DETAILED ACTION
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 23, 2026 has been entered.
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.
Claims 1, 2, 5, 10, 14, 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Bioffex website (of Record) in view of Miller (US 20170173853).
As to claim 1, Bioffex website (page 2, Steps 2 and 3) teaches a method of producing a foam article comprising producing a molded beam foam article from polylactic acid-based foam beads.
Bioffex website is silent to heating a surface and pressing the surface against the molded bead foam article for a period of time to produce a brand, wherein the brand has a contrast ratio of at least 4.5:1 relative to a base foam color of the molded bead foam article without the use of ink or dyes.
Miller teaches providing a foam (preamble of claim 20), heating a surface such as a branding iron, wire, or rod (claim 20, part a) or part b)) and pressing the heated surface against a foam article for a period of time to produce a brand ([0033] “branded thermoplastic foam”). The Miller branded article has a brand that is clearly visible on the surface of the article (see Fig. 1A), and since the claimed contrast ratio of 4.5:1 corresponds to a AA or midrange level of contrast (see Example 5 in the instant application), it would have been obvious that the Miller brand meets the claimed contrast level. Additionally, one of ordinary skill in the art would have recognized that the Miller electrical power conditions applied to the branding device represents a result effective variable that influences the operation of the branding device and the contrast of the resulting brand. One would have arrived at the claimed contrast ratio as a matter of routine optimization on the power applied to the branding tool.
It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate the Miller branding process into the Bioffex website process for either of the following reasons:
(a) One would have been motivated to apply information to the Bioffex website article, such as a letter, number, or logo (Miller, [0058]) for the purpose of decoration or to convey information. There would have been a reasonable expectation of success in light of the fact that Bioffex already teaches a polymeric foam, and Miller is specifically directed at branding polymeric foam material.
(b) The Bioffex website provides an article formed from polymeric foam material, and Miller specifically teaches/suggests a branding process specifically for polymeric foam articles. There would have been a reasonable expectation of success since both references are foam articles.
As to claim 2, Bioffex website specifically teaches molding a bead foam article (page 2, step 3). As to claim 5, Miller teaches a metal surface ([0032]). As to claim 10, Bioffex website and Miller do not specifically teach the pressing time claimed. However, since the objective of the Miller process is to form designs in the surface of a foam (Fig. 1A), one would have recognized the pressing time to be a result effective variable which must be sufficient to form the desired design. One would have found it obvious to arrive at the claimed pressing time as a matter of routine optimization. As to claim 14, the Bioffex website is depicted as white. As to claim 16, Miller heats by placing on a hot plate ([0062]). As to claims 17 and 18, one molding the Bioffex website article and recognizing the branding of Miller to be an obvious addition would have recognized that the branding could be performed at any time after the molding was complete, whether immediately after molding or subsequently after cooling. One would have found it obvious to rearrange or arrange any order the steps of cooling and branding, and the same article is produced in either order. As to claim 19, any of the multiple Bioffex website article faces could be branded by the Miller process.
Claims 4, 6-9, 12, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Bioffex website (of Record) in view of Miller (US 20170173853), and further in view of Mittag (US 20130084429). Bioffex website and Miller teach the subject matter of claim 1 above under 35 U.S.C. 103.
As to claims 4 and 15, while Bioffex website is silent to graphite and other colorants which would provide a non-white color, Mittag teaches colorants such as dyes and pigments ([0064]), interpreted to be non-white. One would have been motivated to incorporate the Mittag other colorants into Bioffex website in order to provide color to the foam article of Bioffex website. There would be a reasonable expectation of success in light of the fact that both references provide a foam. As to claims 6-9, Miller intends to brand an image using an embossed or debossed surface made from metal ([0065]). The Examiner considers Miller’s Fig. 2A to provide a plate (with a large hole), but recognizes that views could differ on this interpretation. Even if Miller is found to be silent to a “plate”, Mittag teaches a metal plate die surface ([0106]) which is interpreted to have an embossed or debossed design (Fig. 4, item 41) comprising an image or image-like design ([0120]). It would have been prima facie obvious to one of ordinary skill in the art to incorporate the Mittag die into the modified Bioffex website as either as (a) an obvious interchangeable substitute die configuration for the similar purpose of forming a foam surface, with a predictable result that the Mittag plate would shape or form the surface in substantially the same way, or alternatively, (b) motivated by eliminating flexing or bending in the branding tool by providing it in plate form, with a reasonable expectation of success evident from the fact that all references are directed to foam. As to claims 12 and 13, while Bioffex website is silent to the claimed temperature, Mittag teaches pressing with a shaped stamping press heated to about 200 C (392 F) ([0105]). Additionally, Mittag teaches that the particular temperature selected for the forming tool is selected to be not so hot or held for too long such that the foam is degraded, and therefore represents a result effective variable. It would have been prima facie obvious to incorporate the Mittag temperatures into the modified Bioffex website in view of Miller’s teaching/suggestion to use a heated branding tool and Mittag’s mold temperature consistent with this teaching/suggestion.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bioffex website (of Record) in view of Miller (US 20170173853), and further in view of Nawaby (US 20120223459). Bioffex website and Miller teach the subject matter of claim 1 above under 35 U.S.C. 103.
As to claim 10, Bioffex website and Miller do not specifically teach the pressing time claimed. However, Nawaby teaches molding a polylactic foam article ([0016]-[0017]) and pressing a heated surface ([0019], “hot mold”) against the molded foam article for 1-5 seconds ([0020]).
It would have been prima facie obvious to use the Nawaby pressing time in the modified Bioffex website because Bioffex website also teaches/suggests a polylactic foam article, Miller teaches/suggests a heated branding surface, and Nawaby provides a particular time for forming a polylactic foam surface.
Claims 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Bioffex website (of Record) in view of Miller (US 20170173853), and further in view of Edgar (US 20080241477). Bioffex website and Miller teach the subject matter of claims 1 and 5 above under 35 U.S.C. 103.
As to claims 20 and 21, Bioffex website is silent to a coated tool surface formed by CNC machining.
Edgar teaches a process for embossing flexible sheets comprising CNC machining a tool ([0017]) and coating with a mold release agent ([0019]).
It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate these features from Edgar into the modified Bioffex website because (a) Miller specifically teaches/suggests machining ([0056]) and Edgar provides machining, and (b) one would have been motivated to provide a mold release agent to the Miller molding tool in order to improve separation of the molding tool from the Bioffex website foam.
As to claim 22, Bioffex website and Miller do not appear to specifically disclose the 10 psi pressure.
However, Edgar teaches pressure conditions that are sufficient to emboss a design on a material, and that the pressure depends on various factors such as the material, design, and thickness of the flexible material ([0020]), making the pressure a result effective variable. Edgar also teaches a range below 150 psi ([0021]). One of ordinary skill in the art would have found it obvious to optimize the embossing pressure and arrive at the claimed 10 psi as a matter of routine optimization within the disclosed range (0-150 psi) of Edgar.
It would have been prima facie obvious to one of ordinary skill in the art to incorporate this embossing pressure into the modified Bioffex website process motivated by embossing a design on the foam material under conditions appropriate for the material, design, and thickness of the material.
Declaration under 37 CFR 1.132 and Response to Arguments
The Godfrey declaration under 37 CFR 1.132 has been fully considered.
The Godfrey declaration states that the high-contrast branding behavior of molded PLA bead form is unexpected (paragraph 2) and discusses significant legibility challenges in branding of EPS because of bead size (paragraphs 3-5). The Godfrey declaration states that previous legible markings previously required inks and solvents (paragraph 6) and Miller teaches that to achieve contrast one “must” add a contrasting material (paragraph 7) such as paints, Quickcrete, or sealants, or caulk to the grooves formed by branding (paragraph 8). The Godfrey declaration states that one would have expected that applying a heated branding tool to molded beam foam would result in poor contrast (paragraph 9) and that Applicants unexpectedly discovered that PLA foam exhibits significant color change upon branding without inks, dyes, or colorants (paragraph 10-11). The Godfrey declaration discusses examples in Table 5 of the instant application where PLA foam was compared against branded EPS foam, and represents a difference in kind rather than a difference in degree (paragraphs 12-16). A “fail” result under WCAG 2.0 guidelines was reached for EPS, while PLA foam led to a AA or AAA rating, meaning the branding is highly legible (paragraphs 17-18). The Godfrey declaration states that this is an unexpected result which has significant practical advantages such as high contrast without additional inks, dyes, or paints (paragraph 19) and that there would have not been a reasonable expectation of success because Miller “consistently teaches that contrast requires adding contrasting materials to the grooves.”
The Examiner respectfully disagrees with the statements in the Godfrey declaration that Miller “must” or “consistently” teaches adding contrasting materials to the grooves. While it is true that Miller teaches that contrast material can be added to grooves in some embodiments, this contrast material is not required in all embodiments of Miller, and it is not required for a high degree of contrast in the branded article. For instance, Fig. 2 of Miller shows a branding tool, and Fig. 1A shows the corresponding brand. From [0056] and [0057], there is no disclosure that any contrast material has been added to the Miller grooves. It should be noted that when a contrast agent is added, it is specifically disclosed and it is often a white contrast agent. See [0063] and Fig. 5A which is a plan view of a thermoplastic foam board having grooved marks with some of the grooves filed with a white caulk material. Viewing Fig. 5A, the Examiner takes the view that the black areas are unfilled groove areas having a high degree of contrast, and these black areas are depicted as similar to those shown in Fig. 1A (also interpreted to be unfilled grooves).
While Miller does not use the same measure of contrast as the instant application, the Examiner understands the claimed 4.5:1 contrast ratio on a WCAG 2.0 scale to be a midlevel contrast ratio where the branded mark is visible. Clearly, Miller shows a brand that is clearly visible (Fig. 1A), and it is unclear why this brand would fail to meet the claimed value. Regarding the alleged unexpected result, and especially in view of the degree of contrast observed in Miller’s brands (without contrast agent) shown in Miller’s Fig. 1A, the Examiner cannot agree that a PLA article with a high degree of brand contrast can be considered an unexpected result. Clearly it is an expected result of Miller that a high contrast brand be created. If the Applicant’s position is that it is unexpected that a high contrast brand would be formed in PLA, the Examiner also respectfully disagrees. Miller specifically teaches/suggests that the marking process can be formed from “polyester, and other meltable organic foam materials.” ([0026]) and clearly creates a high degree of brand contrast, as shown in Fig. 1A. The Examiner understands the claimed PLA to be a polyester, or at least a meltable organic foam material. While Miller teaches/suggests a genus that covers the species claimed in this application, this does not support Applicant’s position that high contrast branding of one particular species can be considered an unexpected result. One would expect the same result for the entire genus of polyester or meltable organic foam materials. Specifically regarding the arguments, filed April 23, 2026, these arguments appear to present substantially the same position or opinions as the Godfrey declaration. For example, on page 5 Applicant argues the addition of a contrast agent in Miller, on page 6 Applicant argues that the claimed contrast ratio is achieved by branding alone without inks or dyes and that this represents an unexpected result. On page 7, Applicant argues there was no reasonable expectation of success in achieving high contrast without inks or dyes. The Examiner maintains that these positions are addressed above. Specifically, Miller produces high contrast brands that do not require contrast agents (Fig. 1A) in all embodiments and the broad teaching/suggestion for use with polyesters or meltable organic foam materials creates an obvious link with the Bioffex website article formed from polyester.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J DANIELS whose telephone number is (313)446-4826. The examiner can normally be reached Monday-Friday, 8:30-5:00 pm.
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/MATTHEW J DANIELS/Primary Examiner, Art Unit 1742
