CTNF 18/285,465 CTNF 78870 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 07-30-01 AIA The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 07-31-03 AIA Claim s 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, because the specification, while being enabling for an injection foam molded body composed of a propylene resin composition , does not reasonably provide enablement for the materials which meet the claimed properties . The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir, 1988) The broadest reasonable interpretation of claims 1-10 encompasses an injection foam molded body composed of a propylene resin composition. The specification discloses sufficient information for one of ordinary skill in the art to an injection foam molded body composed of a propylene resin composition. However, the specification does not provide direction on how to form an injection foam molded body from the disclosed materials which meet the claimed properties. At the time of filing, the state of the art was such that one of ordinary skill in the art would not be able to determine what materials listed in the Specification would meet the properties being claimed. Thus, the disclosed examples and embodiments do not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claims 1-10. A) The breadth of the claims: The claims encompass all the injection foam molded bodies composed of a propylene resin composition that have the claimed properties. The Specification is directed to more specific embodiments and is silent with how to achieve the claimed properties. . B) The nature of the invention: The invention relates to an injection foam molded body composed of a propylene resin composition. C) The state of the prior art: While knowledge of injection foam molded bodies composed of a propylene resin composition is extensive, there is little to no precedent for determining how to get the claimed properties. D) The level of ordinary skill: The level of ordinary skill in the art is high. Typically, a material’s engineer having a graduate degree and/or several years of experience. E) The level of predictability in the art: The properties of a specific material in many cases can predicted. However, selecting materials that would lead one to form the injection foam molded body composed of a propylene resin composition having the claimed properties is not considered to be predictable. F) The amount of direction provided by the inventor: The inventor discloses materials that may be used to form the injection foam molded body composed of a propylene resin composition (see Examples 1-7). However, no guidance is provided for selecting the materials exhibiting the required properties and/or how to get to the claimed properties. G) The existence of working examples: There are 7 examples of materials having the desired properties however the examples are all drawn to a formulation including PP-1, PP-2, or PP-3. These are all propylene ethylene block copolymers, a species of the claim which does not reasonably provide guidance for the entire breadth of the claim which is any PP including homopolymers and copolymers. The examples further do not demonstrate the breadth of the claim, the range achieved for the bending gradient is 49-123 (double the lower limit of the claimed range and almost 1/10 the upper end of the claimed range) and the range achieved for the press gradient is 28-48 (roughly 5 times the lower limit and 1/3 the upper limit of the claimed range). There also does not appear to be a correlation between the two properties. H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: No materials are described in the disclosure that would allow the production of an injection foam molded body composed of a propylene resin composition having the claimed properties; however, blind experimentation would have to be employed by one of ordinary skill in the art to produce an injection foam molded body exhibiting the required. No guidance is provided in the instant specification that would allow one of ordinary skill in the art to produce an injection foam molded body indicated as being enabled. The exemplary embodiments disclosed in the instant specification cover only a narrow fraction of the broad protection sought in the instant claims. In combination with the established unpredictability of the art, the lack of guidance would require one of ordinary skill in the art to conduct excessive blind experimentation to determine which materials are suitable to form an injection foam molded body having the required properties. The teaching set forth in the specification provides no more than an invitation for those of skill in the art to experiment searching for the required properties indicated as enabled. See, Enzo Biochem, Inc. v. Calgene, Inc., 52 USPQ2d 1129. Claims 2-10 are also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, due to their dependency on the above rejected claim . 07-30-02 AIA 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. 07-34-01 Claims 1-10 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. Claim 1 recites the limitation "the center position" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is requested. Claim 1 recites the limitation "the amount of deflection" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is requested. Claim 1 recites the limitation "the range" in line 6. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is requested. Claim 1 recites the limitation "the range" in line 10. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is requested. Claims 2-10 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, due to their dependency on the above rejected claim. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm. 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, Frank Vineis can be reached at 571-270-1547. 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. CATHERINE A. SIMONE Examiner Art Unit 1781 /Catherine A. Simone/Primary Examiner, Art Unit 1781 Application/Control Number: 18/285,465 Page 2 Art Unit: 1781 Application/Control Number: 18/285,465 Page 3 Art Unit: 1781 Application/Control Number: 18/285,465 Page 4 Art Unit: 1781 Application/Control Number: 18/285,465 Page 5 Art Unit: 1781 Application/Control Number: 18/285,465 Page 6 Art Unit: 1781 Application/Control Number: 18/285,465 Page 7 Art Unit: 1781