DETAILED ACTION
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-16, 25-26 in the reply filed on 9/15/2025 is acknowledged.
Examiner’s Comment
Claim 2 recites “having the same density” in line 3. It appears that the claim should recited “having a same density”.
Claim 3 recites “having the same compressive resistance” in line 3. It appears that the claim should recited “having a same compressive resistance”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16, 25 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/476956 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the copending application claims the same molded bead foam article comprising polylactic acid, wherein a surface of the article has been skin formed which is the same to the instantly claimed molded bead foam. The molded bead foam articles both comprise polylactic acid, at least one surface and at least a portion of at least one surface has been skin formed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 claim 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]), wherein at least a portion of the at least one surface is thermoformed (has been skin formed) (page 1, paragraph [0006]).
Regarding claim 6, Roberts et al. teach wherein the skin formed portion of the at least one 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 skin formed portion of the at least one 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]), wherein at least a portion of the at least one surface is thermoformed (has been skin formed) (page 1, paragraph [0006]).
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 skin formed 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 3, paragraph [0035], Fig. 1), wherein fewer than all sides of the box have a skin formed portion on a surface (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 at least one surface of the skin formed portion 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 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]), wherein at least a portion of the at least one surface is thermoformed (has been skin formed) (page 1, paragraph [0006]).
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]), wherein at least a portion of the at least one surface is thermoformed (has been skin formed) (page 1, paragraph [0006]).
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]), wherein at least a portion of the at least one surface is thermoformed (has been skin formed) (page 1, paragraph [0006]).
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, Roberts et al. teach wherein the skin formed portion of the at least one surface comprising a skin formed corner of skin formed corner of skin formed edge of the molded bead foam article (page 1, paragraphs [0004]-[0006], page 3, paragraph [0035], Figs. 1 and 2).
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]).
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]).
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.
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/Chinessa T. Golden/Primary Examiner, Art Unit 1788 12/31/2025