DETAILED ACTION
Pending Claims
Claims 1-21 are pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 122 (see Figure 4). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-21 are objected to because of the following informalities:
Regarding claims 1-21, the number designations “(100)”, “(104)”, “(106)”, and “(114)” should be removed for improved clarity. These are unnecessary for a composition claim. Appropriate correction is required.
Further regarding claim 12, the claim should state: wherein the dispersion strengthened material comprises fifty percent or more of the thermoplastic material.
Further regarding claim 13, the claim should state: wherein the dispersion strengthened material comprises about ten percent or more of the rubber material.
Further regarding claims 14 and 15, claim 14 should state: wherein the dispersion strengthened material further comprises a plasticizer.
Further regarding claims 17 and 18, claim 17 should state: wherein the dispersion strengthened material further comprises a blowing agent.
Further regarding claims 19 and 20, claim 19 should state: wherein the dispersion strengthened material further comprises a vulcanizing agent.
Claim Rejections - 35 USC § 112, 2nd paragraph (b)
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.
Claims 1-21 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.
Regarding claims 1-21, independent claim 1 recites the limitation "the matrix" without previously introducing a matrix in the dispersion strengthened material. There is insufficient antecedent basis for this limitation in the claim. Claims 2-21 are rejected because they are dependent from claim 1.
Further regarding claim 10, the term “homogeneous” (associated with particle size) is a relative term which renders the claim indefinite. The term “homogeneous” (associated with particle size) is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The claim states that “the rubber material particles are homogeneous in size with respect to each other”. The individual particles of a particulate material typically vary in particle size, and the overall particulate material can be characterized with a particle size distribution. It appears that the claim may be attempting to further limit the particulate rubber materials with a narrow particle size distribution. However, the degree of homogeneity/narrowness is unclear. Furthermore, the specification only discusses homogeneity with respect to the overall dispersion/mixture – not the particle size (see paragraphs 0025-0026). For the purpose of the prior art search, the claim has been interpreted as: wherein the rubber material particles are homogeneously dispersed throughout the thermoplastic material.
Further regarding claim 18, claim 18 recites the limitation "the mixture" in the dispersion strengthened material as claimed in claim 17. There is insufficient antecedent basis for this limitation in the claim. In addition, the claim features a generic percentage. Accordingly, it is unclear if this is a weight percentage, a volume percentage or some other percentage. For the purpose of the prior art search, this has been interpreted as a weight percentage.
Further regarding claim 20, claim 20 recites the limitation "the mixture" in the dispersion strengthened material as claimed in claim 19. There is insufficient antecedent basis for this limitation in the claim. In addition, the claim features a generic percentage. Accordingly, it is unclear if this is a weight percentage, a volume percentage or some other percentage. For the purpose of the prior art search, this has been interpreted as a weight percentage.
Further regarding claim 21, claim 21 recites the limitation "the mixture" in the dispersion strengthened material as claimed in claim 1. There is insufficient antecedent basis for this limitation in the claim. In addition, the claim features a generic percentage. Accordingly, it is unclear if this is a weight percentage, a volume percentage or some other percentage. For the purpose of the prior art search, this has been interpreted as a weight percentage.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 8, 11, 13-16, 19, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tirelli et al. (US 2007/0135580 A1).
Claims 1, 8, 11, 13-16, 19, and 21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tirelli et al. (US 2007/0135580 A1).
Regarding claims 1, 8, 11, and 13, Tirelli et al. disclose: (1) a dispersion strengthened material (Abstract; paragraphs 0019-0022; Examples 1-5 in paragraph 0072 & Table 1) comprising: a thermoplastic material in a solid form (Examples 1 & 2: see “thermoplastic phase” in paragraph 0076; Example 3: see “thermoplastic phase” in paragraph 0077; Examples 4 & 5: see “thermoplastic phase” in paragraph 0076, paragraph 0078); a rubber material in the form of particles distributed throughout the thermoplastic material so that the rubber material particles are distributed throughout the thermoplastic material in a spaced apart arrangement supported by the thermoplastic material (Examples 1-5: see paragraph 0081);
(8) wherein the dispersion strengthened material is used in the construction of a shoe (paragraph 0069: see “shoe soles”);
(11) wherein the rubber material particles vary in size with respect to each other (paragraph 0081: see “<0.425 mm (40 mesh)”); and
(13) wherein the dispersion strengthened material comprises about ten percent or more of the rubber material (Examples 1-5: approximately 30%).
Regarding claims 14-16, the exemplary embodiments of Tirelli et al. include: (15) a thermoplastic elastomer (Examples 1 & 2: see “elastomeric phase” in paragraph 0076; Example 3: see “elastomeric phase” in paragraph 0077; Examples 4 & 5: see “elastomeric phase” in paragraph 0076); and specifically (16) a polyolefin elastomer (Examples 1 & 2: see “elastomeric phase” in paragraph 0076; Example 3: see “elastomeric phase” in paragraph 0077; Examples 4 & 5: see “elastomeric phase” in paragraph 0076). This anticipates the “plasticizer” of claims (14-16).
Regarding claim 19, the exemplary embodiments of Tirelli et al. are formulated with dicumyl peroxide (Examples 2, 3 & 5: see paragraph 0082). This anticipates the “vulcanizing agent” of claim (19) because Applicant identifies dicumyl peroxide as a vulcanizing agent (see paragraph 0027 of the specification; see also claim 20).
Regarding claim 21, Tirelli et al. fail to explicitly disclose: (21) wherein the thermoplastic material may range from about 5% to about 95% of the dispersion strengthened material, with the rubber material making up the reciprocal percentage. However, this is an optional limitation (see: “may”). Accordingly, Tirelli et al. anticipate the claim because these limitations are not required.
Claims 1, 3, 4, 7, 8, 12-17, 19, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hu (CN 108586905 A).
Regarding claims 1, 3, 4, 7, 8, 12, 13, 17, and 19, Hu discloses: (1) a dispersion strengthened material (paragraphs 0008-0013; Examples 1-3 in paragraphs 0038, 0043 & 0048) comprising: a thermoplastic material in a solid form (Abstract; paragraph 0017; Examples 1-3 in paragraphs 0038, 0043 & 0048: see “EVA”); a rubber material in the form of particles distributed throughout the thermoplastic material so that the rubber material particles are distributed throughout the thermoplastic material in a spaced apart arrangement supported by the thermoplastic material (Abstract; paragraphs 0017 & 0019; Examples 1-3 in paragraphs 0038, 0043 & 0048: see “chloroprene rubber”);
(3) wherein the rubber material is vulcanized in situ after being distributed throughout the thermoplastic material (paragraphs 0017 & 0021-0022; Examples 1-3 in paragraphs 0038, 0043 & 0048); (7) wherein the thermoplastic material is foamed (paragraphs 0017 & 0021-0022; Examples 1-3 in paragraphs 0038, 0043 & 0048);
(4) wherein the thermoplastic material is Ethylene Vinyl Acetate (EVA) (Abstract; paragraph 0017; Examples 1-3 in paragraphs 0038, 0043 & 0048: see “EVA”);
(8) wherein the dispersion strengthened material is used in the construction of a shoe (Abstract);
(12) wherein the dispersion strengthened material comprises fifty percent or more of the thermoplastic material (Examples 1 & 3 in paragraphs 0038 & 0048: see “EVA” at approximately 62% and 55%);
(13) wherein the dispersion strengthened material comprises about ten percent or more of the rubber material (Examples 1-3 in paragraphs 0038, 0043 & 0048: see “chloroprene rubber” at approximately 12%, 15% and 14%);
(17) further comprising a blowing agent (paragraph 0026; Examples 1-3 in paragraphs 0038, 0043 & 0048: see “azodicarbonamide”); and
(19) further comprising a vulcanizing agent (paragraph 0025: Examples 1-3 in paragraphs 0038, 0043 & 0048: see “bis(2,4-dichlorobenzoyl peroxide)”).
Regarding claims 14-16, the exemplary embodiments of Hu include: (15) a thermoplastic elastomer (Examples 1-3 in paragraphs 0038, 0043 & 0048: see “styrene-butadiene-styrene block copolymer”); and specifically (16) a polyolefin elastomer (Examples 1-3 in paragraphs 0038, 0043 & 0048: see “styrene-butadiene-styrene block copolymer”, where styrene represents a cyclic olefin). This anticipates the “plasticizer” of claims (14-16).
Regarding claim 21, Hu fails to explicitly disclose: (21) wherein the thermoplastic material may range from about 5% to about 95% of the dispersion strengthened material, with the rubber material making up the reciprocal percentage. However, this is an optional limitation (see: “may”). Accordingly, Hu anticipates the claim because these limitations are not required.
Claims 1, 4, 5, 8, 11, 13, 14, 17, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wattelez (FR 2781712 A1).
Regarding claims 1, 4, 5, 8, 11, 13, 14, 17, and 21, Wattelez discloses: (1) a dispersion strengthened material (Abstract; paragraph 0006 of the machine translation) comprising: a thermoplastic material in a solid form (paragraph 0009 of the machine translation; see also paragraphs 0010-0011 and claim 1); a rubber material in the form of particles distributed throughout the thermoplastic material so that the rubber material particles are distributed throughout the thermoplastic material in a spaced apart arrangement supported by the thermoplastic material (paragraphs 0008-0009 of the machine translation; see also paragraphs 0010-0011 and claim 1);
(4) wherein the thermoplastic material is Ethylene Vinyl Acetate (EVA) (paragraph 0009 of the machine translation; see also claim 3);
(5) wherein the rubber material is Ethylene Propylene Diene Monomer (EPDM) (paragraph 0009 of the machine translation; see also claim 2);
(8) wherein the dispersion strengthened material is used in the construction of a shoe (paragraph 0011 of the machine translation: see “shoe soles”);
(11) wherein the rubber material particles vary in size with respect to each other (paragraph 0009 of the machine translation: see “micronized to a diameter of less than 500 microns”; see also claim 5);
(13) wherein the dispersion strengthened material comprises about ten percent or more of the rubber material (paragraph 0011 of the machine translation: see “75%”);
(14) further comprising a plasticizer (paragraphs 0008 & 0011 of the machine translation; see also claim 8);
(17) further comprising a blowing agent (paragraph 0008 of the machine translation; see also claim 8); and
(21) wherein the thermoplastic material may range from about 5% to about 95% of the dispersion strengthened material (paragraph 0011 of the machine translation: see “25%”) with the rubber material making up the reciprocal percentage (paragraph 0011 of the machine translation: see “75%”; see also 0% plasticizer).
Claim Rejections - 35 USC § 102/103
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 2, 3, 6, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tirelli et al. (US 2007/0135580 A1).
Claims 2, 3, 6, 9, and 10 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tirelli et al. (US 2007/0135580 A1).
Regarding claim 2, the teachings of Tirelli et al. are as set forth above and incorporated herein. Tirelli et al. fail to explicitly disclose: (2) wherein at least a portion of the rubber material particles are positioned on an outer surface of the thermoplastic material. However, the skilled artisan would have expected the rubber material particles of Tirelli et al. to be distributed throughout their material, including an outer surface thereof, because Tirelli et al. disclose that the materials are mixed and subsequently charged in an open roll mixer to form a sheet material (see paragraph 0072). At the very least, the skilled artisan would have expected the teachings of Tirelli et al. to obviously embrace embodiments where the rubber material particles are distributed throughout their material, including an outer surface thereof, because Tirelli et al. disclose that the materials are mixed and subsequently charged in an open roll mixer to form a sheet material.
Therefore if not anticipated by Tirelli et al., the skilled artisan would have expected the teachings of Tirelli et al. to obviously embrace embodiments where the rubber material particles are distributed throughout their material, including an outer surface thereof, because Tirelli et al. disclose that the materials are mixed and subsequently charged in an open roll mixer to form a sheet material.
Regarding claims 3 and 6, the teachings of Tirelli et al. are as set forth above and incorporated herein. They fail to disclose: (3) wherein the rubber material is vulcanized in situ after being distributed throughout the thermoplastic material; and (6) wherein the rubber material is vulcanized in a compression press. However, it is noted that these are product-by-process limitations. It has been found that, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process,” – In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113). In the instant case, the product in the product-by-process claim appears to be the same as or obvious from the product of Tirelli et al., regardless of how it is made, because the rubber material particles in both the claims and the material of Tirelli et al. are vulcanized.
Regarding claim 9, the teachings of Tirelli et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (9) wherein the rubber material is concentrated in areas of high wear with respect to the shoe. Rather, they disclose that the material can be used for shoe soles (see paragraph 0069), which are subject to high wear. In light of this, any relative amount or rubber material in the shoe sole would have satisfied a material “concentrated in areas of high wear with respect to the shoe” because shoe soles are subject to high wear. At the very least, any relative amount of rubber material in the shoe sole would have obviously satisfied a material “concentrated in areas of high wear with respect to the shoe” because shoe soles are subject to high wear.
Therefore if not anticipated by Tirelli et al., any relative amount of rubber material in the shoe sole of Tirelli et al. would have obviously satisfied a material “concentrated in areas of high wear with respect to the shoe” because shoe soles are subject to high wear.
Regarding claim 10, the teachings of Tirelli et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (10) wherein the rubber material particles are homogeneously dispersed throughout the thermoplastic material. However, the skilled artisan would have expected the rubber material particles of Tirelli et al. to be homogeneously dispersed throughout their material because Tirelli et al. disclose that the materials are mixed and subsequently charged in an open roll mixer to form a sheet material (see paragraph 0072).
Therefore if not anticipated by Tirelli et al., the skilled artisan would have expected the teachings of Tirelli et al. to obviously embrace embodiments where the rubber material particles are homogeneously dispersed throughout their material because Tirelli et al. disclose that the materials are mixed and subsequently charged in an open roll mixer to form a sheet material.
Claims 2, 6, and 9-11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hu (CN 108586905 A).
Regarding claim 2, the teachings of Hu are as set forth above and incorporated herein. Hu fails to explicitly disclose: (2) wherein at least a portion of the rubber material particles are positioned on an outer surface of the thermoplastic material. However, the skilled artisan would have expected the rubber material particles of Hu to be distributed throughout his material, including an outer surface thereof, because Hu discloses that the materials are mixed and subsequently sheeted (see paragraph 0017). At the very least, the skilled artisan would have expected the teachings of Hu to obviously embrace embodiments where the rubber material particles are distributed throughout their material, including an outer surface thereof, because Hu discloses that the materials are mixed and subsequently sheeted.
Therefore if not anticipated by Hu, the skilled artisan would have expected the teachings of Hu to obviously embrace embodiments where the rubber material particles are distributed throughout their material, including an outer surface thereof, because Hu disclose that the materials are mixed and subsequently sheeted.
Regarding claim 6, the teachings of Hu are as set forth above and incorporated herein. Hu fails to disclose: (6) wherein the rubber material is vulcanized in a compression press. However, it is noted that this is a product-by-process limitation. It has been found that, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process,” – In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113). In the instant case, the product in the product-by-process claim appears to be the same as or obvious from the product of Hu, regardless of how it is made, because the rubber material particles in the claims and the material of Hu are vulcanized.
Regarding claim 9, the teachings of Hu are as set forth above and incorporated herein. Hu fails to explicitly disclose: (9) wherein the rubber material is concentrated in areas of high wear with respect to the shoe. Rather, he discloses that the material can be used for shoe insoles (see Abstract), which are subject to high wear. In light of this, any relative amount or rubber material in the shoe insole would have satisfied a material “concentrated in areas of high wear with respect to the shoe” because shoe insoles are subject to high wear. At the very least, any relative amount of rubber material in the shoe insole would have obviously satisfied a material “concentrated in areas of high wear with respect to the shoe” because shoe insoles are subject to high wear.
Therefore if not anticipated by Hu, any relative amount of rubber material in the shoe insole of Hu would have obviously satisfied a material “concentrated in areas of high wear with respect to the shoe” because shoe insoles are subject to high wear.
Regarding claim 10, the teachings of Hu are as set forth above and incorporated herein. Hu fails to explicitly disclose: (10) wherein the rubber material particles are homogeneously dispersed throughout the thermoplastic material. However, the skilled artisan would have expected the rubber material particles of Hu to be homogeneously dispersed throughout his material because Hu discloses that the materials are mixed and subsequently sheeted (see paragraph 0017).
Therefore if not anticipated by Hu, the skilled artisan would have expected the teachings of Hu to obviously embrace embodiments where the rubber material particles are homogeneously dispersed throughout their material because Hu discloses that the materials are mixed and subsequently sheeted.
Regarding claim 11, the teachings of Hu are as set forth above and incorporated herein. Hu fails to explicitly disclose: (11) wherein the rubber material particles vary in size with respect to each other. However, the crushing and granulating of the rubber (see paragraph 0019) appears to yield a particulate having a particle size distribution. At the very least, the crushing and granulating of the rubber would have obviously yielded a particulate having a particle size distribution.
Therefore if not anticipated by Hu, the crushing and granulating of the rubber of Hu would have obviously yielded a particulate having a particle size distribution.
Claims 2, 3, 6, 7, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wattelez (FR 2781712 A1).
Regarding claim 2, the teachings of Wattelez are as set forth above and incorporated herein. Wattelez fails to explicitly disclose: (2) wherein at least a portion of the rubber material particles are positioned on an outer surface of the thermoplastic material. However, the skilled artisan would have expected the rubber material particles of Wattelez to be distributed throughout their material, including an outer surface thereof, because Wattelez disclose that the materials are mixed and subsequently molded (see paragraph 0011 of the machine translation). At the very least, the skilled artisan would have expected the teachings of Wattelez to obviously embrace embodiments where the rubber material particles are distributed throughout their material, including an outer surface thereof, because Wattelez discloses that the materials are mixed and subsequently molded.
Therefore if not anticipated by Wattelez, the skilled artisan would have expected the teachings of Wattelez to obviously embrace embodiments where the rubber material particles are distributed throughout their material, including an outer surface thereof, because Wattelez disclose that the materials are mixed and subsequently molded.
Regarding claims 3, 6, and 7, the teachings of Wattelez are as set forth above and incorporated herein. He discloses the presence of a blowing agent, which satisfies (7) a foamed material. He fails to disclose: (3 & 7) wherein the rubber material is vulcanized in situ after being distributed throughout the thermoplastic material; and (6) wherein the rubber material is vulcanized in a compression press. However, it is noted that these are product-by-process limitations. It has been found that, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process,” – In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113). In the instant case, the product in the product-by-process claim appears to be the same as or obvious from the product of Wattelez, regardless of how it is made, because the rubber material particles in the claims and the material of Wattelez are vulcanized.
Regarding claim 9, the teachings of Wattelez are as set forth above and incorporated herein. He fails to explicitly disclose: (9) wherein the rubber material is concentrated in areas of high wear with respect to the shoe. Rather, they disclose that the material can be used for shoe soles (see paragraph 0011 of the machine translation), which are subject to high wear. In light of this, any relative amount or rubber material in the shoe sole would have satisfied a material “concentrated in areas of high wear with respect to the shoe” because shoe soles are subject to high wear. At the very least, any relative amount of rubber material in the shoe sole would have obviously satisfied a material “concentrated in areas of high wear with respect to the shoe” because shoe soles are subject to high wear.
Therefore if not anticipated by Wattelez, any relative amount of rubber material in the shoe sole of Wattelez would have obviously satisfied a material “concentrated in areas of high wear with respect to the shoe” because shoe soles are subject to high wear.
Regarding claim 10, the teachings of Wattelez are as set forth above and incorporated herein. He fails to explicitly disclose: (10) wherein the rubber material particles are homogeneously dispersed throughout the thermoplastic material. However, the skilled artisan would have expected the rubber material particles of Wattelez to be homogeneously dispersed throughout their material because Wattelez discloses that the materials are mixed and subsequently molded (see paragraph 0011 of the machine translation).
Therefore if not anticipated by Wattelez, the skilled artisan would have expected the teachings of Wattelez to obviously embrace embodiments where the rubber material particles are homogeneously dispersed throughout their material because Wattelez discloses that the materials are mixed and subsequently molded.
Claim Rejections - 35 USC § 103
Claims 4, 5, 12, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tirelli et al. (US 2007/0135580 A1).
Regarding claim 4, the teachings of Tirelli et al. are as set forth above and incorporated herein. The exemplary embodiments of Tirelli et al. feature a polypropylene homopolymer (see Examples 4 & 5 in Table 1 and paragraph 0078). Accordingly, they fail to disclose: (4) wherein the thermoplastic material is Ethylene Vinyl Acetate (EVA). However, the general teachings of Tirelli et al. contemplate other thermoplastic materials (see paragraphs 0044-0057), including EVA (see paragraph 0056).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the material of Tirelli et al. with Ethylene Vinyl Acetate (EVA) because: (a) the exemplary embodiments of Tirelli et al. feature a polypropylene homopolymer; and (b) the general teachings of Tirelli et al. contemplate other thermoplastic materials, including EVA.
Regarding claim 5, the teachings of Tirelli et al. are as set forth above and incorporated herein. The exemplary embodiments of Tirelli et al. fail to explicitly disclose; (5) wherein the rubber material is Ethylene Propylene Diene Monomer (EPDM) (see paragraph 0081). However, the general teachings of Tirelli et al. contemplate various rubber materials (see paragraphs 0024-0035), including EPDM (see paragraph 0032).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the material of Tirelli et al. with Ethylene Propylene Diene Monomer (EPDM) because: (a) the general teachings of Tirelli et al. contemplate various rubber materials; and (b) the rubber materials of Tirelli et al. include EPDM.
Regarding claim 12, the teachings of Tirelli et al. are as set forth above and incorporated herein. The exemplary embodiments of Tirelli include approximately 44 wt% of combined thermoplastic material (Examples 4 & 5: see 14 wt% (40*.35) from (a) and 30% from (c)). Accordingly, the examples fail to disclose: (12) wherein the dispersion strengthened material comprises fifty (weight) percent or more of the thermoplastic material. However, the general teachings Tirelli et al. contemplate higher amounts of thermoplastic (c), with a preferred minimum of 10% (see paragraph 0057). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the materials of Tirelli et al. with 50 (weight) percent or more of the thermoplastic material because: (a) the exemplary embodiments of Tirelli include approximately 44 wt% of combined thermoplastic material (14 wt% from (a) and 30% from (c)); (b) the general teachings Tirelli et al. contemplate higher amounts of thermoplastic (c), with a preferred minimum of 10%; and (c) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claim 20, the teachings of Tirelli et al. are as set forth above and incorporated herein. The exemplary embodiments of Tirelli et al. are formulated with about 0.2 wt% of dicumyl peroxide (see Examples 2, 3 & 5). Accordingly, the examples fail to disclose: (20) about .5 wt% of dicumyl peroxide. However, the general teachings of Tirelli et al. contemplate amounts of 0.01 to 1 wt% (see paragraph 0066). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the materials of Tirelli et al. with about 0.5 wt% of dicumyl peroxide because: (a) the exemplary embodiments of Tirelli et al. are formulated with about 0.2 wt% of dicumyl peroxide; (b) the general teachings of Tirelli et al. contemplate amounts of 0.01 to 1 wt%; and (c) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Claims 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hu (CN 108586905 A).
Regarding claim 18, the teachings of Hu are as set forth above and incorporated herein. Example 1 of Hu includes about 3% of azodicarbonamide (see paragraph 0038). Accordingly, it fails to explicitly disclose an amount of: (18) about 2% of the dispersion strengthened material. However, it has been found that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close – see MPEP 2144.05.
Regarding claim 20, the teachings of Hu are as set forth above and incorporated herein. The exemplary embodiments of Hu are formulated with approximately 2-3% of bis(2,4-dichlorobenzoyl peroxide). Accordingly, these examples fail to disclose: (20) about .5 wt% of dicumyl peroxide. However, the general teachings of Hu also contemplate the use of dicumyl peroxide (see paragraph 0025). Furthermore, the skilled artisan would have recognized the amount of this crosslinking (vulcanizing) agent as a result effective variable in order to ensure an adequate degree of reaction. In light of this, it has been found that, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation,” – In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); and “A particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation,” –In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the material of Hu with about .5 wt% of dicumyl peroxide because: (a) the general teachings of Hu contemplate the use of dicumyl peroxide as an alternative to bis(2,4-dichlorobenzoyl peroxide); (b) the skilled artisan would have recognized the amount of this crosslinking (vulcanizing) agent as a result effective variable in order to ensure an adequate degree of reaction; (c) it has been found that, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation;” and (d) it has been found that “A particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.”
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Wattelez (FR 2781712 A1).
Regarding claim 12, the teachings of Wattelez are as set forth above and incorporated herein. He discloses an embodiment containing 25% EVA thermoplastic (see paragraph 0011 of the machine translation). Accordingly, this working embodiments do not disclose: (12) wherein the dispersion strengthened material comprises fifty percent or more of the thermoplastic material. However, he is open to embodiments with any relative amounts of thermoplastic and rubber particles (see paragraph 0011 of the machine translation: see “it is possible to play with the percentages of rubber powder, binder and/or plasticizer”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the material of Wattelez with the instantly claimed amount of thermoplastic material (50% or more) because: (a) Wattelez discloses an embodiment containing 25% EVA thermoplastic; and (b) Wattelez is open to embodiments with any relative amounts of thermoplastic and rubber particles.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Wattelez (FR 2781712 A1) in view of Hu (CN 108586905 A).
Regarding claim 18, the teachings of Wattelez are as set forth above and incorporated herein. He contemplates the use of a blowing agent (see paragraph 0008 of the machine translation). However, he fails to explicitly disclose: (18) wherein the blowing agent is Azodicarbonamide as about 2% of the dispersion strengthened material.
The teachings of Hu are also as set forth above and incorporated herein. Hu discloses a similar material formulated with a thermoplastic material and rubber material particles (see paragraphs 0009-0012). Hu demonstrates that azodicarbonamide is recognized in the art as a suitable blowing agent or this type of material (see paragraphs 0026, 0038, 0043 & 0048). Hu further suggests that the instantly claimed amount is a suitable amount of azodicarbonamide blowing agent for this type of material (see paragraph 0038). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the material of Wattelez with the instantly claimed azodicarbonamide (and amount thereof) because: (a) Wattelez contemplates the use of a blowing agent; (b) Hu discloses a similar material formulated with a thermoplastic material and rubber material particles and demonstrates that azodicarbonamide is recognized in the art as a suitable blowing agent for this type of material; (c) Hu further suggests that the instantly claimed amount is a suitable amount of azodicarbonamide blowing agent for this type of material; and (d) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Communication
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
December 16, 2025