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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-3 in the reply filed on 4/22/2026 is acknowledged. The traversal is on the ground(s) that the unity of invention does exist because the shared special technical feature among Groups I-III makes over the prior art. This is not found persuasive because in the response filed on 04/22/2026, Applicant did not distinctly and specifically point out that the shared technical feature of the crystalline thermoplastic resin expanded bead of claim 4 was not taught by Nakamura as stated by the Examiner.
Applicant further asserts that a search and examination of all the claims of Groups I-III will not be overburdensome to the Examiner in accordance with MPEP 803. That is not true for the following reasons.
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(c) the prior art applicable to one invention would not likely be applicable to another invention.
The examiner respectively wishes to point out that the unity of invention is not determined by MPEP§ 803, but by PCT Rule 13.2, which addresses that when the shared special technical features do not make a contribution over the prior art, the unity is lacking.
The requirement is still deemed proper and is therefore made FINAL.
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 1-3 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.
As to claim 1, it does not make sense that the crystalline thermoplastic resin expanded beads are formed by mutual fusion-bonding to themselves. Instead, the molded article comprises crystalline thermoplastic resin expanded beads, and formed by mutual fusion-bonding of the crystalline thermoplastic resin expanded beads.
Elimination of the term “wherein” followed by “the molded article has a closed cell content” from the claim is deemed necessary to overcome an issue of repetition.
As to claim 2, the open cell content of 7.5% or less is not within the range of 2 to 12% set out in parent claim. Does Applicant want to convey the open cell content of 2 to 7.5%?
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2014/0171524 to Shinohara et al. (hereinafter “Shinohara”).
Shinohara discloses a molded article comprising crystalline polyvinylidene fluoride (PVDF) resin expanded beads formed by mutual fusion-bonding of the PVDF resin expanded beads (abstract, figure 1, and paragraph 125). The resin bead is cut from a polymer strand wherein the resin bead has an aspect ratio (L/D) of 0.8 to 2.5 (paragraph 68). The resin beads are subject to expanding and foaming to form expanded beads (paragraph 67). Hence, the expanded bead has a columnar shape without through holes in view of the process of making the same (paragraphs 67 and 68).
Turing to the Applicant’s disclosure, a molded article ratio is a value obtained by dividing the density of the crystalline polymer constituting the molded article by the molded article density.
Shinohara discloses that the PVDF resin has a density of 1.7 to 1.9 g/cc (paragraph 39) while the molded article has a density of 0.038-0.048 g/cc (table 3, examples 2-4). This would give the molded article having a molded article ratio of 35 to 50 times within the claimed range.
1.7: 0.048 = 35
1.9: 0.038 = 50
Shinohara does not explicitly disclose the molded article having a closed cell content of 90% or more, an open cell content of 2 to 12%, and a number of the expanded beads per unit aera in a surface of the molded article of 3 to 30 beads /cm2.
It appears that the molded article of Shinohara meets all structural limitations and chemistry set forth in the claim and the Applicant’s disclosure. The molded article comprises the crystalline thermoplastic PVDF resin expanded beads mutual fusion-bonding to each other (abstract, figure 1, and paragraph 125). The resin bead is cut from a strand of the crystalline thermoplastic PVDF resin wherein the resin bead has an aspect ratio (L/D) of 0.8 to 2.5 (paragraph 68). The resin beads are then subject to expanding and foaming to form expanded beads (paragraph 67). Hence, the expanded bead has a columnar shape without through holes in view of the process of making the same (paragraphs 67 and 68).
The expanded beads have a closed cell content of 94-95% and a density 47-67 g/L within the ranges set out in the Applicant’s disclosure (examples 2-4, table 3). Therefore, the examiner takes the position that the molded article having the closed cell content of 90% or more, the open cell content of 2 to 12%, and the number of the expanded beads per unit aera in a surface of the molded article of 3 to 30 beads /cm2 would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights