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. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-16, 21-25, drawn to a material comprising foamed thermoplastic, classified in C08J9/12; C08J2201/00.
II. Claim 17, drawn to a radome, classified in H01Q1/42; H01Q1/422.
III. Claims 18-20, drawn to a method for making a radome, classified in B29C44/00; B29C45/00.
3. The inventions are independent or distinct, each from the other because:
Inventions of Group I and Group II are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product, i.e. foamed thermoplastic material, is deemed to be useful as cushions, footwear, and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions of Group II and Group III 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 process comprising foaming and injection molding of thermoplastic can be used for making automotive parts like trims.
Inventions of Group I and Group III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the material of Group I can be used in a different process like extrusion molding or compression molding.
4. 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:
They require different areas of search.
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.
5. During a telephone conversation with Anthony Fussner on July 22, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-16, 21-25. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-20 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).
Claim Rejections - 35 USC § 102/103
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.
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.
6. Claims 1-5, 16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as being obvious over Malervy et al (US 2015/0325954).
7. Malervy et al discloses a low dielectric constant injection moldable polymer including thermoplastic material (Abstract, [0005], as to instant claims 1, 16), wherein the reduced dielectric constant and reduced loss tangents are created by forming voids or pores within the plastic material, thus increasing the gas or void content, and thus decreasing the density and overall dielectric constant of such material (Abstract, [0026], [0024]).
8. The voids are filled with air or gas having a dielectric constant of less than 2 and the dielectric constant of the porous composite is 2 ([0007], [0010], as to instant claims 1, 15).
9. The voids or cells are formed by injecting a supercritical fluid such as CO2 or N2 creating porosity through the composite ([0013], [0027], [0031]-[0034], as to instant claim 2). The formed cells are enclosed region of nitrogen or carbon dioxide ([0031]) and said voids are specifically cited as being filled with gases having a dielectric constant of less than 2 (claim 20).
It is noted that the voids in the material of instant invention are formed by injecting supercritical fluid in the thermoplastic as well (see [0036] of instant specification).
10. Since the cells/voids in the composite of Malervy et al are cited as enclosed regions of CO2 and N2, filled with said gas, and are produced by the same method of injecting supercritical fluid into the thermoplastic as that used in instant invention, therefore, said cells/voids filled with CO2 and/or N2 gas of Malervy et al will inherently be, or alternatively would be reasonably expected to be at least partially closed cells entrapping said CO2 and/or O2 as claimed in instant invention as well (as to instant claim 1). 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.
11. The void volume is more than 0% to 90% ([0009]), i.e. as high as 90%.
The size of voids is 0.1-5000 microns ([0008], [0035]), i.e. the composite is microcellular (as to instant claim 5).
12. Further, Malervy et al teaches that the injection moldable composite with a low dielectric constant can be made by integrating spheres containing CO2 and/or N2 into the polymer, or integrating hollow glass spheres having size of 10-2000 micron ([0040], i.e. microspheres, into the polymer composite to provide lower dielectric constant insulating material ([0037]-[0038]).
13. Since the porous low dielectric composite of Malervy et al is essentially the same as that claimed in instant invention, i.e. comprises microcellular voids/pores enclosing N2 or CO2 distributed in the thermoplastic, produced by the same process of injecting supercritical CO2 or N2 into the thermoplastic, as that used in instant invention, cited as being injection moldable, further comprising as high as 90% of voids and specifically cited as lowering dielectric constant of the composite by the presence of said gas-filled pores, therefore, the composite of Malervy et al will inherently have, or would be reasonably expected to have the properties that are either the same as those claimed in instant invention, or alternatively having values in the ranges overlapping with those as claimed in instant invention as well, including weight reduction of about 10-25%, dielectric constant reduction of at least 10%, having at least partially closed porosity as well. The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed compositions , if not taught, may be very well met by the compositions of Malervy et al, since the compositions of Malervy et al are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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.
14. In the alternative, though Malervy et al does not explicitly and with sufficient specificity by the way of a single example shows the foamed thermoplastic having a dielectric constant of less than 2.3, since Malervy et al teaches that the dielectric constant of the composite is as low as 2 ([0010]), therefore, it would have been obvious to a one of ordinary skill in the art to choose and use the specific thermoplastic polymer having low dielectric constant and/or further conduct injection of the CO2 or N2 to produce void volume/porosity of as high as 90%, so to lower the dielectric constant of the produced composite to 2 as well, 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). 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. All ranges in the composite of Malervy et al are overlapping with the corresponding ranges as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
16. Claims 1-6, 12, 14-16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as being obvious over Kodama et al (US 2012/0183760).
17. Kodama et al discloses a low dielectric foam that comprises a resin composition and cells, and has dielectric constant of not more than 1.6 and loss tangent of no more than 0.01 (Abstract, as to instant claims 1, 15),
wherein the resin composition comprises polyethylene, polypropylene thermoplastic ([0029]-[0030], as to instant claim 6) and further thermoplastic elastomers including ethylene-vinyl acetate copolymers and chlorinated polyethylene ([0033], as to instant claim 14), wherein the cells are closed cells ([0067], as to instant claims 1, 4), further continuous, i.e. open, cells ([0067], as to instant claim 12) and cells are produced by impregnating the resin with supercritical fluid particularly carbon dioxide ([0056]),
wherein the thermoplastic elastomers such as ethylene-vinyl acetate copolymers and chlorinated polyethylene are included to increase flexibility and shape-forming properties ([0033]).
The resin composition further comprises a flame retardant ([0039], [0040], as to instant claim 15).
The cell size is 2-200 micron ([0053]), i.e. microcellular foam (as to instant claim 5).
The foam is produced by injection molding ([0058], as to instant claim 16).
The foaming ratio is 5-50 times ([0064]).
18. It is noted that the voids in the material of instant invention are formed by injecting supercritical fluid in the thermoplastic as well (see [0036] of instant specification).
19. Since the cells/voids in the foam of Kodama et al are produced by the same method of injecting supercritical fluid into the thermoplastic, as that used in instant invention, therefore, said cells/voids filled with CO2 of Kodama et al will inherently be, or alternatively would be reasonably expected to be at least partially closed cells entrapping said CO2 as claimed in instant invention as well (as to instant claim 1). 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.
20. Since the porous low dielectric sheet of Kodama et al is essentially the same as that claimed in instant invention, i.e. comprises microcellular voids/pores enclosing CO2 and distributed in the thermoplastic, produced by the same process of injecting supercritical CO2 into the thermoplastic, as that used in instant invention, cited as being formed by injection molding, further comprising foaming ratio of as high as 50, having dielectric constant of not more than 1.6 and loss tangent of no more than 0.01, as claimed in instant invention, therefore, the foam of Kodama et al will inherently have, or alternatively would be reasonably expected to have the properties that are not explicitly cited having values that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, including weight reduction of about 10-25%, dielectric constant reduction of at least 10%, pore density, as well. The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed compositions, if not taught, may be very well met by the materials of Kodama et al, since the materials of Kodama et al are essentially the same and made in essentially the same manner as applicants’ materials, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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.
21. In the alternative, all ranges in the composite of Kodama et al are overlapping with the corresponding ranges as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Based on the teachings of Kodama et al, it would have been obvious to a one of ordinary skill in the art to choose and use the polypropylene, polyethylene, ethylene-vinyl acetate copolymer and chlorinated polyethylene as the thermoplastic to form the foam of Kodama et al, and further to conduct the foaming/injecting supercritical CO2 until a desired foaming ratio is reached, and thereby the desired dielectric constant is obtained, 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).
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.
22. Claims 1-12, 16, 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Malervy et al (US 2015/0325954) in view of Hatke et al (US 6,239,187) and Liu et al (US 2004/0080070).
23. The discussion with respect to Malervy et al (US 2015/0325954) set forth in paragraphs 6-15 above, is incorporated here by reference.
24. Though Malervy et al recites that any polymer materials capable of being foamed are suitable to be used (see [0028]), Malervy et al does not explicitly recite the thermoplastic used for making the composite being polypropylene, cyclic olefin copolymer and their mixture.
25. However,
1) Hatke et al discloses foams comprising cycloolefin copolymers comprising:
A) 15-99.99%wt of cycloolefin copolymers (col. 2, lines 25-30) and
B) 0-95%wt of other polymers including polypropylene and polytetrafluoroethylene (col. 9, lines 42-53; col. 10, lines 15-21),
where Hatke et al teaches that to form the foam, the polymer mixture is treated with blowing agent including gas such as N2 and CO2 (col. 9, lines 60-67; col. 10, lines 62-64),
wherein Hatke et al teaches that the foam contains closed cells (col. 12, lines 22-34) and such closed-cell foams are having high heat distortion resistance and excellent mechanical properties, and are used for making injection molded articles (col. 12, lines 22-40, 58-60; col. 1, lines 40-48).
The foams are used in the field of insulation (col. 13, lines 15-16).
Hatke et al further teaches that the content of closed cells is more than 30% or more than 50%vol (col. 12, lines 34-40). Since the foam of Hatke et al comprises less than 100% of closed cells, therefore, it would have been obvious to a one of ordinary skill in the art that the foam of Hatke et al comprises at least one open pore as well (as to instant claim 12).
2) Liu et al discloses polymeric foams, produced by diffusing supercritical fluids including supercritical CO2 and N2 ([0030]-[0032], Abstract) into a polymeric material, wherein the polymeric material comprises cycloolefin copolymer (COC), polypropylene and combination thereof ([0024]), and wherein such foam is microcellular foam, having high cell density, excellent impact strength, high heat resistance and low dielectric constant, and can be used as electric insulating material ([0033], [0043]).
26. Since Malervy et al recites that any polymer materials capable of being foamed are suitable to be used, but does not explicitly recite the thermoplastic used for making the composite being polypropylene, cyclic olefin copolymer and their mixture, but both Hatke et al and Liu et al teach the use of foams based on polypropylene, COC and their mixture and the foams being produced by injecting CO2 or N2, the foams having excellent mechanical properties and low dielectric constant, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Malervy et al, Hatke et al and Liu et al, and to use, or obvious to try to use the polypropylene, COC or their combination as the thermoplastic to form the composite of Malervy et al, so to ensure the composite of Malervy et al is having closed cell porosity, excellent impact strength, high heat resistance and low dielectric constant, and since it would be obvious to choose material based on its suitability, thereby arriving at the present invention (as to instant claims 6-11, 21-23). 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).
27. Hatke et al discloses foams comprising:
A) 15-99.99%wt of cycloolefin copolymers COC (col. 2, lines 25-30) and
B) 0-95%wt of other polymers including polypropylene (col. 9, lines 42-53; col. 10, lines 15-21). Based on the teachings of Hatke et al, it would have been obvious to a one of ordinary skill in the art to choose and use the COC in amount of 15-50%wt, or use the combination of about 80%wt of polypropylene and about 20%wt of COC to form the foamed composite of Malervy et al in view of Hatke et al and Liu et al, since it would have been obvious to choose material based on its suitability as well (as to instant claims 8-11, 22-23). 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).
28. As to instant claims 24-25, Malervy et al teaches that the injection moldable composite with a low dielectric constant can be made by integrating spheres containing CO2 and/or N2 into the polymer, or integrating hollow glass spheres having size of 10-2000 micron ([0040], i.e. microspheres, into the polymer composite to provide lower dielectric constant insulating material ([0037]-[0038]).
29. Since the porous low dielectric composite of Malervy et al in view of Hatke et al and Liu et al is substantially the same as that claimed in instant invention, i.e. comprises polypropylene/COC as thermoplastic, microcellular voids/pores enclosing N2 or CO2 distributed in the polypropylene/COC thermoplastic, produced by the same process of injecting supercritical CO2 or N2 into the thermoplastic, as that used in instant invention, cited as being injection moldable, further comprising as high as 90% of voids and specifically cited as lowering dielectric constant of the composite by the presence of said gas-filled pores, therefore, the composite of Malervy et al in view of Hatke et al and Liu et al will intrinsically and necessarily have, or would be reasonably expected to have the properties that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, including weight reduction of about 10-25%, dielectric constant reduction of at least 10%, loss tangent of less than 0.01, having at least partially closed porosity as well, and further the blend of polypropylene and the COC will intrinsically and necessarily have an average dielectric constant of about 2.2 as well (as to instant claims 3-4, 11, 23). 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.
30. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Malervy et al (US 2015/0325954) in view of Yamamoto et al (US 2004/0022012).
31. The discussion with respect to Malervy et al (US 2015/0325954) set forth in paragraphs 6-15 above, is incorporated here by reference.
32. Though the composite of Malervy et al is used as the low dielectric constant insulating composite ([0029]), Malervy et al does not recite such low dielectric composite further comprising polytetrafluoroethylene (PTFE) fibers.
33. Yamamoto et al teaches the use of fluororesin fibers, including PTFE fibers, in insulating materials due to said fibers having low dielectric constant and low dielectric loss tangent and further capabilities of being formed into layers ([0013], [0021], [0059]).
34. Since both Yamamoto et al and Malervy et al are related to insulating materials having low dielectric constant, and thereby belong to the same field of endeavor, wherein Yamamoto et al explicitly teaches the use of PTFE fibers in said insulating materials to provide low dielectric constant and low dielectric loss tangent and further due to their capabilities of being formed into layers, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Yamamoto et al and Malervy et al, and to include, or obvious to try to include at least in minor amount PTFE fibers into the composite of Malervy et al, so to further lower dielectric constant and loss tangent of the composite, 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).
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
35. Claims 1-6, 12, 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Malervy et al (US 2015/0325954) in view of Kodama et al (US 2012/0183760).
36. The discussion with respect to Malervy et al (US 2015/0325954) set forth in paragraphs 6-15 above, is incorporated here by reference.
37. Though Malervy et al recites that any polymer materials capable of being foamed are suitable to be used (see [0028]), Malervy et al does not explicitly recite the thermoplastic used for making the composite being polypropylene, further including impact modifiers such as ethylene-vinyl acetate copolymer, and further a flame retardant.
38. However, Kodama et al discloses a low dielectric sheet foam that comprises a resin composition and cells, and has dielectric constant of not more than 1.6 and loss tangent of no more than 0.01 (Abstract, as to instant claims 1, 15),
wherein the resin composition comprises polyethylene, polypropylene thermoplastic ([0029]-[0030]) and further thermoplastic elastomers including ethylene-vinyl acetate copolymers and chlorinated polyethylene ([0033], as to instant claim 14), wherein the cells are closed cells ([0067], as to instant claims 1, 4), further continuous cells ([0067], as to instant claim 12) and cells are produced by impregnating the resin with supercritical fluid particularly carbon dioxide ([0056]),
wherein the thermoplastic elastomers including ethylene-vinyl acetate copolymers and chlorinated polyethylene are included to increase flexibility and shape-forming properties ([0033]).
The resin composition further comprises a flame retardant ([0039], [0040], as to instant claim 15).
39. Since both Malervy et al and Kodama et al are related to low dielectric foam formed from thermoplastic resin and comprising closed cell, produced by injecting a supercritical CO2 into the resin, and thereby belong to the same field of endeavor, wherein Kodama et al specifies the use of polypropylene thermoplastic and further ethylene-vinyl acetate copolymers and chlorinated polyethylene which are included to increase flexibility and shape-forming, and further flame retardant to increase flame retardant properties, wherein the foam Kodama et al is having dielectric constant of not more than 1.6 and loss tangent of no more than 0.01, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kodama et al and Malervy et al, and to use, or obvious to try to use polypropylene, polyethylene as the thermoplastic in the composite of Malervy et al, and further include into the composite of Malervy et al ethylene-vinyl acetate copolymers and chlorinated polyethylene to increase flexibility and shape-forming, and flame retardant to improve flame retardant properties of the composite of Malervy et al , since it would be obvious to choose material based on its suitability, and further conduct foaming to produce the composite of Malervy et al having the foaming ratio as taught by Kodama et al (see [0064] of Kodama et al), so that the composite of Malervy et al would have dielectric constant of not more than 1.6 and loss tangent of no more than 0.01, as well, given such is desired. 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). 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
40. Since the porous low dielectric composite of Malervy et al in view of Kodama et al is substantially the same as that claimed in instant invention, i.e. comprises polypropylene/polyethylene as thermoplastic, microcellular voids/pores enclosing N2 or CO2 distributed in the polypropylene/COC thermoplastic, produced by the same process of injecting supercritical CO2 or N2 into the thermoplastic, as that used in instant invention, cited as being injection moldable, further comprising as high as 90% of voids and specifically cited as lowering dielectric constant of the composite by the presence of said gas-filled pores, therefore, the composite of Malervy et al in view of Kodama et al will intrinsically and necessarily have, or would be reasonably expected to have the properties that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, including weight reduction of about 10-25%, dielectric constant reduction of at least 10%, loss tangent of less than 0.01, having at least partially closed porosity as well. 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.
41. Claims 1-12, 14-16, 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Malervy et al (US 2015/0325954) in view of Hatke et al (US 6,239,187) and Liu et al (US 2004/0080070), in further in view of Kodama et al (US 2012/0183760).
42. The discussion with respect to Malervy et al (US 2015/0325954) in view of Hatke et al (US 6,239,187) and Liu et al (US 2004/0080070), set forth in paragraphs 22-29 above, is incorporated here by reference.
43. Malervy et al in view of Hatke et al and Liu et al do not explicitly recite the resin composition for making the composite further including impact modifiers such as ethylene-vinyl acetate copolymer, and further a flame retardant.
44. However, Kodama et al discloses a low dielectric sheet foam that comprises a resin composition and cells, and has dielectric constant of not more than 1.6 and loss tangent of no more than 0.01 (Abstract, as to instant claims 1, 15),
wherein the resin composition comprises polyethylene, polypropylene thermoplastic ([0029]-[0030]) and further thermoplastic elastomers including ethylene-vinyl acetate copolymers and chlorinated polyethylene ([0033], as to instant claim 14), wherein the cells are closed cells ([0067], as to instant claims 1, 4), further continuous cells ([0067], as to instant claim 12) and cells are produced by impregnating the resin with supercritical fluid particularly carbon dioxide ([0056]),
wherein the thermoplastic elastomers including ethylene-vinyl acetate copolymers and chlorinated polyethylene are included to increase flexibility and shape-forming properties ([0033]).
The resin composition further comprises a flame retardant ([0039], [0040], as to instant claim 15).
45. Since Kodama et al and Malervy et al in view of Hatke et al and Liu et al are related to low dielectric foams formed from thermoplastic resin including polypropylene and comprising closed cell, produced by injecting a supercritical CO2 into the resin, and thereby belong to the same field of endeavor, wherein Kodama et al specifies further use of ethylene-vinyl acetate copolymers and chlorinated polyethylene to increase flexibility and shape-forming, and further flame retardant to increase flame retardant properties, wherein the foam Kodama et al is having dielectric constant of not more than 1.6 and loss tangent of no more than 0.01, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kodama et al and Malervy et al in view of Hatke et al and Liu et al, and to use, or obvious to try to use ethylene-vinyl acetate copolymers and chlorinated polyethylene to increase flexibility and shape-forming of the composite, and flame retardant to improve flame retardant properties of the composite of Malervy et al in view of Hatke et al and Liu et al, since it would be obvious to choose material based on its suitability, and further conduct foaming to produce the composite of Malervy et al in view of Hatke et al and Liu et al having a foaming ratio as taught by Kodama et al (see [0064] of Kodama et al), so that the composite of Malervy et al in view of Hatke et al and Liu et al would have dielectric constant of not more than 1.6 and loss tangent of no more than 0.01, as well, given such is desired, 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). 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
46. Since the porous low dielectric composite of Malervy et al in view of Hatke et al, Liu et al and Kodama et al is substantially the same as that claimed in instant invention, i.e. comprises polypropylene/polyethylene/COC as thermoplastic, ethylene-vinyl acetate copolymer, microcellular voids/pores enclosing N2 or CO2 distributed in the polypropylene/COC thermoplastic, produced by the same process of injecting supercritical CO2 or N2 into the thermoplastic, as that used in instant invention, cited as being injection moldable, further comprising as high as 90% of voids and specifically cited as lowering dielectric constant of the composite by the presence of said gas-filled pores, therefore, the composite of Malervy et al in view of Hatke et al, Liu et al and Kodama et al will intrinsically and necessarily have, or would be reasonably expected to have the properties that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, including weight reduction of about 10-25%, dielectric constant reduction of at least 10%, loss tangent of less than 0.01, having at least partially closed porosity as well. 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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