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 without traverse of species (i): the linear low-density polyethylene having a biomass degree of 40% or more, claims 1-9, and 12 in the reply filed on 05/13/2026 is acknowledged.
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 1-7 and 12 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 JP 2013060514 A to Owaki et al. (hereinafter “Owaki”).
As to claims 1-3, and 6, Owaki discloses an expanded bead comprising a linear low density polyethylene (LLDPE) as a base resin, wherein the LLDPE resin has a biomass degree of 94% (paragraph 78). The LLDPE resin is commercially available under the trade name SLH218 and SLL118 from Blaskem Co. (paragraph 25 of Owaki vs. table B1 of Applicant’s disclosure). These are the exact same LLDPE resins set forth in the Applicant’s disclosure.
It appears that the expanded bead of Owaki is made of the same materials as that of the claimed invention. The LLDPE resin has a biomass degree of 94% (paragraph 78). The LLDPE resin is commercially available under the trade name SLH218 and SLL118 from Blaskem Co. (paragraph 25 of Owaki vs. table B1 of Applicant’s disclosure). Therefore, the examiner takes the position that the expanded bead comprising a crystal structure having one intrinsic peak and one melting peak on a higher temperature side than the intrinsic peak, on a DSC curve with a total heat of fusion of expanded bead of 70-100 J/g, and a heat of fusion at the high temperature peak of 10-50 J/g; and a ratio of the heat of fusion at the high temperature peak to the total heat of fusion of 0.3 to 0.7 would inherently be present as a 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.
As to claim 4, it appears that the expanded bead of Owaki is made of the same materials as that of the claimed invention. The LLDPE resin has a biomass degree of 94% (paragraph 78). The LLDPE resin is commercially available under the trade name SLH218 and SLL118 from Blaskem Co. (paragraph 25 of Owaki vs. table B1 of Applicant’s disclosure). Therefore, the examiner takes the position that a melt flow rate of the expanded bead of 0.1 to 2.0 g /10 min measured under conditions of a temperature of 190oC and a load of 2.16 kg would inherently be present as like material has like property.
As to claim 5, it appears that the expanded bead of Owaki is made of the same materials as that of the claimed invention. The LLDPE resin has a biomass degree of 94% (paragraph 78). The LLDPE resin is commercially available under the trade name SLH218 and SLL118 from Blaskem Co. (paragraph 25 of Owaki vs. table B1 of Applicant’s disclosure). Therefore, the examiner takes the position that the LLDPE resin comprising a butene and a hexene as copolymerization components would inherently be present as like material has like property.
As to claim 7, Owaki discloses that the expanded bead having a bulk density of 0.25 g/cc within the claimed range (paragraph 78).
As to claim 12, Owaki discloses that a molded article of expanded beads is produced by in-mold molding the expanded bead (paragraph 59).
Claims 1-7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over JP2000017079A to Taira et al. (hereinafter “Taira”) in view of Owaki.
As to claims 1, 5, and 6, Taira discloses an expanded bead obtained by foaming polyethylene resin particles with a density of 0.920 g/cc or more wherein the expanded bead has a bulk density of 0.024 to 0.042 g/cc, a melt flow index measured at 190oC and 2.16 kgf of 0.1 to 10 g/10 min, the melt tension of 2.5 g or less and closed cells with an average cell diameter of 250 microns or more (paragraph 6). The polyethylene resin particles are LLDPE resin particles (paragraph 10).
The expanded bead has a crystal structure of the LLDPE comprising one intrinsic peak and one high-temperature peak on a higher temperature side than the intrinsic peak on a DSA curve, wherein a heat of fusion at the high-temperature peak is 17 to 35J/g (figure 1; and paragraph 48). This is within the claimed range. Given that a ratio of the heat of fusion at the high-temperature peak to the total heat of fusion of the expanded bead is about 0.3 to 0.4 (figure 1) within the claimed range, the total heat of fusion of the bead would inherently be within the claimed range.
Taira does not explicitly disclose the LLDPE resin having a biomass degree of 40% or more as measured according to ASTM D 6866.
Owaki, however, discloses an expanded bead comprising LLDPE as a base resin, wherein the LLDPE resin has a biomass degree of 94% (paragraph 78). The LLDPE resin is commercially available under the trade name SLH218 and SLL118 from Blaskem Co. (paragraph 25 of Owaki vs. table B1 of Applicant’s disclosure). These are the exact same LLDPE resin set forth in the Applicant’s disclosure. Therefore, the examiner takes the position that the bio-based LLDPE comprises a butene and a hexene monomer as copolymerization components.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add the LLDPE having a biomass degree of 94% disclosed in Owaki to the resin composition for forming the expanded bead disclosed in Taira, motivated by the desire to contribute to addressing environmental problems and reducing the depletion of fossil fuel resources.
As to claim 2, Taira discloses that the heat of fusion at the high-temperature peak is 17 to 35 J/g (paragraph 48). This overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the heat of fusion at the high temperature peak will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the heat of fusion at the high temperature peak is critical or provides unexpected results.
As to claim 3, Taira discloses that a ratio of the heat of fusion at the high-temperature peak to the total heat of fusion of the expanded bead is about 0.3 to 0.4 (figure 1).
As to claim 4, Taira discloses the expanded bead having a melt flow index measured at 190oC and 2.16 kgf of 0.1 to 10 g/10 min (paragraph 6). This encompasses the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the melt flow index will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the melt flow index is critical or provides unexpected results.
As to claim 7, Taira discloses the expanded bead having a bulk density of 0.024 to 0.042 g/cc (paragraph 6).
As to claim 12, Taira discloses that a molded article of expanded beads is produced by in-mold molding the expanded bead (paragraph 9).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Taira in view of Owaki as applied to claim 1 above, further in view of JP 2001212840 to Samejima et al. (hereinafter “Samejima”).
Neither Taira nor Owaki discloses the expanded bead having a closed cell content of 80% or greater.
Samejima, however, discloses an in-molded product using expanded beads of LLDPE (paragraphs 37 and 38). The expanded bead has closed cells with an average cell size of 170 to 550 microns and a closed cell content of 85% or higher (paragraphs 39 and 41).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the expanded beads of Taira as modified by Owaki having a closed cell content of 85% or higher disclosed in Sanejima, motivated by the desire to obtain a molded product of target quality.
Claims 1-9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0338246 to Yoshida (hereinafter “Yoshida”) in view of Taira and Owaki.
As to claims 1-3, 5, and 6, Yoshida discloses an expanded bead obtained by foaming LLDPE resin particles wherein the expanded bead has an expansion ratio of 2 to 50, an average cell diameter of 200 microns and an open cell ratio of 5% (table 3, examples 6 and 10; paragraph 191).
The expanded bead has a crystal structure of the LLDPE comprising one intrinsic peak and one high-temperature peak on a higher temperature side than the intrinsic peak on a DSA curve with a ratio of the heat of fusion at the high-temperature peak to the total heat of fusion of the expanded bead of 0.3 to 0.4 (figure 1, and table 3).
Yoshida does not explicitly disclose (i) the LLDPE resin having a biomass degree of 40% or more as measured according to ASTM D 6866 and (ii) a heat of fusion at the high-temperature peak of 10-50 J/g.
Owaki, however, discloses an expanded bead comprising LLDPE as a base resin, wherein the LLDPE resin has a biomass degree of 94% (paragraph 78). The LLDPE resin is commercially available under the trade name SLH218 and SLL118 from Blaskem Co. (paragraph 25 of Owaki vs. table B1 of Applicant’s disclosure). These are the exact same LLDPE resins set forth in the Applicant’s disclosure. Therefore, the examiner takes the position that the bio-based LLDPE inherently comprises a butene and a hexene monomer as copolymerization components.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add the LLDPE resin having a biomass degree of 94% disclosed in Owaki in the resin composition for forming the expanded bead of Yoshida, motivated by the desire to contribute to addressing environmental problems and reducing the depletion of fossil fuel resources.
Taira, however, discloses an expanded bead obtained by foaming polyethylene resin particles with a density of 0.920 g/cc or more wherein the expanded bead has a bulk density of 0.024 to 0.042 g/cc, a melt flow index measured at 190oC and 2.16 kgf of 0.1 to 10 g/10 min, the melt tension of 2.5 g or less and closed cells with an average cell diameter of 250 microns or more (paragraph 6). The polyethylene resin particles are LLDPE resin particles (paragraph 10).
The expanded bead has a crystal structure of the LLDPE comprising one intrinsic peak and one high-temperature peak on a higher temperature side than the intrinsic peak, on a DSA curve, wherein a heat of fusion at the high-temperature peak is 17 to 35J/g (figure 1; and paragraph 48). This is within the claimed range. Given that a ratio of the heat of fusion at the high-temperature peak to the total heat of fusion of the expanded bead is about 0.3 to 0.4 (figure 1), the total heat of fusion of the bead would inherently be within the claimed range.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the heat of fusion at the high-temperature peak and the total heat of fusion of the expanded bead of Yoshida in the ranges disclosed in Taira, motivated by the desire to promote fusion properties of expanded beads, thereby obtaining an in-mold foam molded article having excellent surface smoothness.
As to claim 4, Yoshida does not explicitly disclose the melt flow index of the expanded bead.
Taira, however, discloses an expanded bead having a melt flow index measured at 190oC and 2.16 kgf of 0.1 to 10 g/10 min (paragraph 6). This encompasses the claimed range.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the expanded bead of Yoshida having a melt flow index in the range disclosed in Taira, motivated by the desire to allow efficient processing during mold filling and uniform foaming properties.
As to claim 7, Yoshida discloses that the expanded bead has an expansion ratio of 2 to 50 or a bulk density of 0.02 to 0.50 g/cc (paragraph 191). This overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the bulk density of the expanded bead will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the bulk density of the expanded bead is critical or provides unexpected results.
As to claim 8, Yoshida discloses that the expanded bead has an open cell content of 5% (table 3). Likewise, the expanded bead has a closed cell content of 95%.
As to claim 9, Yoshida discloses that the expanded bead has cells with an average cell diameter of 180 to 450 microns (paragraph 193). This overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the average cell diameter of the expanded bead will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the average cell diameter of the expanded bead is critical or provides unexpected results.
As to claim 12, Yoshida discloses that a molded article of expanded beads is produced by in-mold molding the expanded bead (abstract).
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 1-9 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 and 9 of copending Application No. 18/851,148 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current invention are anticipated by those of the reference application.
It appears that the expanded bead of the reference application is structurally and chemically the same as that of the claimed invention. Therefore, the examiner takes the position that the biomass degree of 40% or more, melt flow rate of 0.1 to 2.0 g/10 min, closed cell content, and average cell diameter would be present as like material has like property.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-10 of copending Application No. 19/174,139 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current invention are anticipated by those of the reference application.
It appears that the expanded bead of the reference application is structurally and chemically the same as that of the claimed invention. Therefore, the examiner takes the position that the biomass degree of 40% or more, melt flow rate of 0.1 to 2.0 g/10 min, closed cell content, and average cell diameter would be present as like material has like property.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights