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 .
Information Disclosure Statement
The information disclosure statement filed 10/26/23 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. The Examiner notes, copies of neither the foreign patent documents nor non-patent literature documents were submitted with Applicant’s filing of the IDS on 04/27/26.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. The extensive list of references in [0111]-[0112] of the specification have not been listed on an information disclosure statement of record.
Specification
The abstract of the disclosure is objected to because it begins with the phase “The invention relates to,” i.e., a phrase that is implied. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 5, 8-12, 20, 29, 37, 64, 67, 69, 82, 85, 86, 101, 108 and 111 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Independent claim 1 recites “above room temperature.” This is a range with an unbounded upper limit, and, therefore, encompasses a temperature so inconceivably high that it cannot reasonably be possible in the present invention. To make a point through hyperbole, the present application does not provide full enablement for, for example, a temperature above 500°F, 1000°F or 3000°F (increasable ad nauseam), even though these temperatures are encompassed in the claimed range.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 5, 8-12, 20, 29, 37, 64, 67, 69, 82, 85, 86, 101, 108 and 111 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Independent claim 1 recites “above room temperature.” This is a range with an unbounded upper limit, and, as such, it is unclear as to the extent of temperature range Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
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.
Claims 1, 3, 5, 8-12, 20, 29, 37, 64, 67, 69, 82, 85, 86, 101, 108 and 111 are rejected under 35 U.S.C. 103 as being unpatentable over Ebert et al. (US 5,407,966).
With respect to independent claim 1, Ebert et al. discloses a curable volume expandable polymer composition (abstract) comprising:
an organic acid component, wherein the organic acid component comprises a first organic acid, a second organic acid, and optionally one or more additional organic acids (col. 4, l. 30-59, wherein Ebert et al. explicitly discloses the organic acid foaming agents disclosed can be used in the form of mixtures);
said polymer composition does not contain a blowing agent besides the organic acid component (col. 4, l. 60-68, wherein no additional blowing agent is disclosed and/or suggested as included); and
wherein said polymer composition, when being heated to an activation of expansion temperature above room temperature, undergoes volume expansion due to decarboxylation of the first organic acid and/or second organic acid and/or optionally present one or more additional organic acids (col. 5, l. 29-39, wherein the polymer compositions are disclosed as heated to temperatures above room temperature and undergo volume expansion to produce a foamed product, see further explanation below).
Ebert et al. discloses wherein the foaming agent includes organic acids in the form of carboxylic acids, and, further, wherein such can be used in the form of mixtures and in quantities of 0.01-10% by weight (col. 4, l. 30-59). The reference additionally provides examples wherein various weight percents of such organic acid foaming agents are used with an additional acid in various ratios, including 1:1 to 1:4 (col. 7, l. 38-col. 8, l. 40). Although silent to explicitly providing for wherein such a ratio is that of the foaming agent in the form of a mixture of the first organic acid and the second organic acid, given the weight percent range of foaming agent presence disclosed by Ebert et al. as well as the disclosure therein for the use of a mixture of organic acids, and, thus, an implied ratio of a first organic acid to a second organic acid, it is the position of the Office that one having ordinary skill in the art would recognize an optimal ratio of the first organic acid to the second organic acid to provide for in the foaming agent of Ebert et al. in order to effectively foam the thermoplastic therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed ratio of the first organic acid to the second organic acid as critical, as further exemplified by the extensiveness thereof, and it is unclear if any unexpected results are achieved by providing for a ratio of first organic acid to second organic acid of 10:1 to 1:10 as instantly claimed. Since the organic acid combination of Ebert et al. is suggested to provide for volume expansion of the polymer composition, it does not appear that such would be considered an unexpected result of using a ratio of first organic acid to second organic acid as presently claimed, and, as such, the determination of optimal ratio of first organic acid to second organic acid would be achievable through routine experimentation in the art.
With regard to the requirement for said polymer composition not containing a blowing agent besides the organic acid component, Ebert et al. discloses additional additives for the composition and does not disclose and/or require the inclusion of an additional blowing agent (col. 4, l. 60-68, wherein no additional blowing agent is disclosed and/or suggested as included). As such, it is the position of the Office that it would have been obvious to one having ordinary skill in the art for the polymer composition of Ebert et al. to not contain a blowing agent besides the organic acid component therein as such is not deemed necessary for volume expansion. The omission of an element and its function is obvious if the function of the element is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989). Herein, the function of an additional blowing agent is not needed and/or desired as the organic acid component is used for such a purpose.
With regard to the limitation “when being heated to an activation of expansion temperature above room temperature, undergoes volume expansion due to decarboxylation of the first organic acid and/or second organic acid and/or optionally present one or more additional organic acid,” the Examiner notes, claim 1 is drawn to a composition and the noted limitations are drawn to certain characteristics that such a composition is to exhibit when heated to an activation temperature. Claim 1 does not require actual heating of the composition. The limitations reciting such heating and undergoing of volume expansion due to decarboxylation are limitations of intended use of the claimed composition. Nonetheless, Ebert et al. explicitly provides for a polymer composition that includes a first organic acid and second organic acid, and, further, provides for the same organic acids disclosed by Applicant. As such, at least one of the first organic acid and/or second organic acid would be expected to act in the manner as claimed, i.e., undergo volume expansion due to decarboxylation of the first organic acid and/or second organic acid when being heated to an activation of expansion temperature above room temperature since it has been held “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). If there is any difference between the above noted properties of the polymer composition of Ebert et al. and that of the instant claims, the difference would have been minor and obvious.
With respect to dependent claim 3, Ebert et al. discloses wherein the first organic acid and/or the second organic acid and/or the optionally present one or more additional organic acids independently of one another have a molecular weight of at more 300 g/mol (col. 4, l. 37, wherein acetoacetic acid, an organic acid disclosed by Applicant to meet such criteria in [0070] and [0072] of the specification as filed, is disclosed; for purposes of this office action, acetoacetic acid is considered the first organic acid).
With respect to dependent claim 5, Ebert et al. discloses wherein the content of the organic acid component is at least 5.0 wt% relative to the total weight of the polymer composition (col. 4, l. 55-59, wherein quantities up to 10% are disclosed).
With respect to dependent claim 8, Ebert et al. discloses wherein the organic acid component essentially consists of (the Examiner notes, “essentially consists of” is being considered as consists essentially of) the first organic acid and the second organic acid (col. 4, l. 55-59, wherein the foaming agents are used in the form of mixtures thereof).
With respect to dependent claim 9, Ebert et al. discloses wherein the organic acid component comprises one or more additional organic acids (col. 4, l. 55-59, wherein mixtures thereof are suggested, thereby suggesting an additional organic acid).
With respect to dependent claim 10, Ebert et al. discloses wherein the first organic acid and/or the second organic acid and/or the optionally present one or more additional organic acids independently of one another are hydrocarbons comprising no functional groups other than those recited (col. 4, l. 30-53, wherein at least acetoacetic acid, i.e., the first organic acid and an organic acid disclosed by Applicant to meet such criteria in [0070] and [0072] of the specification as filed, is disclosed).
With respect to dependent claim 11, Ebert et al. discloses wherein the first organic acid is selected from the group as claimed (col. 4, l. 30-53, wherein at least acetoacetic acid, i.e., the first organic acid and an organic acid disclosed by Applicant to meet such criteria in [0070] and [0072] of the specification as filed, is disclosed).
With respect to dependent claim 12, Ebert et al. discloses wherein the second organic acid is selected from the group as claimed (col. 4, l. 30-53, wherein malonic acid, an acid disclosed by Applicant as such in the specification as filed, is disclosed).
With respect to dependent claim 20, Ebert et al. discloses wherein the first organic acid and/or the second organic acid and/or is an aromatic monocarboxylic acid as claimed (col. 4, l. 30-54, wherein at least benzoylacetic acid is disclosed).
With respect to dependent claim 29, Ebert et al. discloses wherein the first organic acid and/or the second organic acid and/or the optionally present one or more additional organic acids is an aromatic monocarboxylic acid; the reference further suggests dicarboxylic acids (col. 4, l. 30-54, wherein at least benzoylacetic acid is disclosed). Although silent to wherein one of such organic acids is an aromatic tricarboxylic acid as claimed, it is the position of the Office that one having ordinary skill in the art would recognize the ability to try such as a foaming agent in the polymer composition of Ebert et al. as such would be expected to share similar chemical behavior regarding acidity, chelation, and carboxylic acid reactivity to those organic acids explicitly disclosed by Ebert et al. and clearly envisaged as a suitable alternative thereto as at least one the first/second/optional organic acid therein.
With respect to dependent claim 37, Ebert et al. discloses wherein the first organic acid and the second organic acid and the second organic acid and the optionally present one or more additional organic acids are selected from the group as claimed (col. 4, l. 30-54).
With respect to dependent claim 64, Ebert et al. discloses wherein the foaming agent includes carboxylic acids, and, further, wherein such can be used in the form of mixtures and in quantities of 0.01-10% by weight (col. 4, l. 30-59). The reference additionally provides examples wherein various weight percents of such organic acid foaming agents are used with an additional acid in various ratios, including 1:1 to 1:4 (col. 7, l. 38-col. 8, l. 40). Although silent to explicitly providing for wherein such a ratio is that of the foaming agent in the form of a mixture of the first organic acid and the second organic acid, given the weight percent range of foaming agent presence disclosed by Ebert et al. and disclosure therein of the use of a mixture of organic acids, and, thus, an implied ratio of a first organic acid to a second organic acid, it is the position of the Office that one having ordinary skill in the art would recognize an optimal ratio of the first organic acid to the second organic acid to provide for in the foaming agent of Ebert et al. in order to effectively foam the thermoplastic therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed ratio of the first organic acid to the second organic acid as critical and it is unclear if any unexpected results are achieved by providing for a ratio of first organic acid to second organic acid of 1:3 to 1:1.1 as instantly claimed. Since the organic acid combination of Ebert et al. is suggested to provide for volume expansion of the polymer composition, it does not appear that such would be considered an unexpected result of using a ratio of first organic acid to second organic acid as presently claimed, and, as such, the determination of optimal ratio of first organic acid to second organic acid would be achievable through routine experimentation in the art.
With respect to dependent claim 67, Ebert et al. discloses the polymer composition as set forth above with respect to claims 1 and 5, wherein such is used to produce foamed mouldings (col. 5, l. 29-39) and further suggested to be cut as required and/or used for the production of large covers (col. 7, l. 25-35). Although silent to explicitly starting wherein such is “dry to the touch” at room temperature, since Ebert et al. provides for a composition as claimed by claims 1 and 5, the polymer composition of Ebert et al. would be expected to act in the manner as claimed, i.e., be dry to the touch at room temperature since it has been held “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). If there is any difference between the above noted properties of the polymer composition of Ebert et al. and that of the instant claims, the difference would have been minor and obvious. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With respect to dependent claim 69, Ebert et al. discloses wherein the polymer composition is heat curable (col. 1, l. 57-67, wherein the polymer composition is subjected to heat for production of the product therefrom). Furthermore, Ebert et al. provides for a composition as claimed by claim 1 and therefore, the polymer composition of Ebert et al. would be expected to act in the manner as claimed, i.e., be heat curable since it has been held “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). If there is any difference between the above noted properties of the polymer composition of Ebert et al. and that of the instant claims, the difference would have been minor and obvious. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With respect to dependent claims 85 and 86, Ebert et al. discloses wherein the polymer composition comprises a polymer selected from the group as claimed (col. 5, l. 66- col. 6, l. 6; col. 7, l. 6-18).
With respect to dependent claim 101, Ebert et al. discloses the polymer composition which comprises neither sodium carbonate nor sodium hydrogencarbonate as there is no disclosure and/or requirement thereof. As such, it is the position of the Office that it would have been obvious to one having ordinary skill in the art for the polymer composition of Ebert et al. to not contain either compound as such is not deemed necessary for inclusion. The omission of an element and its function is obvious if the function of the element is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989).
With respect to dependent claim 108, Ebert et al. discloses a method for volume expansion of a polymer composition according to claim 1 comprising the step of heating the polymer composition to the activation of expansion temperature (col. 5, l. 29-39).
With respect to dependent claim 111, Ebert et al. discloses wherein the first organic acid and/or the second organic acid and/or the optionally present one or more additional organic acids is one as claimed (col. 4, l. 30-54).
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 5, 8-12, 20, 29, 37, 64, 67, 69, 82, 85, 86, 101, 108 and 111 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,834,588 (‘588 herein). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the limitations presently claimed in independent claim 1 are fully encompassed by the curable volume expandable polymer composition of claim 1 as issued in ‘588. Although ‘588 fails to recite the instantly claimed limitation of “said polymer composition does not contain a blowing agent besides the organic acid component,” since ‘588 does not require the addition of a blowing agent besides the organic acid component therein, such would at least be obvious thereover. The omission of an element and its function is obvious if the function of the element is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989). In ‘588, the function of a blowing agent besides the organic acid component is suggested as not desired as a separate and individual blowing agent in the form of the organic acid component is included therein. The features of dependent claim 3, 5, 8-12, 20, 29, 37, 64, 67, 69, 82, 85, 86, 101, 108 and 111 are fully encompassed by the limitations as issued in ‘588 and thus would indeed be obvious thereover.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 10899902 discloses heat expandable foam that includes chemical blowing agents such as sodium bicarbonate.
KR 102286988 B1 discloses polymeric foams formed with chemical blowing agents, with examples thereof including various organic acids, such as oxalic acid, succinic acid and citric acid.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
04/27/26
Prosecution Insights