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 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 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0273407 to Goldberg (hereinafter “Goldberg”) further in view of US 2006/0264523 to Lee et al. (hereinafter “Lee”).
Goldberg discloses a footwear stiffener comprising a core layer and an adhesive layer provided on each surface of the core layer by co-extrusion (abstract, and paragraph 22). The footwear stiffener has a thickness of 0.7 mm (paragraph 27, and example 4). Given that the footwear stiffener comprises 12% by weight of the adhesive layer, and 88 % by weight of the core layer (paragraph 27, example 2), the core layer has a thickness of 0.62 mm.
0.7 x 88% = 0.62 mm
The core layer comprises a polyvinyl chloride polymer, a polyethylene terephthalate glycol (PETG), a PET or a copolyester (paragraph 15). In particular, the core layer includes 40 to 90 wt% of recycled copolyester (paragraphs 16 and 17).
Goldberg does not explicitly disclose that the core layer is a microcellular foam layer comprising a nitrogen gas.
Lee, however, discloses a microcellular foam for shoes made of polyvinyl chloride, layered silicate and a foaming agent (abstract; and paragraphs 8 and 23).
The layered silicate enables the formation of foam cells having superior mechanical properties even with low specific gravity by preventing escaping of the foaming agent during the foaming process. The layered silicate also promotes the formation of the foam cells through the nucleating effect on the surface thereof (paragraph 22). The layered silicate thus functions as a nucleating agent. The content of the layered silicate is 0.01 to 10 parts by weight based on the weight of the polymer (paragraph 28).
The foaming agent includes nitrogen gas in an amount of 0.01 to 10 parts by weight based on the weight of the foam layer (paragraphs 29-31). This overlaps 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 incorporate nitrogen gas in an amount disclosed in Lee in the core layer disclosed Goldberg motivated by the desire to provide a lightweight footwear stiffener having superior mechanical strength and improved non-flammability while obtaining a high foaming efficiency with a small amount of a foaming agent,
As to claim 14, Goldberg discloses that a footwear stiffener comprises a core layer and an adhesive layer provided on each surface of the core layer by co-extrusion (abstract, and paragraph 22).
As to claim 15, Goldberg discloses that a footwear stiffener comprises 23% by weight of the adhesive layer, and 77% by weight of the core layer (paragraph 28).
As to claims 16 and 20, Goldberg discloses that the core layer includes 40 to 90 wt% of recycled copolyester, and 5 wt% of a thermoplastic elastomer (paragraphs 17-18).
As to claims 17-19, the combined disclosures of Goldberg and Lee result in a microcellular foam core comprises 40 to 90 wt% of recycled copolyester, 5 wt% of a thermoplastic elastomer, 0.01 to 10 wt% of a layered silicate (nucleating agent) and 0.01 to 10 wt% of nitrogen gas. The content of the nucleating agent overlaps the claimed ranges.
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. Differences in the contents of the nucleating agent and nitrogen gas will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating the contents of the nucleating agent and nitrogen gas are critical or provide unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate in the core layer of Goldberg a layered silicate in an amount in the range as disclosed in Lee motivated by the desire to enable the formation of foam cells having superior mechanical properties even with low specific gravity by preventing escaping of the foaming agent during foaming process, and to promote the formation of the foam cells through the nucleating effect on the surface thereof. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add in the core layer of Goldberg a nitrogen gas in an amount disclosed in Lee motivated by the desire to generate the foam cells while providing improved mechanical strength for the footwear stiffener. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
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 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,138,900. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US Patent No. 12,138,900 disclose each and every element of the claims of the current application.
Conclusion
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights