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 February 9, 2026 has been fully considered. The amendment to instant claims 1 and 20 is acknowledged. Specifically, claim 1 has been amended to include a limitation of the ultra-highly planar particles having an average size of between about 8 microns and about 300 microns. This limitation was not previously presented and was taken from instant specification ([0016] of instant specification). In light of the amendment, all previous rejections are withdrawn. 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 § 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.
3. Claims 1-4, 6-7, 9-22 are rejected under 35 U.S.C. 103 as being unpatentable over Juliussen et al (WO 2021/095023) in view of Gebraad et al (US 8,901,181).
It is noted that while the rejection is made over WO 2021/095023 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 12,163,009 is relied upon. All citations to paragraph numbers, etc., below refer to US 12,163,009.
4. Juliussen et al discloses a reinforced biodegradable polymer nanocomposite comprising:
A) a biodegradable polymer matrix comprising polylactic acid (PLA) (col. 5, lines 40-45; 63-65) and
B) 0.1-5%wt (col. 7, lines 14-17, as to instant claim 7) of functionalized graphene nanoplatelets or graphene-like material dispersed in said matrix (Abstract), wherein the graphene nanoplatelets are having planar structure with thickness of 5-10 nm and diameter of 1-50 micrometers (col. 6, lines 55-62).
The graphene-like material includes graphite flakes (col. 6, lines 40-42).
5. It is noted that instant specification recites the “ultra-highly planar particle” as having an aspect ratio of 50-1000 and being exfoliating planar particles (see [0012] of instant specification); therefore, the graphene nanoplatelets or graphene-like material of Juliussen et al having planar structure with thickness of 5-10 nm and diameter of 1-50 micrometers will intrinsically and necessarily correspond to the “ultra-highly planar particles” as claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). 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.
6. Juliussen et al further teaches that the term “graphene” refers to planar exfoliated form of graphite (col. 6, lines 18-27, as to instant claims 3-4).
7. As to instant claim 6, the graphene nanoplatelets are functionalized through surface modification (col. 7, lines 57-64).
8. Juliussen et al further teaches that the graphene nanoplatelets or graphene-like material are dispersed in the polymer matrix in order to produce uniform and fine distribution of graphite inside and on the surface of the polymer matrix to enhance stability, mechanical strength and optical, thermal and electrical properties of the resultant reinforced biodegradable polymer composite (col. 9, lines 14-24).
9. Juliussen et al further teaches the nanocomposite further comprising filler/ additives to alter physical or chemical properties (col. 13, lines 18-28).
10. Juliussen et al does not recite the reinforced biodegradable polymer composite as being a foam article.
11. However, Gebraad et al discloses a polymer foam based on particulate/granular expandable polymer comprising:
A) a polylactic acid (col. 2, lines 26-53) and
B) 1-15%wt, or 2-8%wt (as to instant claim 7) of an exfoliated graphite or graphene, including natural graphite (col. 6, lines 64-65, as to instant claims 3-4), having an aspect ratio of greater than 100:1 and layered structure/flat carbon platelets (claims 1-4, 7, 13; col. 3, lines 54-67; col. 4, lines 6-11, 42-45) and
C) a flame retardant (col. 4, lines 23-25).
Based on the teachings of Gebraad et al, it would have been obvious to a one of ordinary skill in the art to choose and use a polylactic acid (PLA) as the polymeric component A) to form the foam article of Gebraad et al as well, 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).
12. As to instant claim 20, the method for making the molded foam part comprises adding the foamable polymer particles into an extruder, melting those and molding by extrusion (col. 5, lines 28-34, col. 5, lines 58-col. 6, line 3 of Gebraad et al).
13. Since the molded foam is produced from particulate foamable PLA-based composition, i.e. from granules, therefore, the molded article appears to be a molded bead foam article (as to instant claims 2, 9).
14. Since both Juliussen et al and Gebraad et al are related to composites comprising a polylactic acid and exfoliated ultra-planar graphene/graphite particles, and thereby belong to the same field of endeavor, wherein Gebraad et al further teaches such composite being in the form of particulate/granular expandable composite, further used for making molded foam articles, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Juliussen et al and Gebraad et al, and to prepare, or obvious to try to prepare the composite of Juliussen et al
in the form of particulate/granular expandable/partially expanded composite; in other words, to modify the composite of Juliussen et al by adding at least a minor amount of an expanding agent as the filler altering physical properties, and further granulating such composite, given such is desired depending on the specific end-use of the product, and since the composite in the form of granules/particles is easier to store and further transport and use.
Further, based on the teachings of Gebraad et al that the molded foam is produced from the particulate foamable PLA-based composition, and the molded article produced from said foam particles appears to be a molded bead foam article, it would have been obvious to a one of ordinary skill in the art to use, or obvious to try to use the expandable/partially expanded particulate composite of Juliussen et al for molding to produce the molded foam article as well, as taught by Gebraad et al, given such is desired depending on the specific end-use of the product and since such method for forming foam articles from PLA/ultra-planar graphene particulate composites in taught in the art, as shown by Gebraad 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
15. Since the reinforced biodegradable polymer foam composite and molded foam article of Juliussen et al in view of Gebraad et al are substantially the same as those claimed in instant invention, i.e. comprise PLA as the polymer matrix and planar/flat exfoliated graphite used in amount as claimed in instant invention, therefore, the molded reinforced biodegradable polymer foam composite and article of Juliussen et al in view of Gebraad et a will intrinsically and necessarily have, or would be reasonably expected to have the properties, including loss of deflection strength after compression, a compression set, flexural modulus, deflection distance, R-Value, ISTA 7E Heat Test, having values as those claimed in instant invention, or in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 9-19), especially since Juliussen et al explicitly teaches that the graphene nanoplatelets or graphene-like material are dispersed in the polymer matrix in order to produce uniform and fine distribution of graphite inside and on the surface of the polymer matrix to enhance stability, mechanical strength and optical, thermal and electrical properties of the resultant reinforced biodegradable polymer composite (col. 9, lines 14-24). Further, since the method of extrusion molding of the foam article of Juliussen et al in view of Gebraad et al is substantially the same as that claimed in instant invention, and the foam granules used for making said molded article comprise PLA and planar/flat exfoliated graphite, as claimed in instant invention, therefore, said method would be reasonably expected to be, at least to minor extent, effective in reducing a cycle time and shortening stabilization time as compared to molding PLA foam particle without planar exfoliated graphite as well (as to instant claims 21-22). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). 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.
16. Claims 1-4, 6-7, 9-22 are rejected under 35 U.S.C. 103 as being unpatentable over Juliussen et al (WO 2021/095023) in view of Gebraad et al (US 8,901,181) and Bhargava et al (US 2017/0334107).
It is noted that while the rejection is made over WO 2021/095023 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 12,163,009 is relied upon. All citations to paragraph numbers, etc., below refer to US 12,163,009.
17. The discussion with respect to Juliussen et al in view of Gebraad et al set forth in paragraphs 3-15 above is incorporated here by reference.
18. Though Juliussen et al in view of Gebraad et al does not explicitly recite the method of making the molded article including steps of molding and removing the molded article from the mold, Bhargava et al discloses a method for making a molded foam article comprising:
1) introducing foam particles into a mold;
2) subjecting the particles filled mold to fuse and stabilize said molded particles while cooling the mold;
3) removing the molded article from the mold (Claim 1, as to instant claims 2, 20),
wherein the foam particles comprise homopolymes or copolymers of polylactic acid with additives ([0006]; [0023]; [0028], [0039]),
wherein such process allows successfully molding expanded PLA with less energy and faster cycle times ([0028]).
19. Since Bhargava et al and Juliussen et al in view of Gebraad et al are related to molded foam articles produced from PLA-based foam granules/particles, and thereby belong to the same field of endeavor, wherein Bhargava et al recites the molding process including heating said particle in the mold, fusing said particles and removing the molded article, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Juliussen et al in view of Gebraad et al and Bhargava et al, and to use, or obvious to try to use, or obvious to try to use the method for making molding foam of Bhargava et al to form the molded foam of Juliussen et al in view of Gebraad et al, since such process steps are specifically taught in the art as to form the PLA molded foam with less energy and faster cycle times as well, thereby arriving at the present invention.
In the alternative, since the PLA-based foam particle of Bhargava et al are cited as further comprising additives, it would have been obvious to a one of ordinary skill in the art to modify, or obvious to try to modify the process for making foam molded article of Bhargava et al and the molded foam produced by said process of Bhargava et al by using the PLA-based foam particles comprising layered/flat exfoliated graphite as taught by Juliussen et al in view of Gebraad et al as the additive in said PLA-based foam, since the presence of said exfoliated flat graphite improves thermal insulation properties of the molded foam, as shown by Gebraad et al (col. 2, lines 18-20) and enhances stability, mechanical strength and optical, thermal and electrical properties of the composite, as taught by Juliussen et al (col. 9, lines 14-24), and 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
20. Since the molded bead/granule foam article of Juliussen et al in view of Gebraad et al and Bhargava et al is substantially the same as that claimed in instant invention, i.e. comprises PLA as the polymer matrix and planar/flat exfoliated graphite used in amount as claimed in instant invention, therefore, the molded bead foam article of Juliussen et al in view of Gebraad et al and Bhargava et al will intrinsically and necessarily have, or would be reasonably expected to have the properties, including loss of deflection strength after compression, a compression set, a flexural modulus, deflection distance, R-Value, ISTA 7E Heat Test, having values as those claimed in instant invention, or in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 9-19). Further, since the method of extrusion molding of the foam article of Juliussen et al in view of Gebraad et al and Bhargava et al is substantially the same as that claimed in instant invention, and the foam granules used for making said molded article comprise PLA and planar/flat exfoliated graphite, as claimed in instant invention, therefore, said method would be reasonably expected to be, at least to minor extent, effective in reducing a cycle time and shortening stabilization time as compared to molding PLA foam particle without planar exfoliated graphite as well (as to instant claims 21-22). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). 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.
21. Claims 1-7, 9-19 is rejected under 35 U.S.C. 103 as being unpatentable over Juliussen et al (WO 2021/095023) in view of Gebraad et al (US 8,901,181) and Shimamoto et al (US 2017/0253691).
It is noted that while the rejection is made over WO 2021/095023 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 12,163,009 is relied upon. All citations to paragraph numbers, etc., below refer to US 12,163,009.
22. The discussion with respect to Juliussen et al in view of Gebraad et al set forth in paragraphs 3-15 above is incorporated here by reference.
23. Though Juliussen et al in view of Gebraad et al recite the particulate/granular expandable polymer comprising a flame retardant (col. 4, lines 23-25 of Gebraad et al), Juliussen et al in view of Gebraad et al does not explicitly recite the flame retardant being expandable graphite.
24. However, Shimamoto et al discloses a fire-resistant composition comprising a thermoplastic or thermosetting resin and thermally expandable graphite in amount of 3-300 phr (Abstract), wherein the expandable graphite is having aspect ratio of 25-1000 ([0009], [0050]), i.e. ultra-highly planar, and has particle size of 100-1000 micron ([0012]), and wherein such composition comprises high expansion, high residue hardness and shape retention ([0007]-[0008]).
25. Since the use of ultra-highly planar expandable graphite having particle size of 100-1000 micron in thermoplastic resin compositions provides both high expansion and fire resistant properties, as shown by Shimamoto et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Shimamoto et al and Juliussen et al in view of Gebraad et al, and to include, or obvious to try to include the ultra-highly planar expandable graphite having aspect ratio of as high as 1000 and particle size of as low as 100 micron into the composite of Juliussen et al in view of Gebraad et al, either as the flame retardant or as the expanding agent to form the composite of Juliussen et al in view of Gebraad et al in the form of foam particles, or both, since it would be 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). 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
26. Since the molded bead/granule foam article of Juliussen et al in view of Gebraad et al and Shimamoto et al is substantially the same as that claimed in instant invention, i.e. comprises PLA as the polymer matrix and ultra-highly planar graphite used in amount as claimed in instant invention and further ultra-highly planar expandable graphite particles, therefore, the molded bead foam article of Juliussen et al in view of Gebraad et al and Shimamoto et al will intrinsically and necessarily have, or would be reasonably expected to have the properties, including loss of deflection strength after compression, a compression set, a flexural modulus, deflection distance, R-Value, ISTA 7E Heat Test, having values as those claimed in instant invention, or in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 9-19). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). 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.
Response to Arguments
27. Applicant's arguments filed on February 9, 2026 have been fully considered but they are moot in light of new grounds of rejections and the discussion set forth above.
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.
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
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