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 .
Claims Status
Claims 1-21 are pending. Claims 1 and 7 are amended. Claims 13-21 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Response to Amendments/Arguments
Applicant's amendments and arguments with regard to the rejection of present claim(s) 1 and 3-11 under 35 U.S.C. 102(a)(1) as being anticipated by Roberts (US 2015/0118426) have been fully considered, but they are not persuasive for at least the following reasons.
Applicant contends that (1) Roberts does not teach a molded bead foam article as instantly claimed, because claim 1 now requires that each component foam article is molded prior to any skin-forming operation, and that the first surface and second surface are skin-formed by applying heat to join and densify beads at the surfaces after the molding step (remarks, page 6, last para); (2) Roberts describes a single foam core formed in situ within an external shell by expanding polymer beads using steam, and per applicant, the foam core disclosed in Roberts is molded as one monolithic structure, and nothing in Roberts teaches or suggests two initially-separate component foam articles that are individually molded and then subsequently skin-formed, thereby joining them together while simultaneously forming the living hinge (remarks, page 7, first para); and (3) Roberts does not teach a molded bead foam article as instantly claimed, because amended claim 1 requires that the first and second surfaces "have been skin- formed" and that such skin-forming occurs "after molding of the component foam articles" by applying heat to join and densify beads at those surfaces (remarks, page 7, second para).
In response to contention (1), Applicant's arguments have been fully considered, but they are not found persuasive. It should be noted that the argued differences in the instantly claim 1 that each component foam article is “molded prior to any skin-forming operation”, and that “the first surface and second surface are skin-formed by applying heat to join and densify beads at the surfaces after the molding step” are considered as product-by-process limitations.
It is the examiner’s position that the recited process (i.e., how the component is made/molded, and when it is made, and the process of how the skin is formed/by applying heat to join and densify beads at the first surface and the second surface, the skin-forming occurring after molding of the component foam articles) does not result in a patentably distinctive structural difference in the resultant molded bead foam article. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113. [E]ven 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 a 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
In response to contention (2), Applicant's arguments have been fully considered, but they are not persuasive. The examiner does not agree with applicant’s characteristic of Roberts that Roberts describes a single foam core. Roberts teaches various embodiments and as in one of its embodiments, Roberts clearly teaches a molded bead foam article (414, Fig. 22, para [0130] [0122] and [0123]) comprising at least two component foam articles (see annotated Fig. 22 below for reference to first component foam article/core and second component foam article/core, which are clearly two separate foam articles/foam cores) formed from polylactic acid (para [0122], the suitable materials for the foam core include polylactic acid/PLA).
PNG
media_image1.png
246
270
media_image1.png
Greyscale
In response to contention (3), Applicant's arguments have been fully considered, but they are not found persuasive. It should be noted that the argued differences (i.e., that amended claim 1 requires that the first and second surfaces "have been skin- formed" and that such skin-forming occurs "after molding of the component foam articles" by applying heat to join and densify beads at those surfaces, see remarks, page 7, second para) are considered as product-by-process limitation. It is the examiner’s position that the recited process does not result in a patentably distinctive structural difference in the resultant molded bead foam article. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113. [E]ven 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 a 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
In the present case, the molded bead foam article of Roberts (414, Fig. 22) comprises two component foam articles (see annotated Fig. 22 for reference to first component foam article/core and second component foam article/core formed from polylactic acid, para [0122]), and the first surface and second surface have been skin-formed (para [0121] [0122] [0132], the first surface of the first foam article and the second surface of the second foam article both being skin-formed, as the formed skin layer 422/424, see Fig. 22), that meets the claimed materials limitations and structural configuration limitations of the instantly claimed molded bead foam article.
The rejections below are updated to address the present claims. Any rejections and/or objections, made in the previous Office Action, and not repeated in the present Office Action, are hereby withdrawn.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 3-6 and 8-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roberts (US 2015/0118426).
Regarding claim 1, Roberts teaches a molded bead foam article (414, Fig. 22, para [0130] [0122] and [0123], the molded foam article is of bead foam) comprising at least two component foam articles (see annotated Fig. 22 below for reference to first component foam article/core and second component foam article/core) formed from polylactic acid (para [0122], the suitable materials for the foam core include polylactic acid/PLA).
PNG
media_image1.png
246
270
media_image1.png
Greyscale
It should be noted that the recitation of instant claim 1 that each of the component foam articles “being molded prior to any skin-forming operation” is considered as product-by-process limitation. It is the examiner’s position that the recited process (i.e., how the component is made/molded, and when it is made) does not result in a patentably distinctive structural difference in the resultant component foam article. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113. [E]ven 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 a 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Roberts teaches in its molded bead foam article (414, Fig. 22, para [0130] [0122] and [0123]), wherein a first surface of a first component foam article is proximal to a second surface of a second component foam article (see annotated Fig. 22 above, for reference to first component foam, and the first surface, the second component foam, and the second surface, of which the first surface is proximal to the second surface, meeting the claimed limitations) and wherein the first surface and second surface have been skin-formed (para [0121] [0122] [0132], the first surface of the first foam article and the second surface of the second foam article both being skin-formed, the formed skin layer 422/424, see Fig. 22, meeting the claimed limitations).
Further, it should be noted that the recitation of claim 1 that the first surface and second surface have been skin-formed “by applying heat to join and densify beads at the first surface and the second surface, the skin-forming occurring after molding of the component foam articles” is considered as product-by-process limitation. It is the examiner’s position that the recited process (i.e., how the skin is formed/by applying heat to join and densify beads at the first surface and the second surface, the skin-forming occurring after molding of the component foam articles) does not result in a patentably distinctive structural difference in the resultant molded bead foam article. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113. [E]ven 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 a 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
In the present case, the molded bead foam article of Roberts (414, Fig. 22) comprises two component foam articles (see annotated Fig. 22 for reference to first component foam article/core and second component foam article/core formed from polylactic acid, para [0122]), and the first surface and second surface have been skin-formed (para [0121] [0122] [0132], the first surface of the first foam article and the second surface of the second foam article both being skin-formed, as the formed skin layer 422, see Fig. 22), that meets the claimed materials limitations and structural configuration limitations of the instantly claimed molded bead foam article.
Regarding claim 3, Roberts teaches in its molded bead foam article, wherein the skin-formed first surface and skin-formed second surface are joined together as a result of the skin-forming to form a skin-formed living hinge (the skin-formed living hinge 418, para [0130], Fig. 22).
Regarding claim 4, Roberts teaches in its molded bead foam article, wherein the skin-formed living hinge (418) is configured to rotate by up to around 270 without breaking (para [0130], Roberts teaches the living hinge is configured to rotate for at least 1000 cycles of 180 degree bending without breaking, meeting the claimed limitations).
Regarding claim 5, Roberts teaches in its molded bead foam article, wherein the first surface is joined to the second surface by webbing (webbing 428, see annotated Fig. 22 below, the opposite area of living hinge 418 region is considered the webbing) such that the skin-formed first surface and the skin-formed second surface are configured to reinforce the webbing (para [0129] [0130], see Fig. 22, the first surface is joined to the second surface by webbing, i.e., see the living hinge 418 region, and is considered being configured to reinforce the webbing, meeting the claimed limitations).
PNG
media_image2.png
490
657
media_image2.png
Greyscale
Regarding claim 6, Roberts teaches in its molded bead foam article, further comprising a skin-formed surface (424) on an inner surface of the webbing opposite to the first surface and second surface (the skin-formed surface layer of 424, which is on an inner surface of the webbing opposite to the first surface and second surface, see Fig. 22, para [0130], meeting the claimed limitations).
Regarding claim 8, Roberts teaches in its molded bead foam article, wherein the molded living hinge (418) is defined between interfacing edges of the at least two component foam articles and the interfacing edges are beveled (para [0130], see annotated Fig. 22 below, the molded living hinge 418 is between interfacing edges of the at least two component foam articles, and the interfacing edges are beveled, with sloping edge), meeting the claimed limitations).
PNG
media_image3.png
472
538
media_image3.png
Greyscale
Regarding claim 9, Roberts teaches in its molded bead foam article, wherein the at least two component foam articles further comprise one or more edge features for facilitating interlock and alignment of the at least two component foam articles when the skin-formed living hinge is in the closed configuration (para [0130], see annotated Fig. 22 below for reference to additional/one more edge features, which is considered capable of facilitating interlock and alignment of the at least two component foam articles when the skin-formed living hinge is in the closed configuration, meeting the claimed limitations).
PNG
media_image4.png
472
538
media_image4.png
Greyscale
Regarding claim 10, Roberts teaches in its molded bead foam article, the at least two component foam articles comprise two component foam articles connected to each other by a skin-formed living hinge forming a 2-panel system (para [0130], see Fig. 22, two component foam articles connected to each other by a skin-formed living hinge 418 and forming a foam article with a 2-panel), and the 2-panel system is foldable to form an edge protector (para [0130], see Fig. 22, the 2-panel system foam article of Roberts is foldable, see Fig. 22, and is considered capable to form an edge protector, meeting the claimed limitations).
Regarding claim 11, Roberts teaches its molded bead foam material is suitable for making various articles of various shapes having a plurality of sides (para [0130] [0122] and [0123], the molded foam article is of bead foam), Roberts teaches as in one of its embodiments a molded bead foam article as shown in Fig 28 B blow (para [0144] [0145]), which is considered being in the form of a box having a plurality of sides, meeting the claimed limitations.
PNG
media_image5.png
256
338
media_image5.png
Greyscale
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Roberts as applied to claims 1 and 5 above.
The limitations of claims 1 and 5 are taught by Roberts as discussed above.
Regarding claim 2, Roberts teaches in its molded bead foam article, wherein the skin-formed first surface and skin-formed second surface comprise a layer of skin-formed beads having a thickness between about 0.025 inch to 0.1 inches, which is about 25 mil to 100 mil (para [0128], the thickness of the skin-formed layer 422 is about 0.025 inch to 0.1 inches), which thickness range overlaps with the instantly claimed range of a thickness between about 5 mil and 30 mil. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 7, as discussed in rejection to claim 5, Roberts teaches in its molded bead foam article, wherein the first surface is joined to the second surface by webbing (webbing 428, see annotated Fig. 22 below, the opposite area of living hinge 418 region is considered the webbing). Roberts teaches thickness is a result effective variable and Roberts teaches in its molded bead foam article, wherein the skin-formed first surface and skin-formed second surface comprise a layer of skin-formed beads having a thickness between about 0.025 inch to 0.1 inches, which is about 25 mil to 100 mil (para [0128]).
However, Roberts does not specifically teach the thickness of such webbing as instantly claimed, i.e., equal to one to seven foam-bead layers.
Absent a showing of criticality with respect to thickness (a result effective variable), it would have been obvious to a person of ordinary skill in the art at the time of the invention to adjust the thickness of the webbing and adjust the thickness of the foam-bead layers through routine experimentation in order to achieve the desired properties of the molded bead foam article once produced, which would have arrived at a workable thickness of the webbing that falls within the broad range as instantly claimed, equal to one to seven foam-bead layers. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 5712728935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/YAN LAN/Primary Examiner, Art Unit 1782
Prosecution Insights