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 .
Election/Restrictions
2. Applicant's election with traverse of Group I, claims 1-13 in the reply filed on August 12, 2026 is acknowledged. The traversal is on the ground(s) that claims of Groups II and III include limitations of Group I. This is not found persuasive because the groups of inventions listed in Groups I-III do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features, since the common technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Berghmans et al (US 6,573,306).
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on August 12, 2026.
Claim Rejections - 35 USC § 112
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.
3. Claims 1-13 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.
4. Claim 1 recites the limitation of: “…wherein the expanding of the polyolefin-based plastic material particles loaded with the blowing agent is carried out under the influence of temperature by irradiation of the polyolefin-based plastic material particles loaded with the blowing agent with high-energy thermal radiation, more particularly, infrared radiation”. Claim 5 refers to “the plastic material...”, claims 6-7 refer to “polyolefin-based plastic material”. However, in said limitations the polyolefin-based plastic material is not specified as being “pre-expanded polyolefin-based plastic material”, and therefore it is not clear if said polyolefin-based plastic material is the same or different from pre-expanded polyolefin-based plastic material as previously cited.
5. Claims 1, 3-6, 8, 10, 12 include the term “more particularly”, further narrowing corresponding limitations. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
6. Claims 8-10, 12-13, which are dependent on claim 1, refer to “pre-expanded polyolefin-based plastic material particles”, “cellular polyolefin-based plastic particles”, but do not have preposition “the” or “said” in front of those; therefore, it sis not clear if said terms are the same or different from those previously used.
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.
7. Claims 1-7, 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Watkins et al (US 2016/0271847) in view of Shimizu et al (US 4,247,650).
8. Watkins et al discloses a method for making foamed article, wherein the foamed article is in the form of pellets, particles or beads ([0013], [0020], [0054]) comprising thermoplastic elastomers including copolymers of ethylene and alpha-olefins ([0021], [0038], as to instant claim 9), the method comprising:
1) infusing and soaking the article/particles with a supercritical fluid, specifically carbon dioxide ([0041], as to instant claim 11) in a pressurized container under a temperature of 25-50⁰C and pressure 10-20 MPa ([0051], [0045]-[0046], as to instant claims 1-4);
2) removing the article/particles from the container and exposing those to infrared radiation in a tunnel to cause the foaming to occur ([0047]);
3) removing the article/particles from the system ([0047]).
For the expansion step 2), the articles are placed on a planar surface such as belt that moves them through a tunnel or through a pipe with heating element of IR lamp that can apply power to achieve rapid uniform heating ([0047], as to instant claim 6).
9. Watkins et al further teaches that time, temperature and pressure in the step of solvating the article/particles in the supercritical fluid and the depressurization rate, temperature affect the degree of foaming achieved ([0050]). The specifically exemplified foaming using water is conducted at temperature of 50-90⁰C ([0051]).
Therefore, based on the teachings of Watkins et al, it would have been obvious to a one of ordinary skill in the art to make variations and optimize by routine experimentation the specific time, temperature and pressure during the step 1) of infusing the particles with the supercritical carbon dioxide, and further the temperature during the step of heating the impregnated particles with IR radiation to foam those, including conducting the step of foaming at the temperature of 50-90⁰C as exemplified by Watkins et al, and in any case within the broad range of temperature of 20-300⁰C as claimed in instant invention (as to instant claim 5), especially since i) heating under IR radiation will intrinsically and necessarily provide temperature of higher than room temperature, and ii) the ethylene-alpha olefin copolymers have melting temperature of lower than 300⁰C and at a temperature of higher than 300⁰C the particles would be reasonably expected to at least partially melt. "[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).
10. As to instant claim 7, Watkins et al further teaches that the foamed articles/particles are cooled, wherein cooling under balanced forces allows increased modulus to maintain shape once at room temperature and atmospheric pressure ([0052]). It would have been obvious to a one of ordinary skill in the art to, at least partially, cool the foamed particles after the step 3) to increase the modulus and further to allow safe transportation of the expanded particles.
11. As to instant claim 13, the foam pellets have density of 0.01-0.3 g/cc (10-200 g/L).
12. Watkins et al does not recite the particles used in the step 1) for infusing and soaking with the supercritical carbon dioxide being pre-expanded particles.
13. However, Shimizu et al discloses a two-step foaming process for making expanded polyolefin, such as ethylene copolymer (col. 7, line 65-col. 8, line 1), resin particles, comprising:
i) forming pre-expanded resin particles first by impregnating the resin particles with blowing agent and foaming those, followed by
ii) holding the pre-expanded particles in inorganic gas at a pressure of about 5 kg/cm2G (about 5 bar) and temperature of about 80⁰C to charge the inorganic gas into the cells of the pre-expanded particles, and further
iii) subjecting the particles of step ii) to heating expansion (col. 5, lines 1-13; col. 3, lines 59-68), wherein such two-step expanding provides the expanded particles having favorable results including providing excellent moldings having smooth surface (Abstract, col. 5, lines 15-20; Table 1).
14. Since both Shimizu et al and Watkins et al are related to expanded polyethylene-based particles produced by infusing the particles with blowing agent gas, followed by foaming under heating, and thereby belong to the same field of endeavor, wherein Shimizu et al teaches said process as being a two-step expansion process, wherein said particles are pre-expanded first, followed by further expansion to form the expanded particles, and wherein the expanded particles produced by said process are providing excellent moldings having smooth surface, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Shimizu et al and Watkins et al, and either i) to subject the polyethylene particles in the process of Watkins et al to at least partial pre-expansion first before infusing those with supercritical carbon dioxide in the step 1), as taught by Shimizu et al or ii) to choose and use, at least partially, the pre-expanded particles of Shimizu et al as the particles for infusing/soaking in the step 1) of Watkins et al, so to ensure the final expanded particles of Watkins et al are providing excellent moldings having smooth surface and since it would have been obvious to choose material based on its suitability, 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
15. Since the expanded polyethylene-based particles of Watkins et al in view of Shimizu et al are produced by substantially the same process as claimed in instant invention, i.e. by providing pre-expanded polyethylene particles first, followed by infusing those with carbon dioxide and foaming under heating by infrared radiation, therefore, the expanded particles of Watkins et al in view of Shimizu et al will intrinsically and necessarily have, or would be reasonably expected to have the properties having values that are either the same as those claimed in instant invention or overlapping with those as claimed in instant invention, i.e. uniformly or non-uniformly distributed cell structure (as to instant claim 10), density of 5-1000 g/l and cell size in the range of 1-250 micron (as to instant claims 12-13), especially since said ranges for the density and cell size as claimed in instant invention are very broad. 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.
16. Further, in view of the teachings of Watkins et al that time, temperature and pressure in the step of solvating the article/particles in the supercritical fluid and the depressurization rate, temperature affect the degree of foaming achieved ([0050]), and thereby affect the structure and size of the cells, it would have been obvious to a one of ordinary skill in the art to make variations and optimize by routine experimentation the specific time, temperature and pressure during the step 1) of infusing the particles with the supercritical carbon dioxide, and further the temperature during the step of heating the impregnated particles with IR radiation to foam those, so to produce the expanded particles of Watkins et al in view of Shimizu et al having the desired cell size in the range of 1-250 micron and density in the range of 5-1000 g/L as well. "[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).
17. Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Watkins et al (US 2016/0271847) in view of Shimizu et al (US 4,247,650) and Mihayashi et al (US 5,883,141).
18. The discussion with respect to Watkins et al (US 2016/0271847) in view of Shimizu et al (US 4,247,650) set forth in paragraphs 7-16 above, is incorporated here by reference.
19. Though Watkins et al in view of Shimizu et al do not explicitly recite the pre-expanded particles comprising an additive, such as non-stick additive,
Mihayashi et al discloses pre-expanded polyolefin, specifically ethylene copolymers (col. 5, line 65-col. 6, line 5) particles, which impart expandability to polyolefin expanded particles (Abstract), wherein said pre-expanded particles comprise fusion preventing agent which prevents mutual fusion of the expanded particles, used in amount of 0.15-0.3 phr (col. 7, lines 5-20) and further auxiliary dispersant (col. 7, lines 1-4), nucleating agents, and hydrophilic inorganics in amount of 0.001-20 phr (col. 6, lines 16-35).
20. Since Mihayashi et al discloses the pre-expanded polyethylene particles further comprising various additives, including a fusion preventing agent to prevent mutual fusion of the expanded particles, and a nucleating agent, therefore based on the combined teachings of Mihayashi et al and Watkins et al in view of Shimizu et al, it would have been obvious to a one of ordinary skill in the art to either i) include, or obvious to try to include, at least in minor amount the fusion preventing agent into the pre-expanded polyethylene particles used in the step 1) of Watkins et al in view of Shimizu et al, ii) to choose and use, at least partially the nucleating agents and/or auxiliary dispersant, and/or inorganics that are customarily added to the polyethylene pre-expanded particles, as taught by as taught by Mihayashi et al, in the pre-expanded polyethylene particles infused in the step 1) of Watkins et al in view of Shimizu et al, or iii) to choose and use, at least partially, the pre-expanded polyethylene particles comprising the fusion preventing agent, nucleating agents, auxiliary dispersant, and/or inorganics of Mihayashi et al as the pre-expanded polyethylene particles used for infusion/soaking the step 1) of the process of Watkins et al in view of Shimizu et al as well, so to prevent fusion of the expanded particles of Watkins et al in view of Shimizu et al and 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
21. Since the expanded polyethylene-based particles of Watkins et al in view of Shimizu et al and Mihayashi et al are produced by substantially the same process as claimed in instant invention, i.e. by providing pre-expanded polyethylene particles first, followed by infusing those with carbon dioxide and foaming under heating by infrared radiation, therefore, the expanded particles of Watkins et al in view of Shimizu et al and Mihayashi et al will intrinsically and necessarily have the properties having values that are either the same as or overlapping with those as claimed in instant invention, i.e. uniformly or non-uniformly distributed cell structure (as to instant claim 10), density of 5-1000 g/l and cell size in the range of 1-250 micron, especially since said ranges for the density and cell size are very broad. 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.
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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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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