DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-16, 25-28 are pending in the application. Claims 17-24 are cancelled.
Amendments to claims 2, 3 and new claims 27 and 28, filed on 5/4/2026, have been entered in the above-identified application.
WITHDRAWN REJECTIONS
The double patenting rejection over claims 1-11 of co-pending Application No. 18/476956 made of record in the office action mailed 1/5/2026, page 4, paragraph 7 has been withdrawn.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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)(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, 6-8, 13, 14, 16, 25 and 26 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Roberts et al. (US Patent Application No. 2013/0189470).
Regarding claims 1, Roberts et al. teach a molded (page 1, paragraphs [0005], [0006]) bead foam article (page 1, paragraphs [0004]-[0006]) comprising polylactic acid (page 2, paragraph [0028]), wherein the molded (page 1, paragraphs [0005], [0006]) bead foam article comprises at least one surface (page 1, paragraphs [0004]-[0006]).
The product-by-process limitation “wherein at least a portion of the at least one surface has been skin-formed” would not be expected to impart distinctive structural characteristics to the article. The product itself does not depend on the process of making it. MPEP 2113. It can therefore be ascertained that the article of Roberts et al. possesses the same characteristics as the Applicant’s claimed article.
Regarding claim 6, Roberts et al. teach wherein the surface has a density of 1 lb/ft3 to 20 lb/ft3 which reads on Applicant’s claimed range of between about 1.0 pcf and about 6.0 pct (page 3, paragraph [0043]).
Regarding claim 7, Roberts et al. teach wherein the surface is leak proof (page 4, paragraph [0055]).
Regarding claim 8, Roberts et al. teach a molded (page 1, paragraphs [0005], [0006]) bead foam article (page 1, paragraphs [0004]-[0006]) comprising polylactic acid (page 2, paragraph [0028]), wherein the molded (page 1, paragraphs [0005], [0006]) bead foam article comprises at least one surface (page 1, paragraphs [0004]-[0006]).
The product-by-process limitation “wherein at least a portion of the at least one surface has been skin-formed” would not be expected to impart distinctive structural characteristics to the article. The product itself does not depend on the process of making it. MPEP 2113. It can therefore be ascertained that the article of Roberts et al. possesses the same characteristics as the Applicant’s claimed article.
Roberts et al. is silent on wherein the skin formed portion of the at least one surface has an R-value that is unchanged in at least 1 year when exposed to water. It is elementary that a mere recitation of a newly discovered property, inherently possessed by the things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art (In re Swinehart et al, 169 USPQ 226 at 229). It is inherent that the inclusion of the same polylactic acid and surface within the molded bead foam article of Roberts et al. would possess the same R-value as the instant application because it possesses all the other claimed constituents in the same structure. MPEP 2112.01
Regarding claims 13 and 14, Roberts et al. teach wherein the molded bead foam articles is in the form of a box having a plurality of sides (page 1, paragraph [0006], page 3, paragraph [0035], Fig. 1).
Regarding claim 16, Roberts et al. teach wherein the molded bead foam article is in the form of a wheel (spare wheel cover) (page 2, paragraph [0021]).
Regarding claim 25, Roberts et al. teach wherein the surface forms a wheel well (curved) (page 2, paragraph [0021]).
Regarding claim 26, Roberts et al. teach wherein the molded bead foam article comprises blends of polylactic acid (page 2, paragraph [0029]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2-5, 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Roberts et al. (US Patent Application No. 2013/0189470).
Regarding claim 2, Roberts et al. teach a molded (page 1, paragraphs [0005], [0006]) bead foam article (page 1, paragraphs [0004]-[0006]) comprising polylactic acid (page 2, paragraph [0028]), wherein the molded (page 1, paragraphs [0005], [0006]) bead foam article comprises at least one surface (page 1, paragraphs [0004]-[0006]).
The product-by-process limitation “wherein at least a portion of the at least one surface has been skin-formed” would not be expected to impart distinctive structural characteristics to the article. The product itself does not depend on the process of making it. MPEP 2113. It can therefore be ascertained that the article of Roberts et al. possesses the same characteristics as the Applicant’s claimed article.
Roberts et al. do not disclose wherein the skin formed portion of the at least one surface has a greater compressive resistance than a conventional EPS-based foamed article having the same density. However, where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in compressive resistance involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the compressive resistance of Roberts et al. in order to increase the stiffness of the core (Roberts et al., page 2, paragraphs [0027], [0028]).
Regarding claim 3, Roberts et al. teach a molded (page 1, paragraphs [0005], [0006]) bead foam article (page 1, paragraphs [0004]-[0006]) comprising polylactic acid (page 2, paragraph [0028]), wherein the molded (page 1, paragraphs [0005], [0006]) bead foam article comprises at least one surface (page 1, paragraphs [0004]-[0006]).
The product-by-process limitation “wherein at least a portion of the at least one surface has been skin-formed” would not be expected to impart distinctive structural characteristics to the article. The product itself does not depend on the process of making it. MPEP 2113. It can therefore be ascertained that the article of Roberts et al. possesses the same characteristics as the Applicant’s claimed article.
Roberts et al. do not disclose wherein the skin formed portion of the at least one surface has a lower density than a conventional EPS-based foam article having eh same compressive resistance. However, where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in density involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the density of the skin formed portion of Roberts et al. in order to capture frequencies emanating from road and wind noise as well as vibration and harshness emissions (Roberts et al. page 5, paragraph [0057]).
Regarding claim 4, Roberts et al. teach a molded (page 1, paragraphs [0005], [0006]) bead foam article (page 1, paragraphs [0004]-[0006]) comprising polylactic acid (page 2, paragraph [0028]), wherein the molded (page 1, paragraphs [0005], [0006]) bead foam article comprises at least one surface (page 1, paragraphs [0004]-[0006]).
The product-by-process limitation “wherein at least a portion of the at least one surface has been skin-formed” would not be expected to impart distinctive structural characteristics to the article. The product itself does not depend on the process of making it. MPEP 2113. It can therefore be ascertained that the article of Roberts et al. possesses the same characteristics as the Applicant’s claimed article.
Roberts et al. do not disclose wherein the skin formed portion of the at least one surface has a compressive resistance that is 30-50% greater than a surface of a PLA-based molded bead foam article that has not been skin formed. However, where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in compressive resistance involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the compressive resistance of Roberts et al. in order to increase the stiffness of the core (Roberts et al., page 2, paragraphs [0027], [0028]).
Regarding claim 5, the product-by-process limitation “wherein at least a portion of the at least one surface has been skin-formed” would not be expected to impart distinctive structural characteristics to the article. The product itself does not depend on the process of making it. MPEP 2113. It can therefore be ascertained that the article of Roberts et al. possesses the same characteristics as the Applicant’s claimed article.
Roberts et al. do not disclose wherein the skin formed corner or skin formed edge is effective to increase a drop resistance of the molded bead foam article without changing the density. However, where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in drop resistance involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the drop resistance of Roberts et al. in order to increase the stiffness of the core (Roberts et al., page 2, paragraphs [0027], [0028]).
Regarding claims 27 and 28, the product-by-process limitation “wherein at least a portion of the at least one surface has been skin-formed” would not be expected to impart distinctive structural characteristics to the article. The product itself does not depend on the process of making it. MPEP 2113. It can therefore be ascertained that the article of Roberts et al. possesses the same characteristics as the Applicant’s claimed article.
Roberts et al. do not disclose wherein the skin formed portion comprises a monolithic region of the molded bead foam article having a heightened degree of bead fusion compared to beads in an interior of the molded bead foam article, without a separate skin layer, wherein the skin formed portion has a compressive strength that is increased compared to a non-skin-formed portion of the molded bead foam article without a change in density. However, where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in regions and compressive strength involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the regions and compressive strength of Roberts et al. in order to increase the stiffness of the core (Roberts et al., page 2, paragraphs [0027], [0028]).
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Roberts et al. (US Patent Application No. 2013/0189470) in view of Lee et al. (US Patent Application No. 2014/0050904).
Roberts et al. are relied upon as disclosed above.
Regarding claims 9 and 10, Roberts et al. fail to teach wherein the article further comprises identifying information printed directly on the skin formed portion of the at least one surface. However, Lee et al. teach a foam article comprising polylactic acid and at least one surface (page 1, paragraph [0006]), wherein the surface comprises a printed layer (page 3, paragraph [0066]), wherein the printed layer comprises ink comprising water (page 4, paragraph [0080]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the printed layer of Lee et al on the skin formed portion of Roberts et al. in order to impart various patterns and/or colors to the sheet to further improve the aesthetics of the sheet (Lee et al., page 3, paragraph [0066]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Roberts et al. (US Patent Application No. 2013/0189470) in view of Ruckdaschel et al. (US Patent Application No. 2017/0369667).
Roberts et al. are relied upon as disclosed above.
Regarding claim 11, Roberts et al. fail to teach wherein the molded bead foam article has an anisotropic compressive modulus and/or an anisotropic flexural modulus. However, Ruckdaschel et al. teach a molded foam (page 2, paragraph [0017]) comprising polylactic acid (page 5, paragraph [0085]), wherein the molded foam has an anisotropic compressive strength (page 2, paragraph [0031]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to modify the compressive modulus of Roberts et al. to that of Ruckdaschel et al. in order to provide different properties in different spatial directions (Ruckdaschel et al., page 6, paragraph [0108]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Roberts et al. (US Patent Application No. 2013/0189470) in view of Waggoner et al. (US Patent Application No. 2022/0111570).
Roberts et al. are relied upon as disclosed above.
Regarding claim 12, Roberts et al. fail to teach wherein the article further comprises a label with product information printed directly on the skin formed surface. However, Waggoner et al. teach an thermoformed expanded polylactic acid sheet (page 1, paragraph [0005], page 5, paragraph [0050], page 13, paragraph [0132]) comprising a label (page 15, paragraph [0152], page 18, paragraph [0180]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the label of Waggoner et al. on the skin formed surface of Roberts et al. in order to provide exceptional print quality (Waggoner et al., page 18, paragraph [0180]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Roberts et al. (US Patent Application No. 2013/0189470) in view of Bhargava (US Patent Application No. 2016/0325472).
Roberts et al. are relied upon as disclosed above.
Regarding claim 15, Roberts et al. fail to teach wherein the molded bead foam article is in the form of an automobile headrest. However, Bhargava teaches a molded bead foam article (page 1, paragraphs [0004], [0006], [0007]) comprising PLA (page 2, paragraph [0027]), wherein the molded bead foam article is in the form of an automobile headrest (page 5, paragraph [0060]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the article of Roberts et al. as an automobile headrest as that of Bhargava in order to provide use in the automotive industry, where lighter materials are desired (Bhargava, page 5, paragraph [0060]).
Response to Arguments
Applicant's arguments filed 5/4/2026 with respect to claims 1-16, 25-28 of record have been carefully considered but are moot due to the new grounds of rejection.
Applicant argues that, regarding claims 2-5, the specification demonstrates unexpected results that rebut this position. It is the Examiner’s position that the examples in the specification do not show that the compressive resistance, density or drop resistance cannot be optimized. There is no evidence of record that shows that Robert’s article properties are not optimizable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHINESSA GOLDEN whose telephone number is (571)270-5543. The examiner can normally be reached on Monday - Friday; 8:00 - 4:00 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached on 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Chinessa T. Golden/Primary Examiner, Art Unit1788 7/17/2026
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