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 .
Election/Restrictions
Applicant's election with traverse of Group II, Claims 10 – 14, in the reply filed on July 24, 2026 is acknowledged. The traversal is on the ground(s) that the Office has failed to provide any evidence to support the assertion that the claimed product can be made by another and materially different process, e.g. one in which the average hole diameter of the through holes is equal to or greater than 1 mm and/or a ratio [D/d] of the beads is greater than 0.4. This is not found persuasive because the evidence is itself is found in the instant claims. Claim 1 sets forth both of these features are required in a method of producing the claims, whereas neither of these features is present as a product-by-process limitation in product Claim 10.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1 – 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 24, 2026.
Claim Rejections - 35 USC § 102
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 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.
Claims 10 – 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2006-307177 to Sasaki. For the purposes of examination, citations for Sasaki are taken from the machine translation of the document filed with the United States Patent and Trademark Office on December 21, 2023, except where expressly noted to be taken from a machine translation of Table 1 of the document obtained from Google Translate in August 2026.
Regarding Claim 10, 13, and 14. Sasaki teaches a molded article of polypropylene resin expanded beads [0001], the molded article being formed by fusion-bonding cylindrical/tubular polypropylene-based resin expanded beads each having a through-hole ([0015], [0060], and [0073]). The obtained molded article has a density of 20 to 35 g/L (kg/m3), as well as porosity/voidage of 0 to 11% by volume [0066].
Sasaki teaches the concept of increasing the closed cell ratio of the molded article [0023] but does not expressly quantify the closed and open cell contents of molded article. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Sasaki teaches a product prepared from all of the claimed ingredients in the claimed amounts and also having other property values (density and voidage) in the instantly claimed ranges. Further, Sasaki teaches its molded article is prepared by a substantially similar process According to the original specification, Comparative Beads F and H fail to provide a closed and open cell contents in the instantly claimed ranges due to higher hole diameters (3.31 and 1.55 mm, instead of the 0.95mm or less for the other beads), as well as higher carbon dioxide pressure (3.3 and 3.6 MPa). On the other hand, Sasaki teaches a substantially similar process to that used in the application, in which the through hole diameter is less than 0.95 mm and the carbon dioxide pressure is 2.2 or 1.8 MPa in Examples 1, 5, and 6 (see translated Table 1).
Therefore, the claimed effects and physical properties, i.e. a closed cell and open cell contents in the instantly claimed ranges, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 12. Sasaki teaches the molded article of polypropylene resin expanded beads of Claim 1 is silent regarding the ratio [S/DE] of the molded article.
Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Sasaki teaches a product prepared from all of the claimed ingredients in the claimed amounts and also having other property values (density and voidage) in the instantly claimed ranges. Further, Sasaki teaches its molded article is prepared by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a ratio [S/DE] of the molded article in the instantly claimed range, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
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.
Claim 10 – 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 11 of U.S. Patent No. 12,589,534. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
The claims of U.S. Patent No. 12,589,534 differ from the instant claims in that they forth a closed cell content of 85% or more, which substantially overlaps with the instantly claimed range of 90% or more. Moreover, while the claims U.S. Patent No. 12,589,534 do not expressly set forth the open cell content of the molded article, this can be calculated from the claimed closed cell content to be 15% or less, which also substantially overlaps with the instantly claimed open cell content range of 12% or less.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to molded articles formed by fusion-bonding polypropylene-based resin expanded beads having through-holes.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
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.
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
Prosecution Insights