DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 10,982,067. Although the claims at issue are not identical, they are not patentably distinct from each other because US Patent ‘067 recites an article of footwear comprising a mid-sole, an outsole, or both, wherein the midsole or outsole or both include a composition, wherein the composition comprises one or more ionomeric copolymers, wherein each of the one or more ionomeric copolymers includes chain units derived from one or more olefins and chain units derived from one or more ethylenically-unsaturated acid groups; and a plurality of cations, wherein the cations ionically crosslink anionic groups from the acid groups in the ionomeric copolymers (claim 1), wherein each of the plurality of cations is an organic cation (claim 16).
Claims 1-12 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,802,189. Although the claims at issue are not identical, they are not patentably distinct from each other because US Patent ‘189 recites an article comprising a composition, wherein the composition comprises one or more ionomeric copolymers, wherein each of the one or more ionomeric copolymers includes chain units derived from one or more olefins and chain units derived from one or more ethylenically-unsaturated acid groups; and a plurality of organic cations, wherein the organic cations ionically crosslink anionic groups from the acid groups in the ionomeric copolymers (claim 1).
US Patent ‘189 recites the article according to claim 1, wherein a ratio II of a total parts by weight of the one or more ethylenically-unsaturated acid groups in the ionomeric copolymers to a total weight of the one or more ionomeric copolymers is about 0.1-0.5 (claim 2).
US Patent ‘189 recites the article according to claim 1, wherein the one or more ionomeric copolymers are copolymers of ethylene, acrylic acid, and an acrylate (claim 3).
US Patent ‘189 recites the article according to claim 3, wherein a ratio III of a total parts by weight of the acrylic acid in the one or more ionomeric copolymers to a total weight of the one or more ionomeric copolymers is about 0.05 to about 0.6 (claim 4).
US Patent ‘189 recites the article according to claim 3, wherein a ratio IV of a total parts by weight of the acrylate in the one or more ionomeric copolymers to a total weight of the one or more ionomeric copolymers is about 5% to about 20% (claim 5).
US Patent ‘189 recites the article according to claim 1, wherein the composition further comprises one or more olefinic polymers (claim 6).
US Patent ‘189 recites the article according to claim 6, wherein each of the one or more olefinic polymers is independently selected from the group consisting of an ethylene-based copolymer, a propylene-based copolymer, and a butene-based copolymer (claim 7).
US Patent ‘189 recites the article according to claim 7, wherein at least one of the one or more olefinic polymers is an ethylene-based copolymer (claim 8).
US Patent ‘189 recites the article according to claim 8, wherein the ethylene-based copolymer is selected from the group consisting of a styrene-ethylene/butylene-styrene (SEBS) copolymer; an ethylene-propylene diene monomer (EPDM) copolymer; an ethylene-vinyl acetate (EVA) copolymer; an ethylene alkyl acrylate (EAA) copolymer; an ethylene alkyl methacrylate (EAMA) copolymer; an ethylene-octene (POE) copolymer; an ethylene-butene (PEB) copolymer, any copolymer thereof, and any blend thereof (claim 9).
US Patent ‘189 recites the article according to claim 6, wherein a ratio V of a total parts by weight of the one or more olefinic polymers present in the composition to a total parts by weight of the one or more ionomeric copolymers in the composition is about 0.01 to about 0.6 (claim 10).
US Patent ‘189 recites the article according to claim 1, wherein each of the one or more ionomeric copolymers comprises a plurality of a first repeat unit having a formula according to Formula I and a plurality of a second repeat unit having a formula according to Formula II,
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wherein each of the cations is crosslinking two or more of the second repeat units; wherein each occurrence of R1 is independently none, a substituted or unsubstituted C1-C8 alkyl, or a substituted or unsubstituted C2-C8 alkenyl; wherein each occurrence of R2 is independently hydrogen, a halogen, a substituted or unsubstituted C1-C8 alkyl, a substituted or unsubstituted C2-C8 alkenyl, a substituted or unsubstituted phenyl, a substituted or unsubstituted alkyl-phenyl, a substituted or unsubstituted C1-C8 alkoxy, or a substituted or unsubstituted C3-C12 alkyl ester; wherein each occurrence of R3 is independently hydrogen, a substituted or unsubstituted C1-C8 alkyl, or a substituted or unsubstituted C2-C8 alkenyl; wherein each occurrence of R5 is independently a hydrogen, a halogen, a substituted or unsubstituted C1-C8 alkyl, a substituted or unsubstituted C2-C8 alkenyl, a substituted or unsubstituted phenyl, a substituted or unsubstituted alkyl-phenyl, a substituted or unsubstituted C1-C8 alkoxy, or a substituted or unsubstituted C3-C12 alkyl ester; wherein each occurrence of R6 is independently none, a substituted or unsubstituted C1-C8 alkyl, a substituted or unsubstituted C2-C8 alkenyl, a substituted or unsubstituted phenyl, a substituted or unsubstituted alkyl-phenyl, or a substituted or unsubstituted C1-C8 alkoxy; and wherein each occurrence of R7 is independently a carboxylate, a sulfate, a sulfonate, a nitrate, a phosphate, a phosphonate, or another negatively charged functional group (claim 11).
US Patent ‘189 recites the article according to claim 11, wherein a ratio II of a total parts by weight of the second repeat unit to a total weight of the one or more ionomeric copolymers is about 0.1 to about 0.6 (claim 12).
US Patent ‘189 recites the article according to claim 1, wherein the composition has an energy return of about 75% to about 90% (claim 14).
Prior Art
Claims 1-12 and 18 are rejected under Obvious Double Patenting as indicated above. However, there are no prior art rejections over the claims. Claims 13-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The closest prior art references the following:
(1) Sullivan et al. (US 2018/0229084); (2) Watanabe et al. (US 2008/0305890); and (3) Hsu (US 6,797,737).
Sullivan et al. teach an article comprising a foam made from a composition comprising HPF 1000 (¶46), wherein the foam has a preferred specific gravity of less than 0.70 g/cc (¶104). As evidenced by Watanabe, HPF 1000 is an olefin-based copolymer ionomer resin including chain units derived from ethylene, chain units derived from acrylic acid, and an acrylate, wherein all of the acid groups are neutralized with magnesium ions, which are metal cations. The metal cations will ionically crosslink anionic groups from the acid groups in the HPF 1000 copolymer ionomer (see ¶139 of Watanabe et al.). Sullivan teaches ionomeric copolymers which are terpolymers of ethylene, methyl acrylate, and acrylic acid, and also teaches ionomeric copolymers which are copolymers of ethylene, acrylic acid, and butyl acrylate. See ¶82. The range articles of Sullivan et al. have a specific gravity having a lower limit of 0.20 and an upper limit of 0.60 (¶104).
Sullivan teaches that the performed ionomers having an E/X/Y-type acid copolymers, wherein E is ethylene, X is a C3-C8 ethylenically unsaturated carboxylic acid, and Y is a softening monomer, with examples of X including (preferably) acrylic acid, and examples of Y including acrylates such as butyl acid and methyl acrylate. See ¶82. The amount of ethylene is preferably at least 60wt%. The amount of C3 to C8 ethylenically unsaturated acid is from 1 to 35wt%. The amount of Y is from 0 to 50wt%. This is a range of ratio of acid groups to the total ionomeric copolymer of 0.01 (when 1wt% of X is present together with 60wt% ethylene and 39wt% Y (including acrylates)) to 0.35 (when 35wt% of X is present together with a mixture of 60wt% ethylene and 5wt% of Y). See ¶83. The preferred amount of Y is from 5wt% to 40wt%. Examples of Y include butyl acrylate and methyl acrylate (see ¶82).
The formula described in Sullivan includes ionomeric copolymers having a plurality of a first repeat unit which is ethylene and a plurality of a second repeat unit which meets formula II, when in formula II of the instant claims R6 is an unsubstituted C1 to C5 alkyl, and R7 is a carboxylate. Again, X of the E/X/Y ionomeric copolymer of Sullivan is present in the entire copolymer in a range of 1 to 35wt%, which is range of ratio of X to the total copolymer of 0.01 to 0.35.
Sullivan fails to teach that anionic groups from the acid groups of the ionomeric copolymers of the invention are ionically crosslinked with a plurality of organic cations. It would not have been obvious to one of ordinary skill in the art to use organic cations in place of the metal cations disclosed in Sullivan et al.
Hsu teaches a crosslinked polymer foam composition of an EVA copolymer, an acid copolymer or ionomer and a crosslinking agent (abstract). Hsu teaches examples where EVA having a MI of 1.5 is mixed with E/MAA (ethylene-methacrylic acid copolymer) a blowing agent, ZnO and zinc stearate (col. 7, ln. 22-29) to give a foam having a density of 0.11 g/cc and 0.091 g/cc (Table 1). Since water has a density of 1 g/cc, a foam density of 0.11 g/cc and 0.091 g/cc corresponds to a specific gravity of 0.11 and 0.091, respectively. EVA is a copolymer of ethylene (an olefin) is therefore an olefinic polymer. E/MAA falls in the scope of formula I of the instant claims when formula I is derived from ethylene (R1 is none, R2 and R3 are H) and when formula II is derived from methacrylic acid (R5 is methyl, R6 is none, and R7 is carboxylate). The EVA with has a MI of 1.5.
The zinc in Hsu is present as ZnO, and zinc stearate is a cation that results in crosslinking. See instant specification, pg. 23, paragraph 80. Therefore, since Hsu teaches a zinc cation present with the E/MAA copolymer, the zinc will form ionic crosslinks. Note that Hsu teaches a degree of neutralization of 20-70wt% (col. 4, ln. 26-33), which indicates ionic crosslinks are present.
Similar to Example 1, Hsu teaches Example 9 which forms a foam having a density of 0.156 g/cc, 0.153 g/cc, and 0.138 g/cc (Table IV) from a composition of EVA with a melt index of 1.5, E/MAA with 15 wt% MAA, ZnO, and zinc stearate (col. 7, ln. 53-col. 8, ln. 5). The E/MAA has a ratio of acid groups to total polymer of 0.15. It is noted that a density of 0.156 g/cc corresponds to a specific gravity of 0.156. Hsu teaches the amount of EVA is 20-98 wt% and the amount of ionomer is 2-80 wt% (col. 3, ln. 54-61 and col. 4, ln. 16-25). This gives a ratio of EVA (olefinic polymer) to ionomer of 98:2 to 20:80, or 0.25-49.
Hsu fails to teach that any anionic groups from the acid groups of the ionomeric copolymers of the invention are ionically crosslinked with a plurality of organic cations. It would not have been obvious to one of ordinary skill in the art to use organic cations in place of the metal cations disclosed in Hsu et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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