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 .
Claim Objections
Claims 2 – 10 are objected to because of the following informalities:
for consistency, Claims 2 – 10 should be amended to recite the/said low-density, thermoplastic foam in each instance; and
units for molecular weight should be inserted in Claims 2 and 6.
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 – 10 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 because:
The term “low density” in Claim 1 is a relative term which renders the claim indefinite. The term “low density” 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. For the purposes of examination, Claim 1 has be interpreted as simply setting forth a thermoplastic foam.
There is a lack of antecedent basis for “the” cells and “the” thermoplastic polymer set forth in Claim 1. It is unclear if these recitations refer only to portions of the thermoplastic polymer cells initially set forth in the clam. For the purposes of examination, Claim 1 has be interpreted as setting forth a thermoplastic foam comprising (a) a thermoplastic polymer comprising polyethylene furanoate and cells comprising cell walls which are defined by said thermoplastic polymer, thereby providing antecedent basis for “the” cells and “the” thermoplastic polymer subsequently recited in the claim.
As Claims 2 – 10 ultimately depend on Claim 1, they incorporate the subject matter thereof and are therefore also rejected under this statute.
Additionally, it is unclear if Claim 6 incorporates all limitations of Claim 2, the claim upon which it depends. Claim 2 sets forth the cell walls consist essentially of polyethylene furanoate that has been treated with a chain extender. On the other hand, Claim 6 only sets forth the cell walls consist essentially of polyethylene furanoate. For the purposes of examination, Claim 6 will be interpreted as setting forth the cell walls consist essentially of polyethylene furanoate that has been treated with a chain extender.
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.
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 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0033605 to Kato.
Regarding Claims 1 and 4. Kato teaches a thermoplastic foam comprising (a) a thermoplastic polymer comprising polyethylene furanoate (PEF) and cells defined by said thermoplastic polymer. The volume percentage of closed cells is preferably 50% or more ([0078] and [0090] – [0092]). The PEF is specifically synthesized by a dehydration reaction of ethylene glycol and furandicarboxylic acid [0101] – [0102], corresponding to a polymer comprising roughly 100 mol% and weight% ethylene furanoate moieties.
A foaming agent is further provided [0121], thereby resulting in said foaming agent being contained in the closed cells.
Kato does not expressly teach in an embodiment in which PEF is provided as the polyester resin and HFC-152a is provided as the foaming agent. However, Kato does teach 1,1-difluoroethane/HFC-152a is suitably used as a foaming agent to prepare the disclosed foams [0121]. Consequently, it is the Office’s position that, before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide HFC-152a as a foaming agent in an embodiment of Kato in which PEF is provided as the polyester resin. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Sato expressly teaches HFC-152a as a suitable foaming agent for use in the disclosed foams [0121].
Claims 2, 3, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0033605 to Kato, as applied to Claim 1 above, and further in view of US 2019/0144661 to Oda et al. (hereinafter Oda).
Regarding Claims 2 and 6. Kato teaches the thermoplastic foam of Claim 1 wherein the thermoplastic polymer may specifically correspond to polyethylene furanoate (PEF) [0090] – [0092]) but does not expressly teach it has been treated with a chain extender. However, Oda teaches the concept of treating a polyester resin, e.g. a PEF resin, with a chain extender to provide a polyester resin molding composition having a weight average molecular weight of 50,000 to 150,000 g/mol ([0134] – [0137], [0152] – [0153], and [0178]). Kato and Oda are analogous art as they are from the same field of endeavor, namely aromatic polyester compositions which may be foamed. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide treat the PEF resin in Kato with a chain extender, as taught by Oda. The motivation would have been that the use of a chain extender would increase the molecular weight of the PEF resin and provide resultant advantages such as increases in processability and melt strength.
Regarding Claim 3. Kato teaches the thermoplastic foam of Claim 2, wherein the volume percentage of closed cells is more preferably 70% or more and particularly preferably 80% or more ([0078] and [0090] – [0092]).
Regarding Claim 5. Kato teaches the thermoplastic foam of Claim 2 having a density of 0.06 to 0.67 g/cc [0087]. While this range is not identical to the instantly claimed range of less than 0.2 g/cc, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0033605 to Kato, as applied to Claim 1 above, and further in view of US 2020/0231735 to Salsman.
Regarding Claim 7. Kato teaches the thermoplastic foam of Claim 1 but does not expressly teach it further comprises 1234ze(E). However, Salsman teaches both HFC-152a and HFO-1234ze(E) as foaming agents in the preparation of aromatic polyester resin foams [0059]. Kato and Salsman are analogous art as they are from the same field of endeavor, namely aromatic polyester foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide a combination of HFC-152a and HFO-1234ze(E) in Kato. The motivation would have been that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) In light of In re Kerkhoven, combining HFC-152a and HFO-1234ze(E) would have been obvious given their known and shared intended use as foaming agents in the preparation of aromatic polyester resin foams.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0033605 to Kato, as applied to Claim 1 above, and further in view of WO 2022/009185 to Hermans et al. (hereinafter Hermans).
Regarding Claim 8. Kato teaches the thermoplastic foam of Claim 1 but does not expressly teach a wind energy turbine comprising said foam. However, Hermans teaches the concept of providing a thermoplastic foam, e.g. a PEF foam, in a composite element prepared in the form of a wind turbine (Page 8, Lines 10 – 11; and Page 17, Lines 34 – 36). Kato and Hermans are analogous art as they are from the same field of endeavor, namely thermoplastic foams and applications thereof. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use the PEF foam of Kato in the preparation of a wind turbine. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Herman expressly teaches PEF foam may be used to form a wind turbine article (Page 8, Lines 10 – 11; and Page 17, Lines 34 – 36).
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0033605 to Kato in view of US 2019/0144661 to Oda et al. (hereinafter Oda), as applied to Claims 2 and 5 above, and further in view of WO 2022/009185 to Hermans et al. (hereinafter Hermans).
Regarding Claims 9 and 10. Kato teaches the thermoplastic foam of Claims 2 and 5 but does not expressly teach a wind energy turbine comprising said foam. However, Hermans teaches the concept of providing a thermoplastic foam, e.g. a PEF foam, in a composite element prepared in the form of a wind turbine (Page 8, Lines 10 – 11; and Page 17, Lines 34 – 36). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use the PEF foam of Kato in the preparation of a wind turbine. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Herman expressly teaches PEF foam may be used to form a wind turbine article (Page 8, Lines 10 – 11; and Page 17, Lines 34 – 36).
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 – 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 31 – 50 of copending Application No. 18/030,080 in view of US 2020/0231735 to Salsman.
While the conflicting claims are not identical, they are obvious variations upon each other. The claims of Application No. 18/030,080 differ from the instant claims in that they do not expressly set forth the closed cells further comprise HFC-152a. However, Salsman teaches both HFC-152a and HFO-1234ze(E) as foaming agents in the preparation of aromatic polyester resin foams [0059]. Before the effective filing date of the instantly claimed invention, it would then have been obvious to a person of ordinary skill in the art to provide a combination of HFC-152a and HFO-1234ze(E) to prepare the thermoplastic foam set forth in the claims off Application No. 18/030,080. The motivation would have been that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) In light of In re Kerkhoven, combining HFC-152a and HFO-1234ze(E) would have been obvious given their known and shared intended use as foaming agents in the preparation of aromatic polyester resin foams [0059].
This is a provisional nonstatutory double patenting rejection.
Claims 1 – 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 15 of copending Application No. 18/809,105 in view of US 2020/0231735 to Salsman.
While the conflicting claims are not identical, they are obvious variations upon each other. The claims of Application No. 18/809,105 differ from the instant claims in that they do not expressly set forth the closed cells further comprise HFC-152a. However, Salsman teaches both HFC-152a and HFO-1234ze(E) as foaming agents in the preparation of aromatic polyester resin foams [0059]. Before the effective filing date of the instantly claimed invention, it would then have been obvious to a person of ordinary skill in the art to provide a combination of HFC-152a and HFO-1234ze(E) to prepare the thermoplastic foam set forth in the claims off Application No. 18/809,105. The motivation would have been that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) In light of In re Kerkhoven, combining HFC-152a and HFO-1234ze(E) would have been obvious given their known and shared intended use as foaming agents in the preparation of aromatic polyester resin foams [0059].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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