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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1 – 13, drawn to a method of forming an embossed polyolefin foam, classified in 521/50.5
II. Claims 14 – 20, drawn to laminates, e.g. a flooring system, classified in 428/304.4.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the method of forming an embossed polyolefin can be used to provide a different product/article, e.g. alternative building materials, such as roofing or an automotive interior component.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Nathan Vogler on August 20, 2026, a provisional election was made without traverse to prosecute the invention of Group I, Claims 1 – 13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14 – 20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claims 7 and 9 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.
Claim 7 sets forth “the depressions are 5 – 75% of an overall thickness of the embedded foamable sheet”. However, the claim does not specify what dimensions of the depressions are being used to calculate this measurement. The scope of the claim is consequently unclear. For the purposes of further examination, Claim 7 will be interpreted as setting forth the length of each depression extending in the thickness direction of the foamable sheet is 5 – 75% of an overall thickness of the embedded foamable sheet. However, applicant is advised that it does not appear that the instant specification provides support for this interpretation.
Claim 10 sets forth “beta (electron)” as a type of ionizing radiation. However, beta radiation is a type of electron radiation. The scope of the claim is then unclear, as it is unknown if other types of electron radiation may be used to meet this claim limitation. For the purposes of further examination, Claim 7 will be interpreted as simply setting forth electron radiation instead of beta (electron) radiation.
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.
Claims 1 and 9 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0184400 to Baldwin et al. (hereinafter Baldwin).
Regarding Claim 1. Baldwin teaches a method of forming a polyolefin foam comprising:
extruding to form an extruded and unfoamed/foamable structure [0080], wherein the extruded structure may be in the form of a sheet ([0030] and [0116]). Said sheet comprises polypropylene, polyethylene, or a combination thereof [0009];
irradiating the embedded foamable sheet with ionizing radiation [0080]; and
foaming the irradiated foamable sheet [0091].
Baldwin further teaches a step of embossing the sheet [0114], i.e. embedding a pattern on at least one side of the sheet.
Baldwin is silent with respect to when the embossing step is performed during the disclosed process. However, it has been held that a selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In Re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (MPEP 2144.04(IV)(C)) It is then the Office’s position that it would have been prima facie obvious to perform the step of embedding a pattern on at least one side of the sheet in Baldwin prior to the step of irradiating the foamable sheet.
Regarding Claim 9. Baldwin teaches the method of Claim 1 wherein the foamable sheet comprises a chemical foaming agent [0075].
Regarding Claim 10. Baldwin teaches the method of Claim 1 wherein the ionizing radiation may correspond to alpha rays, beta rays, gamma rays, or electron beams [0081].
Regarding Claim 11. Baldwin teaches the method of Claim 1 wherein the foamable sheet is irradiated up to four separate times [0082].
Regarding Claim 12. Baldwin teaches the method of Claim 1 wherein the ionizing radiation crosslinks the foamable sheet to a crosslinking degree of about 20 to 75% [0085].
Regarding Claim 13. Baldwin teaches the method of Claim 1 wherein the foaming comprises heating the irradiated foamable sheet with molten salt and radiant heaters or a hot air oven [0091].
Claims 1 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0184400 to Baldwin et al. (hereinafter Baldwin) in view of US 6,527,991 to Bakker et al. (hereinafter Bakker).
Regarding Claims 1 – 7. Baldwin teaches a method of forming a polyolefin foam comprising:
extruding to form an extruded and unfoamed/foamable structure [0080], wherein the extruded structure may be in the form of a sheet ([0030] and [0116]). Said sheet comprises polypropylene, polyethylene, or a combination thereof [0009];
irradiating the embedded foamable sheet with ionizing radiation [0080]; and
foaming the irradiated foamable sheet [0091].
Baldwin teaches further teaches a step of embossing the sheet [0114], i.e. embedding a pattern on at least side of the sheet.
Baldwin is silent with respect to when the embossing step is performed during the disclosed process. However, Bakker teaches the concept of embossing a pattern on at least one side of an extruded foamable sheet subsequent to extrusion and prior to foaming. The pattern is embossed/embedded on at least one side with sufficient pressure applied by at least one roller, i.e. a plurality of rollers. At least one of the rollers is an engraving roller which carries a raised pattern arounds its circumference. An additional pattern may be impressed/embedded on the opposite surface of the sheet. Bakker further teaches the pattern comprises impressions/depressions formed in the surface of the uncured extrudate and that a particularly useful type of pattern is text (Column 3, Lines 48 – 63; and Column 5, Lines 5 – 6). Baldwin and Bakker are analogous art as they are from the same field of endeavor, namely polymeric foams which may be embossed. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to perform the embossing step in Baldwin immediately after extrusion and according to the method described by Bakker. The motivation would have been that Bakker teaches the disclosed method of embossing does not degrade the surface structure or texture of the sheet and can be implemented as part of a continuous manufacturing process (Column 1, Lines 25 – 53).
Regarding Claim 8. Baldwin teaches the method of Claim 1. As detailed in the rejection of Claim 1, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to perform the embossing step in Baldwin immediately after extrusion and according to the method described by Bakker, wherein the embossing step of Bakker provides an embedded pattern with depressions.
The references are silent regarding the dimensions of the depressions. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants' claims patentable in the absence of unexpected results. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) At the time of the invention, it would have been obvious to a person of ordinary skill in the art to optimize the length of each depression in the thickness direction relative to the overall thickness of the foam to provide a clearly visible pattern which does not compromise the integrity of the foam product. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05)
Regarding Claim 9. Baldwin teaches the method of Claim 1 wherein the foamable sheet comprises a chemical foaming agent [0075].
Regarding Claim 10. Baldwin teaches the method of Claim 1 wherein the ionizing radiation may correspond to alpha rays, beta rays, gamma rays, or electron beams [0081].
Regarding Claim 11. Baldwin teaches the method of Claim 1 wherein the foamable sheet is irradiated up to four separate times [0082].
Regarding Claim 12. Baldwin teaches the method of Claim 1 wherein the ionizing radiation crosslinks the foamable sheet to a crosslinking degree of about 20 to 75% [0085].
Regarding Claim 13. Baldwin teaches the method of Claim 1 wherein the foaming comprises heating the irradiated foamable sheet with molten salt and radiant heaters or a hot air oven [0091].
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to methods involving embossing of polymer foams.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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