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 .
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.
2. Claims 1, 8, 14, 30, 33, 35, 38, 45-47, 51, 57, 65, 73, 91, 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.
3. Claims 1, 8, 30, 35, 45-46, 65, 91, 97, 104 use the term “preferably”. 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, 45-46, 65, 91, 97, 104 recite the broad recitations of limitations and in the same claims by using the term “preferably” 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.
Claims 14, 33, 38, 47, 51, 57, 105-107 are rejected as being dependent on claim 1.
4. Claims 73, 91, which are dependent on claim 51, recite the polymer component comprising or essentially consisting of an olefin vinyl acetate copolymer, olefin acrylate copolymers and their mixture. However, claim 51 recites the polymer component comprising or essentially consisting of an epoxy prepolymer. Given the polymer component of claim 51 essentially consists of an epoxy prepolymer, it is not clear how said polymer component may further include an olefin vinyl acetate copolymer, olefin acrylate copolymers and their mixture. It is further not clear if said olefin vinyl acetate copolymers, olefin acrylate copolymers and their mixture are used in addition to the epoxy prepolymer or not.
5. Claims 51, 65, 73, 91, 97, 104, which are dependent on claim 1, recite various components used in the second and more times, but do not have prepositions “the” or “said” in front of those; therefore, it is not clear if said terms are the same or different from those used previously.
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.
6. Claim 91 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 91, which is dependent on claim 73, recites the polymer component being independently an olefin acrylate copolymer, olefin vinyl acetate copolymer, which are broader that those of claim 73, where the polymer component comprises a mixture of olefin acrylate copolymer, olefin vinyl acetate copolymer. 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.
7. Claims 1, 8, 14, 30, 33, 35, 38, 45-47, 105-107 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.
8. 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 (as to instant claims 73, 91), 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, as to instant claim 91);
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).
9. 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 at most 200 micron.
10. However, 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). 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 0.64 micron acts as an activator to increase foaming level.
11. Since zinc oxide powder having particle size of 0.65 micron is used along with azodicarbonamide as a foaming powder composition to increase expansion level, as shown by Hosoyama 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 and Frick et al, and to use of obvious to try to use the zinc oxide having particle size of 0.65 micron, such as commercial product Zinc Oxide No2 (see p. 3, lines 5-6 of translation) of Hosoyama et al 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
12. 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.
13. Claims 1, 8, 14, 30, 33, 35, 38, 45-47, 51, 57, 65, 73, 91, 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.
14. The discussion with respect to Frick et al (WO 2019/134842) in view of Hosoyama et al (JPH02222425, based on machine translation) set forth in paragraphs 7-12 above, is incorporated here by reference.
15. Frick et al does not recite the composition further comprising epoxy polymers with curing agents.
16. However, 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);
B’) 0.1-50%wt of additional polymers including ethylene-vinyl acetate copolymers and ethylene-acrylate copolymers (col. 4, lines 18-45, as to instant claim 73, 91);
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).
17. Since both Frick et al and Sheasley et al are related to heat activatable compositions for baffling and reinforcement comprising ethylene-vinyl acetate copolymers and ethylene-acrylate copolymers, azodicarbonamide, zinc oxide and fillers, and thereby belong to the same field of endeavor, wherein Sheasley et al discloses that such compositions further comprise epoxy resins along with ethylene-vinyl acetate copolymers and ethylene-acrylate copolymers, 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 include, or obvious to try to include epoxy resins in amounts as taught by Sheasley et al, into the composition of Frick et al to be used along with ethylene-vinyl acetate copolymer, ethylene-(meth)acrylate copolymer, 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, especially since Frick et al teaches that epoxy group-functionalized polymers such as having glycidyl methacrylate groups can be used as well (col. 3, lines 50-53 of Frick et al).
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
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.
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