximately 0.65 micron (p. 2, lines 30-36 of the translation).
It is Examiner’s position that the range of “approximately 0.65 micron” of Hosoyama et al either overlaps or is very close to the claimed range of “about 2 µm”, wherein the term “approximately” includes values of more than 0.65 micron, and the term “about” includes values of less than 2 micron. 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).
9. Claims 1, 8, 14, 30, 33, 35, 38, 45, 47, 51, 57, 65, 97, 104-107 are rejected under 35 U.S.C. 103 as being unpatentable over Frick et al (WO 2019/134842) in view of Hosoyama et al (JPH02222425, based on machine translation) and Sheasley et al (US 7,438,782).
It is noted that while the rejection is made over WO 2019/134842 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 11,365,310 is relied upon. All citations to paragraph numbers, etc., below refer to US 11,365,310.
10. The rejection is adequately set forth on pages 9-11 of an Office action mailed on March 26, 2026 and is incorporated here by reference.
11. With respect to the amended claim 1,
1) Frick et al discloses a thermally expandable composition comprising:
A) 30-80%wt (col. 4, lines 5-10, as to instant claim 35) of a polymer P cross-linkable (as to instant claims 1, 33) by peroxide, including an ethylene-vinyl acetate copolymer, ethylene-(meth)acrylate copolymer or polyolefins such as polyethylene or polypropylene which polymers may also be functionalized with glycidylmethacrylate groups (col. 3, lines 40-54), and more than one type of polymer maybe used (col. 4, lines 11-12);
B) 0.1-5%wt of at least one acrylate, which is a cross-linker for the polymer P (col. 4, lines 30-31, 45-60);
C) 2.5-5%wt of a peroxide (col. 5, lines 14-16, as to instant claims 97, 104);
D) 1-15%wt, or 5-10%wt azodicarbonamide (col. 6, lines 7-17, as to instant claims 1, 30);
E) 0.25-2%wt of a zinc compound, specifically zinc oxide as an activator for the azodicarbonamide (col. 7, lines 42-55, as to instant claims 1, 8, 14, 104);
F) 1-15%wt of fillers (col. 8, lines 25-27, as to instant claim 38);
wherein the exemplified weight ratio of the azodicarbonamide to the zinc oxide is 8.14 (example 8 of Table 2) and 16.4 (example 7 of Table 2, as to instant claim 104);
wherein the composition leads to low odor formation (abstract),
and wherein the exemplified volume expansion at 180⁰C is 1934-2073% and at 200⁰C volume expansion is 968-1321%.
The expansion is triggered by heat, wherein both azodicarbonamide and peroxide are activated by thermal processes, and the expandable material is expanded and cured into its intended state (col. 9, lines 37-55, as to instant claims 105-106), and further the composition is used for making articles such as baffle and reinforcement elements (col. 11, lines 1-55), wherein it would have been obvious to a one of ordinary skill in the art to cool the produced article to room temperature before using it (as to instant claim 107).
2) Thus, Frick et al explicitly teaches the polymer P comprising ethylene-based copolymers which contain glycidyl methacrylate groups (col. 3, lines 50-53); and based on said teachings of Frick et al, it would have been obvious to a one of ordinary skill in the art to choose and use the ethylene-based copolymers as cited by Frick et al comprising glycidyl methacrylate groups as the polymer P, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
3) It is further noted that instant specification defines “epoxy prepolymer” as the material that comprises reactive epoxy functional groups, i.e. at least one epoxy functional group, or reactive oxirane moiety (see [0073]-[0074] of instant specification) and as shown below:
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The epoxy prepolymer may include ethylene copolymer ([0077] of instant specification). Therefore, the ethylene-based copolymers of Frick et al comprising glycidylmethacrylate functional groups corresponds to the “epoxy prepolymer” as defined and claimed in instant invention.
4) Though Frick et al does not explicitly teach said zinc oxide having particle size of about 2 micron,
Hosoyama et al discloses a foaming powder resin composition comprising a polyolefin resin such as copolymers of ethylene or propylene, including (meth)acrylic-modified olefins (p. 2, lines 1-7 of translation), azodicarbonamide as a foaming agent (p. 2, lines 15-20 of the translation) and zinc oxide, wherein the zinc oxide powder is having particle size of approximately 0.65 micron (p. 2, lines 30-36 of the translation).
It is Examiner’s position that the range of “approximately 0.65 micron” of Hosoyama et al either overlaps or is very close to the claimed range of “about 2 µm”, wherein the term “approximately” includes values of more than 0.65 micron, and the term “about” includes values of less than 2 micron. 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).
12. Further, with respect to the amended claims 1 and 65,
though Frick et al does not recite the composition further comprising epoxy polymers with curing agents, specifically a diglycidylether of bisphenol as the epoxy prepolymer,
Sheasley et al discloses heat-activatable compositions (col. 2, lines 1-2) for sealing, baffling and reinforcing articles, the composition comprising:
A’) 2-80%wt, or 4-30%wt of an epoxy resin (col. 2, lines 5-18, 58-62, as to instant claims 51, 65), wherein the epoxy includes ethylene copolymer or terpolymer that may possess an alpha-olefin (col. 3, lines 5-7) and a bisphenol-A-epichlorohydrin ether polymer (col. 3, lines 14-16), i.e. bisphenol A diglycidyl ether; the epoxy resin maybe a solid or liquid resin (col. 3, lines 1-4), and various mixtures thereof (col. 3, lines 18-20);
C’) 0.001-5%wt of azodicarbonamide blowing agent with zinc oxide accelerator (col. 7, lines 26-48);
D’) 0.001-7%wt of a curing agent for epoxy resin, including amidoamines (col. 8, lines 1-18);
E’) a filler (col. 8, lines 25-30).
13. Since both Frick et al and Sheasley et al are related to heat activatable compositions for baffling and reinforcement comprising ethylene copolymer-based epoxy polymers, azodicarbonamide, zinc oxide and fillers, and thereby belong to the same field of endeavor, wherein Sheasley et al discloses that such compositions further comprise mixtures of ethylene copolymer-based epoxy resins with bisphenol A diglycidyl ether as epoxy resins, and mixtures of solid epoxy resin with liquid epoxy resin, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Frick et al and Sheasley et al, and to either i) include, or obvious to try to include bisphenol A diglycidyl ether as additional epoxy resin in the composition of Frick et al, or ii) choose and use the mixture of ethylene copolymer-based epoxy with bisphenol A diglycidyl ether as the epoxy resin component of Sheasley et al and include that mixture as the polymer P in the composition of Frick et al, or iii) choose and use the combination of solid epoxy resin and liquid epoxy resin of Sheasley et al, and include that combination as the polymer P in the composition of Frick et al, since such polymers are taught in the art as being used together to form heat expandable baffling compositions, and since it would have been obvious to choose material based on its suitability. 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
14. Claims 1, 8, 14, 30, 33, 35, 38, 45, 47, 51, 57, 97, 104-107 are rejected under 35 U.S.C. 103 as being unpatentable over Frick et al (WO 2019/134842) in view of Hosoyama et al (JPH02222425, based on machine translation) and Sueda et al (US 2015/0050496).
It is noted that while the rejection is made over WO 2019/134842 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 11,365,310 is relied upon. All citations to paragraph numbers, etc., below refer to US 11,365,310.
15. Frick et al discloses a thermally expandable composition comprising:
A) 30-80%wt (col. 4, lines 5-10, as to instant claim 35) of a polymer P cross-linkable (as to instant claims 1, 33) by peroxide, including an ethylene-vinyl acetate copolymer, ethylene-(meth)acrylate copolymer or polyolefins such as polyethylene or polypropylene which may also be functionalized with glycidylmethacrylate groups (col. 3, lines 40-54), and more than one type of polymer maybe used (col. 4, lines 11-12);
B) 0.1-5%wt of at least one acrylate, which is a cross-linker for the polymer P (col. 4, lines 30-31, 45-60);
C) 2.5-5%wt of a peroxide (col. 5, lines 14-16, as to instant claims 97, 104);
D) 1-15%wt, or 5-10%wt azodicarbonamide (col. 6, lines 7-17, as to instant claims 1, 30);
E) 0.25-2%wt of a zinc compound, specifically zinc oxide as an activator for the azodicarbonamide (col. 7, lines 42-55, as to instant claims 1, 8, 14, 104);
F) 1-15%wt of fillers (col. 8, lines 25-27, as to instant claim 38);
wherein the exemplified weight ratio of the azodicarbonamide to the zinc oxide is 8.14 (example 8 of Table 2) and 16.4 (example 7 of Table 2, as to instant claim 104);
wherein the composition leads to low odor formation (abstract),
and wherein the exemplified volume expansion at 180⁰C is 1934-2073% and at 200⁰C volume expansion is 968-1321%.
The expansion is triggered by heat, wherein both azodicarbonamide and peroxide are activated by thermal processes, and the expandable material is expanded and cured into its intended state (col. 9, lines 37-55, as to instant claims 105-106), and further the composition is used for making articles such as baffle and reinforcement elements (col. 11, lines 1-55), wherein it would have been obvious to a one of ordinary skill in the art to cool the produced article to room temperature before using it (as to instant claim 107).
16. Thus, Frick et al explicitly teaches the polymer P comprising ethylene-based copolymers which contain glycidyl methacrylate groups (col. 3, lines 50-53); and based on said teachings of Frick et al, it would have been obvious to a one of ordinary skill in the art to choose and use the ethylene-based copolymers as cited by Frick et al comprising glycidyl methacrylate groups as the polymer P, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
17. It is further noted that instant specification defines “epoxy prepolymer” as the material that comprises reactive epoxy functional groups, i.e. at least one epoxy functional group, or reactive oxirane moiety (see [0073]-[0074] of instant specification) and as shown below:
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The epoxy prepolymer may include ethylene copolymer ([0077] of instant specification). Therefore, the ethylene-based copolymers of Frick et al comprising glycidylmethacrylate functional groups corresponds to the “epoxy prepolymer” as defined and claimed in instant invention.
18. Though Frick et al discloses the use of zinc oxide as an activator for the azodicarbonamide, Frick et al does not explicitly teach said zinc oxide having particle size of about 2 micron.
19. However,
1) Hosoyama et al discloses a foaming powder resin composition comprising a polyolefin resin such as copolymers of ethylene or propylene, including (meth)acrylic-modified olefins (p. 2, lines 1-7 of translation), azodicarbonamide as a foaming agent (p. 2, lines 15-20 of the translation) and zinc oxide, wherein the used zinc oxide powder is a commercial product from Sakai Company having particle size of approximately 0.65 micron (p. 2, lines 30-36 and p. 3, lines 5-6 of the translation). Hosoyama et al explicitly shows that the composition without the presence of said zinc oxide does not have a sufficient degree of foaming (p. 3, lines 36-43 of translation; Examples). That is, zinc oxide having particle size of 0.65 micron acts as an activator to increase foaming level.
It is Examiner’s position that the range of “approximately 0.65 micron” of Hosoyama et al either overlaps or is very close to the claimed range of “about 2 µm”, wherein the term “approximately” includes values of more than 0.65 micron, and the term “about” includes values of less than 2 micron. 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).
2) Though Hosoyama et al teaches the use of commercial zinc oxide particles from Sakai company having particle size of approximately 0.65 micron, but not higher than 0.65 micron,
Sueda et al reference, which is invented and assigned to the same Sakai Company, discloses the zinc oxide particles having size of 0.01-5 micron ([0014]), specifically exemplified D(90) of 1.88 micron (Example 1, Table 1).
20. Since zinc oxide powder having particle size of approximately 0.65 micron from Sakai Company is used along with azodicarbonamide as a foaming powder composition to increase expansion level, as shown by Hosoyama et al, and zinc oxide particles having particle size of 1.88 micron are also known in the art from the same Sakai Company, as shown by Sueda et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Hosoyama et al, Sueda et al and Frick et al, and to use or obvious to try to use the zinc oxide having particle size of approximately 0.65 micron, such as commercial product Zinc Oxide No2 (see p. 3, lines 5-6 of translation) of Hosoyama et al or having size of 1.88 micron as shown by Sueda et al, or said particles in combination, as the zinc oxide component in the composition of Frick et al, since such zinc oxide powder is taught by Hosoyama et al to be used along with azodicarbonamide as a foaming composition to increase foaming level, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. 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). 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
21. As to instant claims 45, 47, the composition shows volume expansion at 180⁰C of 1934-2073% and at 200⁰C volume expansion of 968-1321% (Table 2, examples 7-8).
Based on the values of volume expansion at 180⁰C and 200⁰C, it would have been reasonably expected that the volume expansion at 190⁰C will be between 968-1321% and 1934-2073%, or within the range of 1400+1000% as well (as to instant claim 47). 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.
22. Claims 1, 8, 14, 30, 33, 35, 38, 45, 47, 51, 57, 65, 97, 104-107 are rejected under 35 U.S.C. 103 as being unpatentable over Frick et al (WO 2019/134842) in view of Hosoyama et al (JPH02222425, based on machine translation) and Sueda et al (US 2015/0050496), in further view of Sheasley et al (US 7,438,782).
It is noted that while the rejection is made over WO 2019/134842 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 11,365,310 is relied upon. All citations to paragraph numbers, etc., below refer to US 11,365,310.
23. The discussion with respect to Frick et al (WO 2019/134842) in view of Hosoyama et al (JPH02222425, based on machine translation) and Sueda et al (US 2015/0050496), set forth in paragraphs 14-21 above, is incorporated here by reference.
24. Though Frick et al does not recite the composition further comprising epoxy polymers with curing agents, specifically a diglycidylether of bisphenol as the epoxy prepolymer,
Sheasley et al discloses heat-activatable compositions (col. 2, lines 1-2) for sealing, baffling and reinforcing articles, the composition comprising:
A’) 2-80%wt, or 4-30%wt of an epoxy resin (col. 2, lines 5-18, 58-62, as to instant claims 51, 65), wherein the epoxy includes ethylene copolymer or terpolymer that may possess an alpha-olefin (col. 3, lines 5-7) and a bisphenol-A-epichlorohydrin ether polymer (col. 3, lines 14-16), i.e. bisphenol A diglycidyl ether; the epoxy resin maybe a solid or liquid resin (col. 3, lines 1-4), and various mixtures thereof (col. 3, lines 18-20);
C’) 0.001-5%wt of azodicarbonamide blowing agent with zinc oxide accelerator (col. 7, lines 26-48);
D’) 0.001-7%wt of a curing agent for epoxy resin, including amidoamines (col. 8, lines 1-18);
E’) a filler (col. 8, lines 25-30).
25. Since both Frick et al and Sheasley et al are related to heat activatable compositions for baffling and reinforcement comprising ethylene copolymer-based epoxy polymers, azodicarbonamide, zinc oxide and fillers, and thereby belong to the same field of endeavor, wherein Sheasley et al discloses that such compositions further comprise mixtures of ethylene copolymer-based epoxy resins with bisphenol A diglycidyl ether as epoxy resins, and mixtures of solid epoxy resin with liquid epoxy resin, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Frick et al and Sheasley et al, and to either i) include, or obvious to try to include bisphenol A diglycidyl ether as additional epoxy resin in the composition of Frick et al, or ii) choose and use the mixture of ethylene copolymer-based epoxy with bisphenol A diglycidyl ether as the epoxy resin component of Sheasley et al and include that mixture as the polymer P in the composition of Frick et al, or iii) choose and use the combination of solid epoxy resin and liquid epoxy resin of Sheasley et al, and include that combination as the polymer P in the composition of Frick et al, since such polymers are taught in the art as being used together to form heat expandable baffling compositions, and since it would have been obvious to choose material based on its suitability. 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
Response to Arguments
26. Applicant's arguments filed June 26, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
27. In addition, with respect to Applicant’s arguments regarding the teachings of Frick et al (WO 2019/134842) in view of Hosoyama et al (JPH02222425, based on machine translation), it is noted that:
1) neither Frick et al nor instant claims have any requirements for the epoxy prepolymer being thermoplastic or thermosetting, as both types of epoxy prepolymers are mentioned in instant specification (see [0077] of instant specification).
2) Frick et al discloses a thermally expandable composition comprising the polymer P cross-linkable by peroxide, including an ethylene-vinyl acetate copolymer, ethylene-(meth)acrylate copolymer or polyolefins such as polyethylene or polypropylene which may also be functionalized with glycidylmethacrylate groups (col. 3, lines 40-54).
3) Sheasley et al discloses heat-activatable compositions for sealing, baffling and reinforcing articles, the composition comprising:
epoxy resins that include ethylene copolymer or terpolymer that may possess an alpha-olefin (col. 3, lines 5-7) and a bisphenol-A-epichlorohydrin ether polymer (col. 3, lines 14-16), i.e. bisphenol A diglycidyl ether; the epoxy resin maybe a solid or liquid resin (col. 3, lines 1-4), and various mixtures thereof (col. 3, lines 18-20).
4) Thus, both thermoplastic and thermosetting epoxy resins are used as polymers in heat-activatable expandable compositions.
28. It is further noted that instant claim 1 is silent with respect to any properties of the composition. Though in examples of instant specification the commercial zinc oxide Extra R having particle size of 2 micron is used, no comparative examples showing the use of other metal oxide particles having particle sizes other than 2 micron were presented, and therefore, the evidence of criticality in using said metal oxide particles having size of specifically about 2 micron, has not been established.
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.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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