DETAILED ACTION
The communication dated 6/20/2024 has been entered and fully considered. Claims 1-20 are amended. Claim 21 is cancelled. Claims 1-20 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
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 1, claim(s) 1-12, drawn to a method for preparing a solid foam.
Group 2, claim(s) 13-20, drawn to a solid foam.
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:
1 and 2 lack unity of invention because even though the inventions of these groups require the technical feature of a solid foam, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of GEHLSEN (US 6103152 A).
During a telephone conversation with ATTORNEY PATRICK SMITH on May 19, 2026 a provisional election was made without traverse to prosecute the invention of group 1, claims 1-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-20 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 6 is objected to because of the following informalities: the claim limitation of “wherein the wet foam used to obtained the discrete units” should read “wherein the wet foam used to obtain the discrete units”. Appropriate correction is required. For the sake of compact prosecution, the Examiner will understand the claim to read as “wherein the wet foam used to obtain the discrete units”.
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.
Claim(s) 1, 4, 5, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GEHLSEN (US 6103152 A).
For claim 1, GEHLSEN teaches a method to produce a multilayered foamed article [abstract and col 5 line 10]. This teaches the limitation of “A method for preparing a solid foam”. GEHLSEN also teaches discrete polymer structures embedded onto a foam base [col 2 line 27]. The polymer structures are also foamed [col 2 line 30]. This teaches the limitation of “wherein the method comprises: depositing discrete units of a foam on a surface to obtain a first foam deposition”. A polymer foam is layered onto and around the first polymer structures [Fig 6]. This teaches the limitation of “depositing a wet foam between the discrete units to obtain a subsequent foam deposition”. GEHLSEN teaches the foam structure is embedded into the polymer matrix that surrounds it [col 1 line 9]. The foam is cured and dried [col 2 line 40]. This teaches the limitation of “and drying the wet foam to obtain a solid foam wherein the discrete units of a foam are embedded in a foam matrix”.
For claim 4, GEHLSEN teaches the method according to claim 1, as above. GEHLSEN also teaches discrete polymer structures embedded on top of a foam base [col 2 line 27]. A polymer foam is extruded onto the structure [col 9 line 16] and dried [col 14 line 50]. This teaches the limitation of “wherein the discrete units are obtained by dispensing a wet foam as discrete units on to a surface, followed by drying of the wet foam”.
For claim 5, GEHLSEN teaches the method according to claim 1, as above. GEHLSEN teaches an embodiment where the hard structures are formed by coextruding with additives (wet) prior to curing (drying) [col 11 line 26]. This teaches the limitation of “wherein the discrete units are obtained by extruding a wet foam, drying the wet foam to form a dried foam, cutting the dried foam into the discrete units, and depositing said discrete units on to a surface”.
For claim 11, GEHLSEN teaches the method according to claim 1, as above. GEHLSEN teaches the discrete units are formed by extrusion into strips or rods [col 11 line 15]. The examiner understands the rods are cylindrical making the width the same as the height (width 1 times the height). This value is within the instant range of “wherein a width of each discrete unit is less than 1.3 times a height of the discrete unit”.
For claim 12, GEHLSEN teaches the method according to claim 1, as above. GEHLSEN teaches the outer material can be coated with stripes of discrete structure material [col 11 line 40]. This teaches the limitation of “wherein a coating is applied to at least one outer surface of the discrete units or the solid foam, or both”.
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.
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.
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over GEHLSEN (US 6103152 A).
For claim 2, GEHLSEN teaches the method according to claim 1, as above. GEHLSEN teaches discrete polymer structures are shaped by extrusion. GEHLSEN teaches the final foamed sheet has a thickness of about 1 mm [col 14 line 23]. GEHLSEN teaches an embodiment where the hard structures are formed by coextruding with additives (wet) prior to curing (drying) [col 11 line 26]. GEHLSEN also teaches an embodiment where the co-extrusion has a thickness (height and width) of 2.5 cm (25 mm) [col 17 line 52]. GEHLSEN teaches the composite has more than three layers (10 -100 layers or more) [col 11 line 34]. This is equivalent to a wet foam total height of between 10mm and 100 mm. This makes the discrete stripes between 25% and 250% of a single wet foam layer height. This range encompasses the instant claim range of “wherein a height of the discrete units is between 70 to 100 % of a height of the wet foam in the subsequent foam deposition”.
Claim(s) 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over GEHLSEN (US 6103152 A) in view of OJALA (US 20160229088 A1).
For claim 3, GEHLSEN teaches the method according to claim 1, as above. GEHLSEN teaches the foam composite is made from thermoplastics and cellulose derivatives [col 7 lines 24 and 27]. GEHLSEN does not teach the use of cellulose. OJALA teaches a similar foamed composite [abstract]. OJALA also teaches the composite uses a mixture of cellulose and thermoplastic [abstract]. OJALA teaches the cellulose content can be between 10 and 70% [0070]. This range is within the range of the instant claim range of “wherein the wet foam in the subsequent foam deposition comprises at least 10 wt% cellulose, as calculated on a total weight of the wet foam”. OJALA teaches the advantage of the composition is the improved stiffness and strength of the composite [0026]. It would be obvious to one skilled in the art to substitute the cellulose composition of OJALA into the composition of GEHLSEN to improve the final composition. One would be motivated to combine the art based on the improved stiffness and strength of the composite as taught by OJALA.
For claim 6, GEHLSEN teaches the method according to claim 4, as above. GEHLSEN teaches the foam composite is made from thermoplastics and cellulose derivatives [col 7 lines 24 and 27]. GEHLSEN also teaches the foamed striped structures can be coextruded with similar compositions to the other foamed layers [col 9 line 16]. GEHLSEN does not teach the use of cellulose. OJALA teaches a similar foamed composite [abstract]. OJALA also teaches the composite uses a mixture of cellulose and thermoplastic [abstract]. OJALA teaches the cellulose content can be between 10 and 70% [0070]. This range is within the range of the instant claim range of “wherein the wet foam used to obtained the discrete units comprises at least 10 wt% cellulose, as calculated on a total weight of the wet foam”. OJALA teaches the advantage of the composition is the improved stiffness and strength of the composite [0026]. It would be obvious to one skilled in the art to substitute the cellulose composition of OJALA into the composition of GEHLSEN to improve the final composition. One would be motivated to combine the art based on the improved stiffness and strength of the composite as taught by OJALA.
Claim(s) 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over GEHLSEN (US 6103152 A) in view of SLATTEGARD (WO 2020011587 A1).
For claim 7, GEHLSEN teaches the method according to claim 1, as above. GEHLSEN teaches the density of the core foamed stripe structure are different from the other foam densities [col 9 line 3]. GEHLSEN does not teach the numerical density of the foam. SLATTEGARD teaches a similar foamed composite [p 2 line 7] with cellulose derived polymer like GEHLSEN [p 1 line 29]. SLATTEGARD also teaches the cellulose is present from at least 65% in the final product [p8 line 2]. SLATTEGARD teaches the foam formed has a density of 5 to 200 kg/m3 [p3 line 11]. This range overlaps the instant range of “wherein the wet foam has a density from 70 - 600 kg/m3”. SLATTEGARD teaches the advantage of the invention is the reduction in flaking of the dried product [p26 line 8]. It would be obvious to one skilled in the art to substitute the cellulose composition of SLATTEGARD into the composition of GEHLSEN to improve the final composition. One would be motivated to combine the art based on the reduced flaking of the composite as taught by SLATTEGARD.
For claim 8, GEHLSEN teaches the method according to claim 1, as above. GEHLSEN teaches the density of the core foamed stripe structure are different from the other foam densities [col 9 line 3]. GEHLSEN does not teach the numerical density of the foam. SLATTEGARD teaches a similar foamed composite [p 2 line 7] with cellulose derived polymer like GEHLSEN [p 1 line 29]. SLATTEGARD also teaches the cellulose is present at most 85% in the final product [p8 line 6]. This range overlaps the instant claim range of “wherein the solid foam comprises 75-95 wt% cellulose fibres, as calculated on a total weight of the solid foam”. SLATTEGARD teaches the advantage of the invention is the reduction in flaking of the dried product [p26 line 8]. It would be obvious to one skilled in the art to substitute the cellulose composition of SLATTEGARD into the composition of GEHLSEN to improve the final composition. One would be motivated to combine the art based on the reduced flaking of the composite as taught by SLATTEGARD.
For claim 9, GEHLSEN teaches the method according to claim 1, as above. GEHLSEN teaches the density of the core foamed stripe structure are different from the other foam densities [col 9 line 3]. GEHLSEN does not teach the numerical density of the foam. SLATTEGARD teaches a similar foamed composite [p 2 line 7] with cellulose derived polymer like GEHLSEN [p 1 line 29]. SLATTEGARD teaches an embodiment of the foam formed has a density of under 50 kg/m3 [p 9 line 1] and another with a foam density of 5 to 200 kg/m3 [p3 line 11]. This range overlaps the instant range of “wherein the solid foam has a density of 10 - 60 kg/m3”. SLATTEGARD teaches the foam with low density has good strength and mechanical properties [p 9 line 2]. It would be obvious to one skilled in the art to substitute the cellulose composition of SLATTEGARD into the composition of GEHLSEN to improve the final composition. One would be motivated to combine the art based on the good strength and mechanical properties of the low density structure of composite as taught by SLATTEGARD.
For claim 10, GEHLSEN teaches the method according to claim 1, as above. GEHLSEN teaches the density of the core foamed stripe structure are different from the other foam densities [col 9 line 3]. GEHLSEN does not teach the numerical density of the foam. SLATTEGARD teaches a similar foamed composite [p 2 line 7] with cellulose derived polymer like GEHLSEN [p 1 line 29]. SLATTEGARD teaches an embodiment of the foam formed has a density of under 50 kg/m3 [p 9 line 1] and another with a foam density of 5 to 200 kg/m3 [p3 line 11]. SLATTEGARD teaches the foam with a density under 50 kg/m3 has good strength and mechanical properties [p 9 line 2]. This allows for a configuration with a high and low density portions. This teaches the limitation of “wherein a density of the foam in of the discrete units is higher than a density of the foam matrix”. SLATTEGARD teaches the foam with low density has good strength and mechanical properties [p 9 line 2]. It would be obvious to one skilled in the art to substitute the cellulose composition of SLATTEGARD into the composition of GEHLSEN to improve the final composition. One would be motivated to combine the art based on the good strength and mechanical properties of the low density structure of composite as taught by SLATTEGARD.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN M RUSSELL whose telephone number is (571)272-6907. The examiner can normally be reached Mon-Fri: 7:30 to 4:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.M.R./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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