DETAILED ACTION
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 4-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reuter et al. (US 4,158,031).
Reuter et al. discloses a molded electrically conducting foam product comprising polystyrene, blowing agent, and carbon black. The source of polystyrene is Styropor (col. 1, line 46) which contains pentane and isopentane as the blowing agent. The polystyrene, blowing agent, and carbon black are combined and heated to induce expansion in a metal mold, thereby producing a molded foam having a plurality of pores.
Claims 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Reuter et al. (US 4,158,031).
The discussion of the disclosure from the preceding paragraph is incorporated here by reference. Reuter et al. is silent regarding physical properties of compositions as recited in claims 14-18. However, in view of the fact that prior art composition is substantially the same as that described in instant claims, one of ordinary skill in the art would have expected prior art composition to exhibit substantially the same properties. Since the PTO cannot perform experiments, the burden is shifted to the Applicants to establish an unobviousness difference. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112-2112.02.
Claims 1, 4, 6-11, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Obata et al. (JP 2004-323579).
Example 1 of Obata et al. discloses a composition for making molded electrically conducting foam, wherein the composition comprises epichlorohydrin rubber, nitrile butadiene rubber, conductive zinc oxide, reinforcing carbon black, and foaming agent. The composition exhibits a Shore A hardness of 25. Example 2 contains conductive carbon black in place of reinforcing carbon black and exhibits a Shore A hardness of 27. All components are compounded, and extrusion molded into a hollow cylindrical body with an inner diameter of 10 mm. The foaming agent is not identified, but, as with any material, it will be classified as organic or inorganic.
Claims 14-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Obata et al. (JP 2004-323579).
The discussion of the disclosure from the preceding paragraph is incorporated here by reference. Obata et al. is silent regarding physical properties of compositions as recited in claims 14-18. However, in view of the fact that prior art composition is substantially the same as that described in instant claims, one of ordinary skill in the art would have expected prior art composition to exhibit substantially the same properties. Since the PTO cannot perform experiments, the burden is shifted to the Applicants to establish an unobviousness difference. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112-2112.02.
Claims 1-5, 7-9, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mommer et al. (US 2011/0192564).
Mommer et al. discloses a sheet material comprising a thermally conductive foam layer made from silicone, polyurethane, polyolefin, styrenic polymer, epoxy resin, polyisocyanurate, fluoroelastomer or combinations thereof (paragraph [0066]; claim 18). The foam contains thermally conductive filler (paragraph [0038]; claim 21) selected from metal oxide such as silica, alumina, zinc oxide, or magnesium oxide and metal nitrides selected from aluminum nitride, silicon nitride or boron nitride. The cells of the foam are formed by incorporation of foaming agent selected from well-known materials (paragraphs [0043] and [0044]). The thermally conductive foam layer is prepared by molding, and as shown in Figure 1, a sheet material 100 is made having the thermally conductive foam layer 102, with one surface coated with an adhesive layer 108.
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Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Mommer et al. (US 2011/0192564) in view of Deng (CN 206812561).
The discussion of the disclosure from the preceding paragraph is incorporated here by reference. Mommer et al. does not disclose the identity of the adhesive used to form adhesive layer 108. Deng teaches a polyurethane foam comprising adhesive layers made of a polyacrylate adhesive (paragraph [0010]). Such a material qualifies as polymeric binder, recited in instant claim. One of ordinary skill in the art constructing the sheet material 100 of Mommer et al. would have found it obvious to use a polyacrylate adhesive to form adhesive layer 108. Since Deng teaches use of polyacrylate adhesive for this application, one of ordinary skill in the art would have expected the combination of references to work with a reasonable expectation of success.
Claims 1-3, 7, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Makihara et al. (JP 2008-239729).
Example 1 in Table 1 of Makihara et al. discloses a foamed sheet prepared from mechanical foaming of a composition comprising polyurethane methacrylate oligomer and aluminum hydroxide. Aluminum hydroxide is a thermally conductive filler. An inert inorganic gas such as nitrogen is incorporated into the composition to impart foaming. Other gases include carbon dioxide, argon and helium, as well as organic gases such as chlorofluorocarbons and low molecular weight hydrocarbons (paragraph [0024]). Exemplary composition comprises polyurethane methacrylate oligomer, but inventors also teach preparation a foamed sheet with polyurethane acrylate oligomer (paragraph [0015]). Prior art teaches a small genus of oligomer which places the claimed species in the possession of the public as in In re Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would have been obvious even if the genus were not sufficiently small to justify a rejection under 35 U.S.C. 102.
Claims 9, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Makihara et al. (JP 2022-109736) in view of Brennan et al. (GB 2501678).
One of ordinary skill in the art would have found it obvious to mold the foamed sheet into a variety of intended objects. For instance, the skilled artisan would have found it obvious from Brennan et al. to use foamed sheet to make a foam backed wristband.
Claims 1-3, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda et al. (JP 2022-109736) in view of Brullo (US 4,071,652).
Example 1 in Table 1 of Ueda et al. discloses a foamed sheet prepared from mechanical foaming of a composition comprising urethane acrylate, Expancel 920DE80 hollow particles (microbead blowing agent), and Aerosil 200 silica. Silica is known in the art as a thermally conductive filler (see Brullo, examples 1-4 and claims 1-4).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones, can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/RIP A LEE/Primary Examiner, Art Unit 1762 April 28, 2026
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