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 (IDS) submitted on 5/13/2026 was filed after the mailing date of the IDS on 4/15/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement filed 5/13/2026 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
Drawings
The drawings are objected to because “commercia” in Fig. 14A and 14B is a typographical error and should read “commercial”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 2, 3, 8, and 12 are objected to because of the following informalities:
[Claims 2 and 3] “wherein step” is a typographical error and should read “wherein the step”.
[Claims 8 and 12] “one or more” is a typographical error and should read “one or more of”.
Appropriate correction is required.
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 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.
The term “weight-reduced” in claims 1, 2, 3, and 13 is a relative term which renders the claims indefinite. The term “weight-reduced” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Dependent claims 2-13 are similarly rejected by their dependence on indefinite claim 1.
The term “similar” in claim 1 is a relative term which renders the claim indefinite. The term “similar” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Dependent claims 2-13 are similarly rejected by their dependence on indefinite claim 1.
The parameter “a foaming pore size” in claim 1 is indefinite. The parameter of “foaming pore size” is not defined by the claim nor the specification, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Dependent claims 2-13 are similarly rejected by their dependence on indefinite claim 1.
The term “expand” in claim 3 is a relative term which renders the claim indefinite. The term “expand” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claim 5, the limitation of “the single-screw extruding” is indefinite because independent claim 1 defines two separate single-screw extruding steps. It is unclear and indefinite which, if either, claim 5 is referring to.
The term “a weight reduction” in claim 13 is a relative term which renders the claim indefinite. The term “weight reduction” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “same” in claim 13 is a relative term which renders the claim indefinite. The term “same” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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, 2, 4, 6, 7, 8, 9, 10, 11, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ebe et al (US 20200332085 A1) in view of Mantzivis et al (EP 2173793 B1, copy attached).
Regarding claims 1, 7, 8, 9, 10, 11, and 12, Ebe discloses a resin composition, preferably in the form of a masterbatch [0035], said masterbatch comprising:
Heat-expandable microspheres, [0044] wherein the core of the composition is filled with blowing agent, which includes hydrocarbons (alkanes) such as (iso)butane, (iso)pentane, (iso)hexane, (iso)heptane, and (iso)octane [0110], and the shell is formed of thermoplastic polymer [0047-0049] which contains a nitrile monomer which essentially contains methacrylonitrile [0085] and may also contain other monomers such that they do not affect the desired effect, such as (meth)acrylates [0099];
A base or matrix resin (carrier resin), which is preferably at least one (bi-component) selected from a group consisting of ethylene vinyl acetate (EVA) copolymers, polypropylenes, and polyethylenes such as high-density polyethylene (HDPE), low-density polyethylene (LDPE), and linear low-density polyethylene (L-LDPE) [0064]; and
Optionally, additives such as lubricants [0175] such as paraffin wax and liquid paraffin (paraffin oil) [0181].
Regarding weight reduction, Ebe teaches that the expandable microspheres lighten the resultant molded articles and prevent the surface of the molded articles from peeling [0071]. Ebe also discloses process for preparing said masterbatch, comprising:
Mixing the base resin and microspheres in a Banbury mixer (internal mixer) at a temperature higher than the softening point of the base resin but lower than the expansion initiation temperature of the microspheres to prepare a premix [0194] with specific examples kneaded at temperatures between 80 and 95°C (Table 6);
Extruding the premix with a singles-screw extruder into strands [0195] and pelletizing [0263] with specific examples extruded at temperatures between 70 and 85°C (Table 6);
Mixing the pelletized masterbatch with a matrix resin which may be any of the base resins described above [0067] (including polyethylenes and polypropylenes) in a ribbon mixer [0271];
Single-screw extruding the mixture of pelletized masterbatch and matrix resin at screw speeds of 25 to 45 rpm and temperatures of 180-195°C [0272]; and
Forming a plastic product, the formation method of which may be blow molding [0204].
The mean diameter of the pores created by the heat-expandable microspheres in a molded article preferably ranges from 30 to 300 µm [0215]. Ebe also discloses molded articles (plastic product) with the masterbatch being present from 4.3 to 7.5 parts by weight (Tables 8, 9, 10). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Ebe does not particularly disclose that the master batch composition has a particle size similar to that of the base plastic resin.
In the same field of endeavor, Mantzivis et al discloses a masterbatch preparation process for use in plastics molding and extruding (Abstract), and particularly points out that particle size compatibility between the masterbatch and matrix material ensures uniform dispersion and integration [0005].
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to utilize master batch pellets and base resins of similar particle sizes with the expected result of uniform mixing. "[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed". KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). See also In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (the motivation or reason to combine the prior art references need not be the same as that of applicants).
Regarding claim 2, neither Ebe nor Mantzivis discloses a pre-foaming step in their masterbatch preparation processes.
Regarding claim 4, Ebe discloses masterbatch compositions comprising 30-60 wt% resin and 40-70 wt% of the blowing agent (Table 6). Ebe discloses the inclusion of lubricants [0175] such as paraffin wax and liquid paraffin (paraffin oil) [0181], but does not particularly disclose the amount of lubricant in the masterbatch compositions.
In the same field of endeavor, Mantzivis discloses masterbatch compositions as set forth above and further discloses the inclusion of a wax, such as a paraffin wax [0031], which may be present in the masterbatch at between 1 and 99 wt% [0050]. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the masterbatch composition taught by Ebe with the lubricant concentrations taught by Mantzivis with a reasonable expectation of success.
In the alternative, with respect to claim 4, it is well established that ordinary creativity is presumed on the part of one of ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Thus, it would have been prima facie obvious, using no more than ordinary creativity, to vary the amount of lubricant anywhere within the range of 1 to 10 wt% so long as the desired weight reduction is achieved, which thus renders the claimed ratio prima facie obvious. See Ex Parte Jean-Paul Mardon, Jean Senevat, & Daniel Charquet, 101728,237, 2012 WL 1141738, at *2 (2012); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable...is ordinarily within the skill of the art.”); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“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.”).
Regarding claim 6, Ebe discloses that the melting point of the carrier resins in the masterbatch are not particularly limited but preferably range from 40 to 100°C [0070]. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claim 13, it is noted that neither the claims nor the specification of the instant application particularly address the way in which weight reduction is to be measured. Ebe discloses the parameter of expansion ratio, which is the specific gravity (density) of a molded article prepared without the microspheres divided by the specific gravity (density) of a molded article prepared with a microsphere masterbatch. A weight reduction ranging from 12.4% to 16.7% would result in an expansion ratio, as defined by Ebe, of 1.1 to 1.2. Ebe discloses particular examples with expansion ratios of 1.1 (Table 5), which read on applicant’s claimed weight reduction. It is noted that Ebe does not particularly disclose the tensile strength of molded articles nor the retention of the same. However, 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. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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).
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ebe et al (US 20200332085 A1) in view of Mantzivis et al (EP 2173793 B1, copy attached) as applied to claim 1 above, and further in view of Dix et al (US 20230167259 A1). The above rejection with respect to Ebe and Mantzivis is incorporated herein by reference in its entirety.
Regarding claims 3 and 5, the combination of Ebe and Mantzivis discloses all limitations of claim 1 as set forth in the above rejection. It is noted that Ebe discloses formation of a plastic product by blow molding [0204] and discloses extrusion at temperatures of 180-195°C [0272], which read on applicant’s claimed heating of a mold with a cavity to the disclosed temperatures, placing the preform within the mold cavity, and blowing air into the cavity to result in a shaped product. Neither Ebe nor Mantzivis particularly discloses suitable blow pressures.
In the same field of endeavor, Dix discloses a blow molding method for polymer foams and articles comprising the same, with suitable blow pressures being greater than or equal to 20 psi (0.138 MPa) and less than 100 psi (0.689 MPa) [0019]. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the processes taught by Ebe and Mantzivis with the blow pressures taught by Dix with a reasonable expectation of success.
Neither Ebe, Mantzivis, or Dix discloses screw rotation speeds between 15 and 17 Hz. However, Ebe discloses that the time required to extrude a molded product can be adjusted by the screw speed [0212], with higher screw rotation speeds extruding the material more quickly. When there is a design need to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. Ebe recognizes a design need (extrusion speed) that is solved by an identified and predictable solution (screw rotation speed). It would have been obvious to one of ordinary skill in the art at the time of filing to determine through routine experimentation the optimum screw rotation speed in order to increase extrusion speed, thereby arriving at the claimed range. See MPEP 2144.05(II).
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/777,520 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because although the copending application recites the additional element of an amphiphilic stabilizing agent which is not present in the instant claims, the instant claims and specification also fail to teach away inclusion of such a stabilizer. The copending application also claims a bi-component micro-foaming agent, while the instant application claims a polymeric core-shell foaming agent. It is prima facie obvious to substitute equivalents known for the same purpose, so long as the equivalency is recognized in the prior art. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP 2144.06.
It would have been obvious to one of ordinary skill in the art to make the instantly
claimed compositions from the claims of the reference patent because they are encompassed by
the claims of the reference patent and would have been expected to give only predictable results.
The open language of the instant claims encompasses any additional ingredients of the reference
patent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nakao et al (US 20220298386 A1) discloses a light molded article comprising thermally expandable microspheres formed of a shell and a volatile substance. The shells can be formed from methacrylonitrile, methacrylic, and methyl methacrylate while the volatile core may be pentane or cyclohexane.
Liu et al (US 20220040892 A1) discloses a method for preparing a uniform-sized core-shell foaming agent (temperature-sensitive expandable microsphere) wherein the core contains at least one blowing agent selected from C4 to C9 alkanes or combinations thereof, and the shell material is selected from poly lactic acid (PLA), poly(lactic-co-glycolic acid) (PLGA), polystyrene (PS), poly methacrylate (PMA), poly methyl Methacrylate (PMMA), or polymers comprising one or more monomers of acrylonitrile, methacrylonitrile, 3-butene nitrile, methacrylate, ethyl acrylate, propyl acrylate, butyl acrylate, methyl methacrylate, methyl ethyl acrylate, glycidyl methacrylate, or any combination thereof. Foamed plastics comprising these microspheres are disclosed as having reduced density.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-Th 8-6 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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