DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 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.
2. Claims 1-6, 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Takagi et al (US 2019/0276627, Takagi’627) in view of Tokoro et al (US 2002/0182399).
3. Takagi’627 discloses an olefin thermoplastic-based expanded bead and a molded article produced by in-mold molding of said beads (Abstract, [0097], as to instant claims 1 and 9), wherein the beads are having a columnar cross-sectional form with circular cylindrical-shaped through-holes ([0052]-[0053]), wherein
the inside diameter of the expanded bead (major axis of the cross-sectional shape of hole) is preferably 1-5 mm and an average bead diameter of the expanded bead is preferably 1.5-10 mm ([0132]-[0133]).
Assuming the hole diameter of 1 mm (radius 0.5 mm) (cited below as “r”) and bead diameter of 10 mm (radius 5 mm) (cited below as “R”) and following the calculations presented in instant specification ([0032]-[0034] of instant specification), the ratio of cross-sectional area of the through hole to the cross-sectional area of the bead will be (not taking into account the cross-sectional area of hole, applied in the denominator, as discussed in paragraph [0032] of instant specification) :
πr2/(πR2 – πr2) = r2/(R2 – r2) = (0.5)2/ (52-(0.5)2) = 0.25/24.75 =0.01 (as to instant claim 2).
The olefin thermoplastic resin used for making the beads includes copolymers of propylene with ethylene ([0030]).
4. Though Takagi’627 discloses the presence of through holes in the beads, Takagi’627 does not explicitly teach the presence of two or four through holes in the beads, and does not explicitly teach the olefin thermoplastic resin being ethylene-propylene random copolymer.
5. However, Tokoro et al discloses expanded beads having through hole(s) ([0011], [0038]). It is noted that Tokoro et al explicitly recites the plural form of “through holes”, i.e. having multiple holes.
The hole diameters of the through-holes is preferably 0.5 mm ([0038], as to instant claim 4).
Tokoro et al explicitly teaches a resin particle having at least 2 through-holes or 3 through-holes ([0043], [0039]).
The polyolefin resin used for making the expanded beads comprises ethylene-propylene random copolymers ([0058]).
6. Thus, Tokoro et al explicitly teaches the olefin-based expanded beads comprising at least 2 through-holes, and each of the holes having a diameter of preferably 0.5 mm.
7. Since both Tokoro et al and Takagi’627 are related to olefin-based columnar-shaped expanded beads having circular through-holes, and thereby belong to the same field of endeavor, wherein Takagi’627 teaches the cross-sectional diameter of the holes being 1-5 mm, but does not explicitly teach the presence of 2 or 4 through holes, and Tokoro et al recites such olefin-based expanded beads having at least 2 through holes each having diameter of preferably 0.5 mm, providing molded articles having porosity of at least 10%, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Takagi’627 and Tokoro et al, and to modify, or obvious to try to modify the expanded beads of Takagi’627 by forming at least 2, or 4, through holes, each having diameter of 0.5 mm, with total diameter of all holes being 1 mm or 2 mm, i.e. within the range of 1-5 mm as required by Takagi’627, and further use, or obvious to try to use the propylene-ethylene random copolymer as the olefin-based thermoplastic resin to form the expanded beads of Takagi’627, since it would have been obvious to choose material based on its suitability (as to instant claims 3-4). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
Further, since the presence of the through-holes determines the structure of voids and porosity level produced during molding ([0050] of Takagi’627 and [0034] of Tokoro et al), it would have been obvious to a one of ordinary skill in the art to make variations and optimize the number of through holes, location and distance between the through-holes, so to ensure the molded article produced from said expanded beads is having a desired level of porosity and voids structure, there by arriving at the present invention (as to instant claim 5). "[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).
8. As to instant claim 1, given the expanded beads of Takagi’627 in view of Tokoro et al comprise:
a) 2 through holes, each having diameter of 0.5 mm, i.e. with total hole diameter 1 mm (radius 0.5 mm) (cited as “r” below):
b) diameter of the bead of 5 mm (cited as “R” below) ([0054] of Takagi’627),
then the ratio of cross-sectional area of all the through-holes to the cross-sectional area of the bead will be:
πr2/(πR2 – πr2) = r2/(R2 – r2) = (0.5)2/ (2.5)2-(0.5)2) = 0.25/6 =0.04 (as to instant claim 1).
9. As to instant claim 2, given the expanded beads of Takagi’627 in view of Tokoro et al comprise:
a) each through-hole having diameter of 0.5 mm (radius 0.25 mm) (cited as “r” below):
b) diameter of the bead of 5 mm (cited as “R” below) ([0054] of Takagi’627),
then the ratio of cross-sectional area one through-hole to the cross-sectional area of the bead will be:
πr2/(πR2 – πr2) = r2/(R2 – r2) = (0.25)2/ (2.5)2-(0.25)2) = 0.0625/6.18 =0.01 (as to instant claim 2).
10. As to instant claim 6, the expanded beads comprise bulk density of 25-80 g/L ([0059] of Takagi’627), exemplified values of 41-44 g/L and a ratio of apparent density to bulk density of 1.9 (Table 1 of Takagi’627).
11. The molded article is produced by in-mold molding of the expanded beads ([0097]-[0099] of Takagi’627, as to instant claim 9).
Since the molded article of Takagi’627 in view of Tokoro et al is produced from substantially the same expanded beads having 2 or more through holes as claimed in instant invention, by substantially the same in-mold molding as that disclosed in instant invention, therefore, the molded article of Takagi’627 in view of Tokoro et al will intrinsically and necessarily have or would be reasonably expected to have the properties, including the open cell content, that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well (as to instant claim 10). 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.
12. Claims 1-6, 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Takagi et al (US 2019/0276627, Takagi’627) in view of Tokoro et al (US 2002/0182399) and Takagi et al (WO 2020/235290, Takagi’737).
It is noted that while the rejection is made over WO 2020/235290 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 12,344,737 is relied upon. All citations to paragraph numbers, etc., below refer to US 12,344,737.
13. The discussion with respect to Takagi et al (US 2019/0276627, Takagi’627) in view of Tokoro et al (US 2002/0182399) set forth in paragraphs 2-11 above, is incorporated here by reference.
14. Though Takagi’627 in view of Tokoro et al do not explicitly teach the expanded beads further comprising a thermoplastic resin cover layer covering the expanded resin layer,
Takagi’737 discloses cylindrical expanded thermoplastic resin expanded beads with through holes, the beads comprising a core layer in a foamed state and a cover layer covering the core and comprising a thermoplastic polymer,
wherein given a melting point of the resin of the core is Tmc and the melting point of the resin of the cover layer is Tms, then
Tms -Tmc is -20⁰C or more (col. 3, lines 25-40, Abstract),
wherein such difference in the melting point values results in excellent fusion bonding properties (col. 9, lines 50-66).
Specific example 3 shows Tm of core layer of 125⁰C and Tm of the cover layer of 113⁰C (Table 2).
15. Since all of Takagi’737 and Takagi’627 in view of Tokoro et al are related to thermoplastic olefin-based expanded beads with through-holes, used for making molded articles, and thereby belong to the same field of endeavor, wherein Takagi’737 discloses such beads further having a cover comprising a thermoplastic resin having Tm lower than Tm of the core bead layer, providing improved fusion bonding of the beads, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Takagi’737 and Takagi’627 in view of Tokoro et al, and to include, or obvious to try to include the thermoplastic resin layer having Tm lower than Tm of the core/expanded layer of the bead of Takagi’627 in view of Tokoro et al as a cover layer to said beads of Takagi’627 in view of Tokoro et al, as taught by Takagi’737, so to further improve fusion bonding of the expanded beads of Takagi’627 in view of Tokoro et al, and 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
16. Claims 1-7, 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Takagi et al (US 2019/0276627, Takagi’627) in view of Tokoro et al (US 2002/0182399) and Sasaki (US 7,678,839).
17. The discussion with respect to Takagi et al (US 2019/0276627, Takagi’627) in view of Tokoro et al (US 2002/0182399) set forth in paragraphs 2-11 above, is incorporated here by reference.
18. Though Takagi’627 in view of Tokoro et al do not explicitly recite the olefin thermoplastic resin used for making the expanded beads being propylene-ethylene random copolymer having 0.5-3.5%mass of ethylene,
Sasaki discloses expanded beads having through-holes, wherein the resin used for making the beads comprises a propylene-ethylene random copolymer having 0.1-10%wt of comonomers including ethylene and/or butene (col. 9, lines 25-42).
19. Since not only block copolymers, but further propylene-ethylene random copolymers having 0.1-10%wt of ethylene units are taught in the art to be used for making expanded beads with through-holes, as shown by Sasaki, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Sasaki and Takagi’627 in view of Tokoro et al, and to use, or obvious to try to use the propylene-ethylene random copolymers having 1-10%wt of ethylene units as the olefin resin for making the expanded beads of Takagi’627 in view of Tokoro et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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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