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 .
REQUIREMENT FOR UNITY OF INVENTION
2. As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-7, 16-17, drawn to a foamed article.
Group II, claim(s) 8-15, 18-20, drawn to a method for making the foamed article.
3. The groups of inventions listed above 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 for the following reasons:
They lack unity of invention because even though the inventions of these groups require the technical feature of:
a foamed article prepared by a process comprising: providing a polyether block amide and a thermoplastic polyurethane; compounding the polyether block amide and the thermoplastic polyurethane and forming a blend; shaping the blend and forming a preform; and foaming the preform and obtaining the foamed article, wherein the thermoplastic polyurethane has a weight percentage of less than 22 wt.% in the blend,
i.e. the limitations of instant claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Zujiang et al (CN 109385097, based on machine translation submitted in IDS on 05/14/2024).
4. Thus, Zujiang et al discloses foam material for shoes prepared by the process comprising:
1) combining
A) 50-100 pbw, such as 93 pbw ([0073]) of a nylon elastomer comprising a polyetherimide block copolymer comprising polyamide blocks and polyether blocks ([0041]) with
B) 0-50 pbw, such as 7 pbw ([0074]) of a thermoplastic elastomer comprising thermoplastic polyurethane ([0033]-[0034], [0019]);
2) mixing and injection molding said components to obtain an elastomer composite material ([0024]), i.e. corresponding to a pre-form of claim 1;
3) immersing the composite material in a high pressure fluid atmosphere to foam the composite material ([0025]).
It is further noted that instant claim 1 is a product-by-process claim. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985). In the present case, the product itself, i.e. a foamed article of Group I, comprises a blend of a polyether block amide and less than 22%wt of the thermoplastic polyurethane.
5. During a telephone conversation with Richard Chinn on August 25, 2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-7, 16-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-15, 18-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
6. 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 § 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.
7. Claims 2-3 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.
8. Claim 2 recites a limitation of “the foamed article has a microcellular structure with an average diameter of 40 µm to 400 µm”; claim 3 recites a limitation of “the microcellular structure has a wall thickness of 1 µm to 20 µm”. However, it is not clear if the term “an average diameter” of claim 2 belongs to a “structure” or to cells. It is further not clear if the term “wall thickness” of claim 3 belongs to the thickness of the wall of the structure or of the wall of each cell. Instant specification does not provide a clear description of that; Examples of instant specification are silent with respect to “average diameter” or “wall thickness” at all. For the purpose of prosecution, the terms “average diameter” and “wall with thickness” are considered as being related to individual cells.
Claim Rejections - 35 USC § 102
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.
9. Claims 1, 5-7, 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zujiang et al (CN 109385097, based on machine translation submitted in IDS on 05/14/2024).
10. Zujiang et al discloses foam material for shoes prepared by the process comprising:
1) combining
A) 50-100 pbw, specifically 93 pbw ([0073]) of a nylon elastomer comprising a polyetherimide block copolymer comprising polyamide blocks and polyether blocks ([0041]) with
B) 0-50 pbw, specifically 7 pbw ([0074], also as to instant claim 16) of a thermoplastic elastomer comprising thermoplastic polyurethane ([0033]-[0034], [0019]);
2) mixing and injection molding said components to obtain an elastomer composite material ([0024]), i.e. corresponding to a pre-form of claim 1;
3) immersing the composite material in a high pressure fluid atmosphere to foam the composite material ([0025]).
It is further noted that instant claim 1 is a product-by-process claim. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985). In the present case, the product itself, i.e. a foamed article of claim 1, comprises a blend of a polyether block amide and less than 22%wt of the thermoplastic polyurethane.
11. As to instant claims 5, the composite material comprises 0 parts of antioxidant, 0 pbw of stearic acid and 0 pbw of a cell stabilizer ([0047]); and is silent with respect to the presence of compatibilizers.
12. As to instant claims 6-7, the foamed composite material is used for making soles of sport shoes ([0027]).
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.
13. Claims 1, 5-7, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Zujiang et al (CN 109385097, based on machine translation submitted in IDS on 05/14/2024).
14. Zujiang et al discloses foam material for shoes prepared by the process comprising:
1) combining
A) 50-100 pbw, such as 93 pbw ([0073]) of a nylon elastomer comprising a polyetherimide block copolymer comprising polyamide blocks and polyether blocks (PEBA) ([0041]) with
B) 0-50 pbw, such as 7 pbw ([0074], also as to instant claim 16) of a thermoplastic elastomer comprising thermoplastic polyurethane ([0033]-[0034], [0019]);
2) mixing and injection molding said components to obtain an elastomer composite material ([0024]), i.e. corresponding to a pre-form of claim 1;
3) immersing the composite material in a high pressure fluid atmosphere to foam the composite material ([0025]).
It is further noted that instant claim 1 is a product-by-process claim. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
15. Based on the teachings of Zujiang et al, it would have been obvious to a one of ordinary skill in the art to choose and use PEBA as the nylon elastomer component A) and thermoplastic polyurethane as the component B), since it would be 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).
16. The ranges in the foam of Zujiang et al are overlapping with the corresponding ranges as those 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).
17. As to instant claims 5, the composite material comprises 0 parts of antioxidant, 0 pbw of stearic acid and 0 pbw of a cell stabilizer ([0047]); and is silent with respect to the presence of compatibilizers.
18. As to instant claims 6-7, the foamed composite material is used for making soles of sport shoes ([0027]).
19. Claims 1-2, 4-7, 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Cocquet et al (US 2019/0382546) in view of Jacobs (US 2017/0197342) and Zhang et al (CN108250734, based on machine translation submitted in IDS on 05/14/24).
20. Cocquet et al discloses a foam made by a process comprising:
1) providing a foamable composition comprising polymer matrix and a foaming agent ([0040]-[0046]), wherein the matrix comprises:
A) 90-99.9%wt of at least one block copolymer comprising polyamide blocks and
polyether blocks ([0032], [0040]), PEBA ([0015], [0071]) and
B) 0.1-50%wt, or 5-30%wt of one or more other polymers ([0034], [0121]);
2) injecting the composition into a mold;
3) foaming the mixture by heating or by opening the mold ([0051]-[0057]);
wherein the produced foam has a density of less than 0.05-0.8 g/cc or 0.1 g/cc ([00127], as to instant claims 4 and 17) and cell size of 30-130 micron ([0021]-[0022], as to instant claim 2).
21. Given the foam composition is injected into a mold before foaming in the step 3) above, therefore, upon molding in the mold the composition will intrinsically and necessarily will at least partially be shaped according to the structure of the mold, thus at least partially forming a pre-form as well. 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.
22. It is further noted that instant claim 1 is a product-by-process claim. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
23. As to instant claims 6-7, the foam is used for making sport equipment, specifically shoe soles ([0130]).
24. Given the foam composition is used for making shoe soles, and the composition is taught as being injected into a mold before foaming, therefore, it would have been obvious to a one of ordinary skill in the art to inject the foam composition into a mold adapted to produce molded articles in the form/shape of shoe sole, to form a pre-form of the shoe sole, followed by foaming said pre-form by opening the mold or heating as taught by Cocquet et al as well, since selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. Ex parte Rubin , 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
25. All ranges in the foam of Cocquet et al are overlapping with the corresponding ranges as those 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).
26. As to instant claim 5, Cocquet et al is silent with respect to the presence of compatibilizers.
27. Though Cocquet et al discloses the foam composition used for making said foam comprising additional polymers in amount of as low as 0.1%wt, or 5-30%wt ([0121]), Cocquet et al does not teach said additional polymer being thermoplastic polyurethane; and does not explicitly teach forming a pre-form before foaming.
28. However,
1) Jacobs discloses foam articles including boot sole and shoe midsoles ([0041], [0046]), produced by a process comprising preparing a solid polymer pre-form that is pre-shaped by injection molding ([0023]), subjecting the solid pre-form to drive a gas, followed by foaming ([0016]), wherein the polymer used for making the pre-form include PEBA and thermoplastic polyurethane (TPU) ([0021]).
Thus, Jacobs teaches that the polymers used for making shoe soles include a combination of PEBA and TPU, and wherein the process for making the foam includes forming a pre-shaped preform from the polymer composition before foaming.
2) Zhang et al discloses a foam produced from a PEBA/TPU blend, wherein the weight ratio of PEBA to TPU includes 90:10 ([0011]), wherein the produced foam is microporous and is having a low density, good resilience and mechanical properties ([0018], [0015]).
Thus, Zhang et al explicitly teaches the use of TPU in combination with PEBA for making microporous, low density foams having good resilience.
29. Since the TPU used in combination with PEBA is taught in the art as being the polymer composition for making microporous, low density foams with good resilience, also used for making shoe sole, as shown by Jacobs and Zhang et al, and as required by Cocquet et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Cocquet et al, Jacobs and Zhang et al, and to use, or obvious to try to use the TPU as the second polymer component B) in the foam composition of Cocquet et al in amount of as low as 0.1%wt, or at a weight ratio PEBA:TPU of 90:10, since it would have been obvious to choose material based on its suitability, and further to produce the shoe sole of Cocquet et al by forming a preform having a pre-shape of the shoe sole first before foaming said preform, as taught by Jacobs 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). 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
30. Claims 1-7, 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Cocquet et al (US 2019/0382546) in view of Jacobs (US 2017/0197342) and Zhang et al (CN108250734, based on machine translation submitted in IDS on 05/14/24), in further view of Hayashi et al (US 2019/0153189).
31. The discussion with respect to Cocquet et al in view of Jacobs and Zhang et al, set forth in paragraphs 19-29 above, is incorporated here by reference.
32. Though Cocquet et al in view of Jacobs and Zhang et al do not recite thickness of the wall of cells of the foamed articles,
Hayashi et al discloses a foam molded article based on TPU having density of 0.08-0.3 g/cc, average cell diameter of 100-400 micron, and further specifies the cell wall thickness of 15 micron or more ([0212]), wherein the foam having such properties is free from color unevenness and is uniform in color tone ([0212]).
33. Since the foams of Hayashi et al and Cocquet et al in view of Jacobs and Zhang et al are low density, microporous molded foams, produced from polymer compositions comprising TPU, and thereby belong to the same field of endeavor, wherein Hayashi et al further specifies such foam having cell wall thickness of 15 micron or more, providing foamed articles having uniform color tone, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Hayashi et al and Cocquet et al in view of Jacobs and Zhang et al, and to produce , or obvious to try to produce the foam of Cocquet et al in view of Jacobs and Zhang et al having cell wall thickness of 15 micron according to the teachings Hayashi et al, so to ensure the foam articles of Cocquet et al in view of Jacobs and Zhang et al are having uniform color tone as well, given such is desired, thereby arriving at the present invention. 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
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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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