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 .
Continued Examination Under 37 CFR 1.114
2. 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 final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 1, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on July 1, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
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.
4. Claims 1-2, 4-8, 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.
5. 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 any of the oils such as soybean oil and rosin (col. 6, lines 1-9). The blowing agent powder further comprises lead sulfate, zinc carbonate, and/or magnesium sulfate, i.e. inorganic salts (col. 3, lines 20-35; as to instant claim 1).
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).
6. Thus, based on the teachings of Maekawa et al, it would have been obvious to a one of ordinary skill in the art to choose and use the rosin as the only “oil-like substance” or in further combination with at least a minor amount of other oils such as soybean oil as the “oil-like substance”, and further choose and use inorganic salts as additives to form the blowing agent of Maekawa et al as well, since it would have been obvious to choose material based on its suitability. 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).
7. 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).
8. 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 and other oils such as soybean oil, further in combination with inorganic salts 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, 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, and the blowing agent of Maekawa et al comprising said functionalized sodium hydrogen carbonate particles would be reasonably expected to provide the expansion ratio of the thermoplastic polymer that is either the same as that claimed in instant invention, or having values in the range overlapping with that as claimed in instant invention as well, especially since,
a) as evidenced by Cavalier et al,
i) 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);
ii) the functionalized sodium bicarbonate particles treated with resin acids, one or more oils and inorganic salts, used as blowing agent, provide expansion ratio in the foamable polymers of at least 270, or at least 300 (see [0057], [0061]-[0062], [0064] of Cavalier et al)., and
b) 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.
9. 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).
10. 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).
11. 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.
12. As to instant claim 10, the blowing agent powder further silica gel (col. 5, lines 20-22).
13. 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).
14. 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).
15. Claims 1-2, 4-10 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.
16. 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 4-14 above is incorporated here by reference.
17. 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.
18. 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).
19. 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 to further promote production of carbon dioxide, and further silica as additional filler/stabilizer in the blowing agent powder of Maekawa et al, 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).
20. 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, and the blowing agent of Maekawa et al comprising said functionalized sodium hydrogen carbonate particles would be reasonably expected to provide the expansion ratio of the thermoplastic polymer that is either the same as that claimed in instant invention, or having values in the range overlapping with that as claimed in instant invention as well, especially since,
a) as evidenced by Cavalier et al,
i) 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);
ii) the functionalized sodium bicarbonate particles treated with resin acids, one or more oils and inorganic salts are providing expansion ratio in the foamable polymers of at least 270, or at least 300 (see [0057], [0061]-[0062], [0064] of Cavalier et al)., and
b) 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.
21. Claims 1-2, 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Savary et al (EP 3,037,388), as evidenced by Soap, Wikipedia flyer 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.
22. 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, and fatty acid or salts, specifically sodium salts of stearic acid (Abstract, [0029], [0030], [0031]).
Further, based on the teachings of Savary et al that abietic acid and fatty acids salts, such as sodium stearate, can be used as additive to treat said alkali metal bicarbonate, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of the abietic acid and the fatty acid salt such as sodium stearate as the additive in the composition of Savary et al as well, and further 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).
23. It is noted that by definition, such as provided by Wikipedia, soap is a fatty acid salt, specifically sodium stearate (see Soap, Wikipedia flyer), as also presented below:
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Thus, Savary et al teaches the alkali metal bicarbonate particles treated with an additive comprising abietic acid and further fatty acid salt, wherein said fatty acid salt/sodium stearate of Savary et al corresponds to the “additional additive comprising one or more soaps” of instant claim 1.
24. 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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25. 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).
26. Though Savary et al does not explicitly recite DSC maximum peak temperature of the functionalized bicarbonate particles, and does not explicitly teach said functionalized/treated alkali metal bicarbonate providing an expansion ratio of thermoplastic polymers of at least 260%,
since the alkali metal bicarbonate particles functionalized with abietic acid/rosin acid and fatty acid salt 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 alkali metal bicarbonate particles of Savary et al will intrinsically and necessarily have, or alternatively, would be reasonably expected to have DSC maximum peak temperature and 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, and said functionalized/treated alkali metal bicarbonate-based blowing agent would be reasonably expected to provide an expansion ratio of thermoplastic polymers of at least 260% as well, especially since, as evidenced by Cavalier et al,
a) 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 further
b) the functionalized sodium bicarbonate particles treated with resin acids and fatty acid salts are providing expansion ratio in the foamable polymers of at least 270, or at least 300 (see [0057], [0067] 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 or 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.
27. 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).
28. 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).
29. As to instant claims 4-5, the amount of the additive comprising resin acid and fatty acid salt is 0.1-20 pbw per 100 pbw of sodium metal bicarbonate ([0042]).
30. 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).
31. 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.
32. 14. All ranges in the blowing agent powder of Savary 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).
33. Claims 1-2, 4-10 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), as evidenced by Soap, Wikipedia flyer 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.
34. The discussion with respect to Savary et al as evidenced by Soap, Wikipedia flyer only, or alternatively as further evidenced by Cavalier et al (US 2019/0225765) set forth in paragraphs 21-32 above is incorporated here by reference.
35. 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.
36. 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]).
37. 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).
38. 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, and further said functionalized/treated alkali metal bicarbonate would be reasonably expected to provide an expansion ratio of thermoplastic polymers of at least 260% as well, especially since, as evidenced by Cavalier et al,
a) 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 further
b) the functionalized sodium bicarbonate particles treated with resin acids and fatty acid salts are providing expansion ratio in the foamable polymers of at least 270, or at least 300 (see [0057] 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.
Response to Arguments
39. Applicant's arguments filed on June 5, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
40. In addition, it is noted that Kohlstrung et al (US 2017/0002164) is a secondary reference, which was applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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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.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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