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 .
Response to Amendment
2. The amendment filed by Applicant on January 20, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to include limitations of the CO2 release of the functionalized particulate bicarbonate as determined by TGA analysis has its maximum at a temperature of at least 130°C, and wherein the DSC maximum peak temperature of the functionalized particulate bicarbonate as determined by DSC thermal analysis is at least 140°C.
These limitations were not previously presented and were taken from instant specification. In light of the amendment, the previous rejections not cited below are withdrawn. The previous rejections cited below are maintained but suitably framed to better address the current amendment. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 102/103
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.
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.
3. Claims 1-6, 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Savary et al (EP 3,037,388) only, or alternatively as further evidenced by Cavalier et al (US 2019/0225765).
It is noted that while the rejection is made over EP 3,037,388 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2017/0349446 is relied upon. All citations to paragraph numbers, etc., below refer to US 2017/0349446.
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
4. Savary et al discloses powder compositions having excellent CO2 release properties, used as a foaming agent ([0012], [0013]) and comprising alkali metal bicarbonate particles and an additive comprising resin acid, preferably abietic acid or liquid rosin (Abstract, [0029], [0030]).
5. It is noted that instant specification recites the functionalized particulate bicarbonate as preferably a particulate sodium bicarbonate functionalized with at least one additive (see p. 8, lines 15-21 of instant specification), which additive, as claimed in instant invention, comprises a rosin acid or any derivative or salt thereof. Further, instant invention recites abietic acid as meaning rosin acid (p. 21, lines 1-2 of instant specification):
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6. Thus, Savary et al explicitly teaches the alkali metal bicarbonate particles treated with preferably abietic acid ([0029], [0030]).
7. Savary et al further explicitly teaches that the functionalized/treated particles have excellent CO2 release properties; CO2 release typically has its maximum at a temperature of at least 130⁰C, or at least 160⁰C ([0049], as to amended claim 1).
Though Savary et al does not explicitly recite DSC maximum peak temperature of the functionalized bicarbonate particles, since the bicarbonate particles functionalized with abietic acid/rosin acid of Savary et al are essentially the same as those claimed and disclosed in instant invention, and are having CO2 maximum release at a temperature of more than 130⁰C, as claimed in instant invention, therefore, the functionalized bicarbonate particles of Savary et al will inherently have, or alternatively, would be reasonably expected to have DSC maximum peak temperature which is either the same as that claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since, as evidenced by Cavalier et al, the functionalized particulate bicarbonate particles are having DSC maximum peak temperature higher than the non-functionalized bicarbonate without additive; and the DSC maximum peak temperature of the functionalized particulate bicarbonate is at least 140⁰C, or at least 160⁰C ([0122], [0085] of Cavalier et al). The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed compositions/functionalized bicarbonate, if not taught, may be very well met by the compositions/functionalized bicarbonate of Savary et al, since the compositions/functionalized bicarbonate of Savary et al are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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.
8. It is noted that the limitation” for foaming a thermoplastic polymer precursor” of claim 1 is an intended use limitation. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
9. As to instant claim 8, the composition is produced by spray drying of an aqueous solution comprising an alkali metal bicarbonate and the resin acid, or by co-grinding the alkali metal bicarbonate in the presence of resin acid, or fluidized bed coating (Abstract, [0038]). It is further noted that limitation of instant claim 8 is a product-by-process limitation. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
10. As to instant claim 3, the composition further comprises wax ([0039])
11. As to instant claims 4-5, the amount of the resin acid used is 0.1-20 pbw per 100 pbw of sodium metal bicarbonate ([0042]).
12. As to instant claim 6, the alkali metal bicarbonate particles are having particle size D50 of at most 200 micron, or most preferably at most 20 micron ([0046]).
13. As to instant claim 2, the composition of Savary et al appears to be free from the compounds that liberate nitrogen gas or ammonia gas.
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.
14. Claims 1-8, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Maekawa et al (US 6,399,201) only, or alternatively as further evidenced by Cavalier et al (US 2019/0225765) and Savary et al (US 2017/0349446).
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
15. Maekawa et al discloses a blowing agent powder comprising powder core and an oil-like substance (Abstract), wherein the core powder comprises sodium hydrogen carbonate (col. 3, lines 1-4) and the oil-like substance comprises rosin (col. 6, lines 5-9). The blowing agent powder is produced by forming a mist of an oil-like substance and spraying the mist over the blowing agent powder by means of an atomizer (col. 6, lines 47-55).
16. The blowing agent is used for foaming of a polyvinyl chloride (col. 10, lines 13-15), i.e. a thermoplastic polymer. Further, the limitation ”for foaming a thermoplastic polymer precursor” is an intended use limitation. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
17. Though Maekawa et al does not explicitly recite the powder being sodium hydrogen carbonate and the oil-like substance being rosin, in view of the teachings of Maekawa et al that sodium hydrogen carbonate can be used as the blowing agent powder and the rosin can be used as the oil-like substance, it would have been obvious to a one of ordinary skill in the art to choose the sodium hydrogen carbonate as the blowing agent powder and the rosin as the oil-like substance to form the blowing agent powder as well, 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).
18. Though Maekawa et al does not explicitly recite temperature of maximum CO2 release and DSC maximum peak temperature of the functionalized sodium hydrogen carbonate particles with rosin, since the sodium hydrogen carbonate particles functionalized with rosin of Maekawa et al are essentially the same as those claimed and disclosed in instant invention, therefore, the functionalized bicarbonate particles of Maekawa et al will intrinsically and necessarily have, or would be reasonably expected to have the properties, including CO2 maximum release temperature and DSC maximum peak temperature, which 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, especially since, as evidenced by Cavalier et al, the functionalized particulate bicarbonate particles are having DSC maximum peak temperature higher than the non-functionalized bicarbonate without additive; and the DSC maximum peak temperature of the functionalized particulate bicarbonate is at least 140⁰C, or at least 160⁰C ([0122], [0085] of Cavalier et al) and as evidenced by Savary et al, the functionalized/treated bicarbonate particles have excellent CO2 release properties with CO2 release typically having its maximum at a temperature of at least 130⁰C, or at least 160⁰C ([0049] of Savary et al). The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed compositions/functionalized bicarbonate, if not taught, may be very well met by the compositions/functionalized bicarbonate of Maekawa et al, since the compositions/functionalized bicarbonate of Maekawa et al are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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.
19. As to instant claims 6-7, the sodium hydrogen carbonate powder comprises particle size of about 1 micron to about 100 micron (col. 3, lines 7-15); the size of the particles of rosin during spraying is about 0.1 micron to 100 micron (col. 6, lines 53-55).
Given the sodium hydrogen carbonate powder comprises particle size of about 1 micron, i.e. including size of less than 1 micron as well, and rosin during spraying is having particle about 0.1 micron, therefore, the final functionalized sodium hydrogen carbonate blowing agent will intrinsically and necessarily have, or would be reasonably expected to have the particle size that is 1 micron or close to 1 micron as well.
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).
20. As to instant claims 4-5, the amount of the rosin is 0.001-10 pbw based on 100 pbw of the sodium hydrogen carbonate (col. 6, lines 56-60).
21. As to instant claim 2, the blowing agent powders are used alone (col. 3, lines 8-9). Given the sodium hydrogen carbonate as the core powder is used alone, therefore, the blowing agent would not comprise any exothermic blowing agents, or blowing agents liberating nitrogen gas or ammonia gas as well.
22. As to instant claims 3, 10, the blowing agent powder further comprises lead sulfate, magnesium sulfate, i. e inorganic salts (col. 3, lines 27-35; col. 5, lines 10-14) and silica gel (col. 5, lines 20-22).
23. As to instant claim 8, the blowing agent powder is produced by forming a mist of an oil-like substance and spraying the mist over the blowing agent powder by means of an atomizer (col. 6, lines 47-55). Though Maekawa et al does not explicitly recite the rosin in the process of spraying/atomization being dissolved in the bicarbonate-containing solution, or spraying being conducted in a fluidized bed, it is noted that instant claim 8 is a product-by-process claim. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
24. All ranges in the blowing agent powder of Maekawa et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
25. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Maekawa et al (US 6,399,201) in view of Kohlstrung et al (US 2017/0002164), only, or alternatively as further evidenced by Cavalier et al (US 2019/0225765) and Savary et al (US 2017/0349446).
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
26. The discussion with respect to Maekawa et al (US 6,399,201) only, or alternatively as further evidenced by Cavalier et al (US 2019/0225765) and Savary et al (US 2017/0349446) set forth in paragraphs 14-24 above is incorporated here by reference.
27. Maekawa et al does not recite the blowing agent powder comprising the sodium hydrogen carbonate and rosin, further comprising a carboxylic acid or a polycarboxylic acid.
28. However, Kohlstrung et al discloses a blowing agent based on sodium bicarbonate and abietic acid ([0045]), used for foaming thermoplastic resins ([0067]), further comprising citric acid and silica ([0018], [0101], as to instant claims 9-10).
29. Since both Kohlstrung et al and Maekawa et al are related to endothermic blowing agents based on sodium bicarbonate and used for blowing thermoplastic resin, and thereby belong to the same field of endeavor, wherein Kohlstrung et al teaches the sodium bicarbonate being used in combination with citric acid, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Maekawa et al and Kohlstrung et al, and to include, at least partially, or obvious to try to include at least partially, the citric acid and silica in the blowing agent powder of Maekawa et al to further promote production of carbon dioxide, and since it would have been obvious to choose material based on its suitability. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). 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).
30. Since the sodium hydrogen carbonate particles functionalized with rosin of Maekawa et al in view of Kohlstrung et al are essentially the same as those claimed and disclosed in instant invention, therefore, the functionalized bicarbonate particles of Maekawa et al in view of Kohlstrung et al will intrinsically and necessarily have, or would be reasonably expected to have the properties, including CO2 maximum release temperature and DSC maximum peak temperature, which 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, especially since, as evidenced by Cavalier et al, the functionalized particulate bicarbonate particles are having DSC maximum peak temperature higher than the non-functionalized bicarbonate without additive; and the DSC maximum peak temperature of the functionalized particulate bicarbonate is at least 140⁰C, or at least 160⁰C ([0122], [0085] of Cavalier et al) and as evidenced by Savary et al, the functionalized/treated bicarbonate particles have excellent CO2 release properties with CO2 release typically having its maximum at a temperature of at least 130⁰C, or at least 160⁰C ([0049] of Savary et al). 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.
31. Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Savary et al (EP 3,037,388) only, or alternatively as further evidenced by Cavalier et al (US 2019/0225765).
It is noted that while the rejection is made over EP 3,037,388 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2017/0349446 is relied upon. All citations to paragraph numbers, etc., below refer to US 2017/0349446.
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
32. Savary et al discloses powder compositions having excellent CO2 release properties, used as a foaming agent ([0012], [0013]) and comprising alkali metal bicarbonate and an additive comprising resin acid, preferably abietic acid or liquid rosin (Abstract, [0029], [0030]).
Further, based on the teachings of Savary et al, it would have been obvious to a one of ordinary skill in the art to choose the combination of alkali metal bicarbonate and abietic acid as well, 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).
Thus, Savary et al explicitly teaches the alkali metal bicarbonate particles treated with preferably abietic acid ([0029], [0030]).
33. It is noted that instant specification recites the functionalized particulate bicarbonate as preferably a particulate sodium bicarbonate functionalized with at least one additive (see p. 8, lines 15-21 of instant specification), which additive, as claimed in instant invention, comprises a rosin acid or any derivative or salt thereof. Further, instant invention recites abietic acid as meaning rosin acid (p. 21, lines 1-2 of instant specification):
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34. Savary et al further explicitly teaches that the functionalized/treated particles have excellent CO2 release properties; CO2 release typically has its maximum at a temperature of at least 130⁰C, or at least 160⁰C ([0049], as to amended claim 1).
Though Savary et al does not explicitly recite DSC maximum peak temperature of the functionalized bicarbonate particles, since the bicarbonate particles functionalized with abietic acid/rosin acid of Savary et al are essentially the same as those claimed and disclosed in instant invention, and are having CO2 maximum release at a temperature of more than 130⁰C, as claimed in instant invention, therefore, the functionalized bicarbonate particles of Savary et al will intrinsically and necessarily have, or alternatively, would be reasonably expected to have DSC maximum peak temperature which is either the same as that claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since, as evidenced by Cavalier et al, the functionalized particulate bicarbonate particles are having DSC maximum peak temperature higher than the non-functionalized bicarbonate without additive; and the DSC maximum peak temperature of the functionalized particulate bicarbonate is at least 140⁰C, or at least 160⁰C ([0122], [0085] of Cavalier et al). The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed compositions/functionalized bicarbonate, if not taught, may be very well met by the compositions/functionalized bicarbonate of Savary et al, since the compositions/functionalized bicarbonate of Savary et al are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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.
35. It is noted that the limitation” for foaming a thermoplastic polymer precursor” of claim 1 is an intended use limitation. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
36. As to instant claim 8, the composition is produced by spray drying of an aqueous solution comprising an alkali metal bicarbonate and the resin acid, or by co-grinding the alkali metal bicarbonate in the presence of resin acid, or fluidized bed coating (Abstract, [0038]). It is further noted that limitation of instant claim 8 is a product-by-process limitation. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
37. As to instant claim 3, the composition further comprises wax ([0039])
As to instant claims 4-5, the amount of the resin acid used is 0.1-20 pbw per 100 pbw of sodium metal bicarbonate ([0042]).
As to instant claims 6-7, the alkali metal bicarbonate particles are having particle size D50 of at most 200 micron, or most preferably at most 20 micron ([0046]). Since the range of “at most 10 micron” includes the value of “at most 1 micron”, therefore, the range of “at most 10 micron” appears to be overlapping with the range of “at most 1 micron” and including the size of 1 micron. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Further, it would have been obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the size of the alkali metal bicarbonate particles, depending on the specific end-use of the blowing agent of Savary et al as well, thereby arriving at the present invention."[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).
As to instant claim 2, the composition of Savary et al appears to be free from the compounds that liberate nitrogen gas or ammonia gas.
38. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Savary et al (EP 3,037,388) in view of Kohlstrung et al (US 2017/0002164) only, or alternatively as further evidenced by Cavalier et al (US 2019/0225765).
It is noted that while the rejection is made over EP 3,037,388 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2017/0349446 is relied upon. All citations to paragraph numbers, etc., below refer to US 2017/0349446.
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
39. The discussion with respect to Savary et al only, or alternatively as further evidenced by Cavalier et al (US 2019/0225765) set forth in paragraphs 31-37 above is incorporated here by reference.
40. Savary et al does not recite the foaming agent powder comprising the alkali metal bicarbonate and rosin/abietic acid, further comprising a polycarboxylic acid and silica.
41. However, Kohlstrung et al discloses a blowing agent based on sodium bicarbonate and abietic acid ([0045]), used for foaming thermoplastic resins ([0067]), further comprising citric acid and silica ([0018], [0101]).
42. Since both Kohlstrung et al and Savary et al are related to endothermic blowing agents based on sodium bicarbonate, and thereby belong to the same field of endeavor, wherein Kohlstrung et al teaches the sodium bicarbonate being used in combination with citric acid, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Savary et al and Kohlstrung et al, and to include, at least partially, or obvious to try to include at least partially, the citric acid and silica in the foaming agent powder of Savary et al to further promote production of carbon dioxide, and since it would have been obvious to choose material based on its suitability. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
43. Since the bicarbonate particles functionalized with abietic acid/rosin acid of Savary et al in view of Kohlstrung et al are essentially the same as those claimed and disclosed in instant invention, and are having CO2 maximum release at a temperature of more than 130⁰C, as claimed in instant invention, therefore, the functionalized bicarbonate particles of Savary et al in view of Kohlstrung et al will intrinsically and necessarily have, or alternatively, would be reasonably expected to have DSC maximum peak temperature which is either the same as that claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since, as evidenced by Cavalier et al, the functionalized particulate bicarbonate particles are having DSC maximum peak temperature higher than the non-functionalized bicarbonate without additive; and the DSC maximum peak temperature of the functionalized particulate bicarbonate is at least 140⁰C, or at least 160⁰C ([0122], [0085] of Cavalier et al). 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.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Obviousness Double Patenting Rejection I
44. Claims 1-8, 10 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-6 of US patent 11,926,722. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
45. US patent 11,926,722 claims a chemical blowing agent for foaming a thermoplastic polymer precursor,
said chemical blowing agent consisting of a functionalized particulate sodium bicarbonate,
wherein the functionalized particulate sodium bicarbonate comprises at least 90% by weight and less than 100% by weight of the bicarbonate component, and from 0.02% to 10% by weight of at least one of said additive coated on the surface of the particulate sodium bicarbonate;
from 1-3 wt% of amorphous precipitated silica based on the total composition of the functionalized sodium bicarbonate, and
and wherein said additive in the functionalized particulate sodium bicarbonate comprises rosin acid, any derivative thereof, any salt thereof, or any combinations thereof; and
wherein the chemical blowing agent provides an expansion ratio of the thermoplastic polymer of 260-330%.
The functionalized particulate sodium bicarbonate comprises at least one additional additive selected from the group consisting of:
- polyoxyalkylenes and derivatives thereof; - poly(meth) acrylates and derivatives thereof; - polyvinylalcohol and derivatives thereof; - polysaccharides and derivatives thereof; - leucine; - epoxidized soy bean oil; - stearic acid;- lauric acid; - linoleic acid; - glycerol mono stearate; - bees wax; - carnauba wax; and - any combinations thereof.
The particles of the functionalized particulate sodium bicarbonate have a particle size distribution of D50 of more than 1 µm and at most 250 µm.
The particles of the functionalized particulate sodium bicarbonate have a particle size distribution of D50 of at most 1 µm.
The functionalized particulate sodium bicarbonate is obtained by at least one of the following processes: - by spray-drying, wherein the additive is dissolved in the bicarbonate-containing solution. - by grinding or co-grinding with the additive(s) in emulsion or powder form; - by spray coating and granulation within a fluidized bed, - by spray agglomeration within a fluidized bed, - by spray chilling, - by roller compaction, - by extrusion; and/or - by simultaneous mixing/extrusion; optionally followed by subjecting the thus obtained functionalized particulate sodium bicarbonate to milling to reduce its mean particle size.
46. Though US patent 11,926,722 does not explicitly claim the properties of the functionalized bicarbonate as required by instant claims, since the bicarbonate particles functionalized with abietic acid/rosin acid of US patent 11,926,722 are essentially the same as those claimed and disclosed in instant invention, therefore, the functionalized bicarbonate particles of US patent 11,926,722 will inherently have, or alternatively, would be reasonably expected to have the properties 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. 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.
47. Therefore, the limitations claimed in instant invention are the same as the limitations claimed in US 11,926,722.
Obviousness Double Patenting Rejection II
48. Claims 1-10 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of 1-16 of US 11,421,094 in view of Maekawa et al (US 6,399,201) and Savary et al (EP 3,037,388, based on US equivalent US 2017/0349446). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
49. US 11,421,094 claims a chemical blowing agent for foaming a thermoplastic polymer precursor, said chemical blowing agent comprising a functionalized particulate bicarbonate, wherein said functionalized particulate bicarbonate contains at least one additive, wherein the functionalized particulate bicarbonate is obtained by grinding with the additive, and wherein the additive is lauric or linoleic acid.
The chemical blowing agent does not contain a compound which liberates nitrogen gas during heating.
The additive further comprises rosin acid or derivative thereof and epoxidized soy bean oil.
The particles of the functionalized particulate bicarbonate have a particle size distribution of D50 of more than 1 µm and at most 250 µm or wherein the particles of the functionalized particulate bicarbonate have a particle size distribution of at most 1 µm.
The chemical blowing agent according to claim further comprising a second compound which liberates C02 upon heating, said second compound being selected from the group consisting of a carboxylic or polycarboxylic acid, derivative thereof, or salts thereof.
The additive in the functionalized particulate bicarbonate is at least one polymer selected from the group consisting of polyoxyalkylenes and derivatives thereof including polyethylene glycols, poly(meth)acrylates and derivatives thereof, polyvinylalcohol, polysaccharides and combinations thereof.
Though US 11,421,094 does not explicitly recite the additive in the process of spraying/atomization being dissolved in the bicarbonate-containing solution, or spraying being conducted in a fluidized bed, it is noted that instant claim 8 is a product-by-process claim. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
50. Though US 11,421,094 does not explicitly recite the additive being rosin and the blowing agent further comprising silica, and the relative amounts of the rosin acid and the bicarbonate,
1) Maekawa et al discloses a blowing agent powder comprising powder core and an oil-like substance (Abstract), wherein the core powder comprises sodium hydrogen carbonate (col. 3, lines 1-4) and the oil-like substance comprises rosin (col. 6, lines 5-9). The blowing agent powder further comprises lead sulfate, magnesium sulfate (col. 3, lines 27-35; col. 5, lines 10-14) and silica gel (col. 5, lines 20-22). The amount of the rosin is 0.001-10 pbw based on 100 pbw of the sodium hydrogen carbonate (col. 6, lines 56-60).
2) Savary et al discloses powder compositions having excellent CO2 release properties, used as a foaming agent ([0012], [0013]) and comprising alkali metal bicarbonate and an additive comprising resin acid, preferably abietic acid or liquid rosin (Abstract, [0029], [0030]). The amount of the resin acid used is 0.1-20 pbw per 100 pbw of sodium metal bicarbonate ([0042]).
51. Since all of Maekawa et al, Savary et al and US 11,421,094 are related to blowing agents comprising bicarbonate functionalized with resin acids, and thereby belong to the same field of endeavor, wherein both Maekawa et al, Savary et al specify the use of rosin/abietic acid as the resin acid additive to functionalize the bicarbonate, therefore, based on the combined teachings of Maekawa et al, Savary et al and US 11,421,094, it would have been obvious to a one of ordinary skill in the art to use, or obvious to try to use rosin/abietic acid as the additive, and further include silica gel in the blowing agent of US 11,421,094, as taught by Maekawa et al, Savary 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).
52. Though US 11,421,094 does not explicitly claim the properties of the functionalized bicarbonate as required by instant claims, since the bicarbonate particles functionalized with abietic acid/rosin acid of US 11,421,094 in view of Maekawa et al and Savary et al are essentially the same as those claimed and disclosed in instant invention, therefore, the functionalized bicarbonate particles of US 11,421,094 in view of Maekawa et al and Savary et al will intrinsically and necessarily have, or alternatively, would be reasonably expected to have the properties 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. 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.
53. Therefore, the limitations claimed in instant invention are obvious variant of the limitations claimed in US 11,421,094 in view of Maekawa et al and Savary et al.
54. Claims 1-10 are directed to an invention not patentably distinct from claims 1-16 of US 11,421,094 in view of Maekawa et al (US 6,399,201) and Savary et al (EP 3,037,388, based on US equivalent US 2017/0349446).
Specifically, see the discussion in paragraphs 47-53 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). US 11,421,094, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
55. Claims 1-10 are rejected under 35 U.S.C. 103(a) as being obvious over US 11,421,094 in view of Maekawa et al (US 6,399,201) and Savary et al (EP 3,037,388, based on US equivalent US 2017/0349446).
Specifically, see the discussion set forth in paragraphs 47-53 above.
The applied reference has a common assignee and a common inventor with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art only under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Obviousness Double Patenting Rejection III
56. Claims 1-10 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of 1-10 of US 11,339,264 in view of Maekawa et al (US 6,399,201) and/or Savary et al (EP 3,037,388, based on US equivalent US 2017/0349446).
Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
57. US 11,339,264 claims a chemical blowing agent for foaming a thermoplastic polymer precursor, said chemical blowing agent comprising a functionalized particulate bicarbonate,
wherein said functionalized particulate bicarbonate contains at least one functionalization additive, and wherein said functionalization additive in the functionalized particulate bicarbonate comprises a polyoxyalkylene additive selected from the group consisting of polyoxyalkylenes, any derivatives thereof salts thereof, and any combination of two or more thereof, and further resin acids.
The functionalized particulate bicarbonate comprises at least 50% by weight and less than 100% by weight of the bicarbonate component, and from 50% or less to 0.02% by weight of at least one of said functionalization additive.
The particles of the functionalized particulate bicarbonate have a particle size distribution of D50 of more than 1 µm and at most 250 µm.
The functionalized particulate bicarbonate further comprises silica.
The blowing agent does not contain any further blowing agent which is an exothermic blowing agent, or wherein the chemical blowing agent does not contain a compound which liberates nitrogen gas during heating, or wherein the chemical blowing agent does not contain a compound which liberates ammonia gas during heating.
The functionalized particulate bicarbonate comprises at least one additional functionalization additive selected from - one or more polymers other than the polyoxyalkylene additive; - one or more amino acids, any derivative thereof, and salts thereof; - one or more inorganic salts; - one or more oils; - one or more fats; Page 4 of 11 Dkt No S 2017/025-bco371 Nat'l Phase of International Application No. PCT/EP2018/069729 International Filing Date of 20 July 2018 Preliminary Amendment dated January 13, 2020 - one or more resin acids, any derivative thereof, and salts thereof, - one or more fatty acids, any derivative thereof, and salts thereof, - a carboxylic or polycarboxylic acid, derivative thereof or salts thereof; - one or more soaps; - one or more waxes; or - any combinations thereof.
The chemical blowing agent further comprises a second compound which liberates CO2 upon heating, said second compound being selected from the group consisting of a carboxylic or polycarboxylic acid, derivative thereof and salts thereof, wherein said second compound optionally is functionalized with at least one additive which is different or the same as the one in the functionalized particulate bicarbonat
The functionalized particulate bicarbonate further comprises silica.
Though US 11,339,264 does not explicitly recite the additive in the process of spraying/atomization being dissolved in the bicarbonate-containing solution, or spraying being conducted in a fluidized bed, it is noted that instant claim 8 is a product-by-process claim. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
58. Though US 11,339,264 does not explicitly recite the resin acid being rosin,
1) Maekawa et al discloses a blowing agent powder comprising powder core and an oil-like substance (Abstract), wherein the core powder comprises sodium hydrogen carbonate (col. 3, lines 1-4) and the oil-like substance comprises rosin (col. 6, lines 5-9).
2) Savary et al discloses powder compositions having excellent CO2 release properties, used as a foaming agent ([0012], [0013]) and comprising alkali metal bicarbonate and an additive comprising resin acid, preferably abietic acid or liquid rosin (Abstract, [0029], [0030]).
59. Since all of Maekawa et al, Savary et al and US 11,339,264 are related to blowing agents comprising bicarbonate functionalized with resin acids, and thereby belong to the same field of endeavor, wherein both Maekawa et al, Savary et al specify the use of rosin/abietic acid as the resin acid, therefore, based on the combined teachings of Maekawa et al and/or Savary et al and US 11,339,264, it would have been obvious to a one of ordinary skill in the art to use, or obvious to try to use rosin/abietic acid as the additive in the blowing agent of US 11,339,264, as taught by Maekawa et al and/or Savary 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).
60. Though US 11,339,264 does not explicitly claim the properties of the functionalized bicarbonate as required by instant claims, since the bicarbonate particles functionalized with abietic acid/rosin acid of US 11,339,264 in view of Maekawa et al and Savary et al are essentially the same as those claimed and disclosed in instant invention, therefore, the functionalized bicarbonate particles of US 11,339,264 in view of Maekawa et al and Savary et al will intrinsically and necessarily have, or alternatively, would be reasonably expected to have the properties 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. 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.
61. Therefore, the limitations claimed in instant invention are obvious variant of the limitations claimed in US 11,339,264 in view of Maekawa et al and/or Savary et al.
62. Claims 1-10 are directed to an invention not patentably distinct from claims 1-16 of US 11,339,264 in view of Maekawa et al (US 6,399,201) and Savary et al (EP 3,037,388, based on US equivalent US 2017/0349446).
Specifically, see the discussion in paragraphs 56-61 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). US 11,339,264, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
Obviousness Double Patenting Rejection IV
63. Claims 1-10 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of US 11,124,425 in view of Maekawa et al (US 6,399,201), Savary et al (EP 3,037,388, based on US equivalent US 2017/0349446) and Kohlstrung et al (US 2017/0002164).
Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
64. US 11,124,425 claims alkali metal bicarbonate particles produced by a process comprising: co-grinding of an alkali metal bicarbonate in the presence of 0.1 to 20 parts by weight of a resin acid per 100 parts of the alkali metal bicarbonate,
wherein the resin acid is selected from the group consisting of abietic acid (abieta-7,13- dien-18-oic acid), neoabietic acid, dehydroabietic acid, and palustric acid; and wherein the alkali metal bicarbonate particles are suitable as foaming agents for polymers.
The particles have a particle size distribution of D50 of at most 200 µm.
The particles comprise: at least 80 % by weight of alkali metal bicarbonate, less than 10 % by weight of alkali metal carbonate, less than 10 % by weight of water, and 0.1 to 20 % by weight of the resin acid.
65. Though US 11,124,425 does not explicitly recite the particles further comprising silica, wax; being free from compounds liberating nitrogen gas or ammonia gas, and comprising a second compound liberating CO2 upon heating, specifically a polycarboxylic acid,
1) Maekawa et al discloses a blowing agent powder comprising powder core and an oil-like substance (Abstract), wherein the core powder comprises sodium hydrogen carbonate (col. 3, lines 1-4) and the oil-like substance comprises rosin (col. 6, lines 5-9). The blowing agent powder further comprises lead sulfate, magnesium sulfate (col. 3, lines 27-35; col. 5, lines 10-14) and silica gel (col. 5, lines 20-22).
The sodium hydrogen carbonate powder comprises particle size of about 1 micron to about 100 micron (col. 3, lines 7-15); the size of the particles of rosin during spraying is about 0.1 micron to 100 micron (col. 6, lines 53-55).
Given the sodium hydrogen carbonate powder comprises particle size of about 1 micron, i.e. including size of less than 1 micron as well, and rosin during spraying is having particle about 0.1 micron, therefore, the final functionalized sodium hydrogen carbonate blowing agent will intrinsically and necessarily have, or would be reasonably expected to have the particle size that is 1 micron or close to 1 micron as well.
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).
The blowing agent powders are used alone (col. 3, lines 8-9). Given the sodium hydrogen carbonate as the core powder is used alone, therefore, the blowing agent would not comprise any blowing agents liberating nitrogen gas or ammonia gas as well.
The blowing agent powder further comprises lead sulfate, magnesium sulfate (col. 3, lines 27-35; col. 5, lines 10-14) and silica gel (col. 5, lines 20-22).
2) Savary et al discloses powder compositions having excellent CO2 release properties, used as a foaming agent ([0012], [0013]) and comprising alkali metal bicarbonate and an additive comprising resin acid, preferably abietic acid or liquid rosin (Abstract, [0029], [0030]). The composition further comprises wax ([0039])
The amount of the resin acid used is 0.1-20 pbw per 100 pbw of sodium metal bicarbonate ([0042]). The alkali metal bicarbonate particles are having particle size D50 of at most 200 micron, or most preferably at most 20 micron ([0046]).
The composition of Savary et al appears to be free from the compounds that liberate nitrogen gas or ammonia gas.
3) Kohlstrung et al discloses a blowing agent based on sodium bicarbonate and abietic acid ([0045]), used for foaming thermoplastic resins ([0067]), further comprising citric acid and silica ([0018], [0101], as to instant claims 9-10).
66. Since all of Maekawa et al, Savary et al, Kohlstrung et al and US 11,124,425 are related to blowing agents in particulate form comprising bicarbonate functionalized with rosin/abietic acid, and thereby belong to the same field of endeavor, wherein both Maekawa et al, Savary et al teach said particles further comprising waxes and silica gel, and having size of 1 micron ore more than 1 micron, and Kohlstrung et al discloses a blowing agent based on sodium bicarbonate and abietic acid, further comprising citric acid and silica, therefore, based on the combined teachings of Maekawa et al, Savary et al, Kohlstrung et al and US 11,124,425, it would have been obvious to a one of ordinary skill in the art to use, or obvious to try to further include silica, citric acid and waxes in the blowing agent of US 11,124,425, and further make the composition in the form of particles having size of 1 micron or more than 1 micron as well, as taught by Maekawa et al, Savary et al, Kohlstrung 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).
67. Though US 11,124,425 does not explicitly claim the properties of the functionalized bicarbonate as required by instant claims, since the bicarbonate particles functionalized with abietic acid/rosin acid of US 11,124,425 in view of Maekawa et al, Savary et al and Kohlstrung et al are essentially the same as those claimed and disclosed in instant invention, therefore, the functionalized bicarbonate particles of US 11,124,425 in view of Maekawa et al, Savary et al and Kohlstrung et al will intrinsically and necessarily have, or alternatively, would be reasonably expected to have the properties 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. 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.
68. Therefore, the limitations claimed in instant invention are obvious variant of the limitations claimed in US 11,124,425 in view of Maekawa et al, Savary et al and Kohlstrung et al.
69. Claims 1-10 are directed to an invention not patentably distinct from claims 1-15 of US 11,124,425 in view of Maekawa et al (US 6,399,201), Savary et al (EP 3,037,388, based on US equivalent US 2017/0349446) and Kohlstrung et al (US 2017/0002164).
Specifically, see the discussion in paragraphs 63-68 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). US 11,124,425, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
70. Claims 1-10 are rejected under 35 U.S.C. 103(a) as being obvious over US 11,124,425 in view of Maekawa et al (US 6,399,201), Savary et al (EP 3,037,388, based on US equivalent US 2017/0349446) and Kohlstrung et al (US 2017/0002164).
Specifically, see the discussion set forth in paragraphs 63-68 above.
The applied reference has a common assignee and a common inventor with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art only under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Response to Arguments
71. Applicant's arguments filed on January 20, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
72. In addition, it is noted that:
1) both Maekawa et al (US 6,399,201) and Savary et al (EP 3037388, corresponding US 2017/0349446) are related to functionalized bicarbonate, which is functionalized with the same rosin acid/abietic acid as that claimed in instant invention, and which is produced by essentially the same processes as disclosed in instant invention, therefore, said functionalized bicarbonate will inherently have, or would be reasonably expected to have the same properties as the functionalized bicarbonate claimed in instant invention. 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.
2) With respect to the arguments on pages 9 and 11, specifically to Table 9, it is noted that: example 9A, which is bicarbonate treated with rosin acid, is compared to bicarbonate non-treated at all (example 14A), wherein example 9A is showing improved properties as compared to example 14A.
However, both Maekawa et al and Savary et al teach the bicarbonate treated with rosin acid, and thereby the bicarbonate of Savary et al and Maekawa et al would have been expected to have the properties that are the same as or close to those of example 9A of Table 9, and not of Example 14A.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764