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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 6/18/2026 has been entered.
Claim Rejections - 35 USC § 112
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, 3-5 and 7-11 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.
Claims are confusing as to intent because it can not be definitively ascertained how amount values of the claims can be achieved while still allowing for other required amount conditions of the claims to be met. Particularly, it can not be definitively ascertained how the upper endpoint of the range of values for component a) can be met and still allow for even the minimum required levels of the other components of the claims.
Appropriate correction is required.
Claims are further confusing as to intent because the relevance of the range of values set forth as a limitation in the patentable sense can not be definitively ascertained without the test conditions for determining the values being set forth by the claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1, 3-5 and 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tahri et al.(2007/0100060).
Tahri et al. discloses peroxidically crosslinking ethylene-vinyl acetate (EVA) copolymer along with terpolymers as defined by applicants’ claims, and foaming agent; peroxide compound, and waxes meeting the requirements of applicants’ claims and in amounts meeting or in overlap with the requirements of the claims {see abstract, paras [0034]-[0074] and the Example and Claims}. Regarding the MFI values of applicants’ claims, to the degree that they can be ascertained {see rejection under 35USC112 above}, they are met by those disclosed by Tahri et al.{para [0048]}.
Regarding claims 7 & 10 and the methods of claims 8 & 9, filled, molded parts are formed and filling and heating operations are disclosed that are sufficient to meet the functions and operations recited by these claims {paras [0032], [0073], [0078], [0083]-[0091], Examples and claims}.
Claims differ from Tahri et al. in that the overlap in amounts of materials constituting the a) polymer materials of the instant concern are not exact. However, overlap is evident {see paras [0036] & [0074]} for purposes of achieving articles of good vibration dissipative value. Accordingly, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized the combination of polymer materials of Tahri et al. in any amount provided for by Tahri et al. for the purpose of achieving articles having good vibration dissipative effects in order to arrive at the products and processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Further, a prima facie case of obviousness has been held to exist where the proportions of a reference are close enough to those of the claims to lead to an expectation of the same properties. Titanium Metals v Banner 227 USPQ 773. (see also MPEP 2144.05 I).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tahri et al.(2007/0100060) as applied to claims 1, 3-5 and 7-10 above, and further in view of Soderberg(5,385,951).
Tahri et al. differs from claim 11 in that the co-agent of this claim is not particularly required. However, Soderberg discloses triallyl cyanurate in amount(s) as claimed as a co-agent in closely related preparations for purposes of boosting initial crosslinking {see column 3 lines 61-63 and column 4 lines 33-35). Accordingly, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized the co-agent of Soderberg in the preparations of Tahri et al. for the purpose of boosting initial crosslinking in order to arrive at the products of applicants’ claim with the expectation of success in the absence of a showing of new or unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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