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 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 – 4, 6, 8, 12 – 14, 17 – 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2002/0193549 to Haseyama et al. (hereinafter Haseyama) in view of WO 2016/194737 to Koshita et al. (hereinafter Koshita). For the purposes of examination, citations for Koshita are taken from an English-language equivalent of the document, US 2018/0155518.
Regarding Claims 1, 3, 4, 6, 8, 12, 17, and 21. Haseyama teaches a bead foam derived from 100 parts by weight of a urethane-based thermoplastic elastomer composition (A) (Abstract; and [0292] – [0293]). Said urethane-based thermoplastic elastomer composition comprises more preferably 50 to 90% by weight of a thermoplastic urethane, based on the total (100% by weight) of the thermoplastic urethane and another thermoplastic resin contained therein [0127]. The other thermoplastic resin will then constitute 10 to 50% by weight, based on the total (100% by weight) of the thermoplastic urethane and another thermoplastic resin. This additional thermoplastic resin may be polyethylene [0157]. Haseyama further teaches molded products prepared from the inventive foams [0385].
Haseyama sets forth TPUs having a resin hardness of 80 (Shore) or less are more preferable [0149]. The range taught by Haseyama then overlaps with the claimed Shore A hardness. 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) 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 select a TPU having a resin hardness at the upper end of claimed range, i.e. 80 Shore A. The motivation would have been that TPUs having a higher Shore A hardness will provide articles with desirable properties, including increased dimensional stability and resistance to deformation.
Haseyama is silent with respect to the average diameter of the beads, such that it can be discerned that the disclosure of “bead” foam corresponds to a bead foam as defined in the instant specification. Haseyama is further silent and bulk density of the beads, as well as the processes by which they are made and utilized to prepare molded articles. However, Koshita teaches expanded beads having a maximum bead diameter of preferably up to 8 mm ([0001] and [0047]). The average diameter of the expanded beads must then be equal to less than 8 mm. The expanded beads in Koshita are thus reasonably considered to correspond to “bead foam” per the definition provided in the instant specification. The apparent/bulk density of the bead foam is in the “still more” preferable range of 0.03 to 0.2 g/cm3 [0040], corresponding to 30 to 200 g/l. The beads are formed by impregnating a resin composition (Z) under high pressure with a blowing agent and then expanding the impregnated composition under a low pressure [0050], corresponding to a decrease in pressure. The molded products are subsequently formed by introducing the expanded beads into a mold and then heating to fuse the expanded beads [0080]. Haseyama and Koshita are analogous art as they are from the same field of endeavor, namely expandable/expanded thermoplastic polyurethanes. 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 prepare the bead foam of Haseyama with in the manner taught by Koshita. The motivation would have been that Koshita shows this to be a suitable preparation method and appropriate size and bulk density for thermoplastic polyurethane bead foams.
Haseyama is also silent with respect to the rebound resilience tensile strength, elongation at break, and compressive stress at 10% compression of the molded body. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Haseyama, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a molded body having property values in the instantly claimed ranges, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claims 2, 18, and 19. Haseyama teaches the bead foam of Claim 1. As indicated in the rejection of Claim 1, the urethane-based thermoplastic elastomer composition comprises more preferably 50 to 90% by weight of a thermoplastic urethane, based on the total (100% by weight) of the thermoplastic urethane and another thermoplastic resin contained therein [0127]. The other thermoplastic resin, e.g. polyethylene, will then constitute 10 to 50% by weight, based on the total (100% by weight) of the thermoplastic urethane and another thermoplastic resin.
The Office recognizes that Haseyama does not teach identical ranges for the thermoplastic polyurethane and polyolefin/polyethylene to those claimed. However, the ranges taught by Haseyama do overlap with the instantly claimed amounts. 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)
Regarding Claim 13. Haseyama teaches the molded body of Claim 5 may be prepared in the form of a shoe sole [0390] and thus implicitly discloses a shoe comprising said molded body.
Regarding Claims 14. Haseyama teaches the bead foam of Claim 1 may be prepared in the form of a golf balls, baseball bat grips, and swimming fins [0393], i.e. balls and sports equipment.
Claims 9, 11, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2002/0193549 to Haseyama et al. (hereinafter Haseyama) in view of WO 2016/194737 to Koshita et al. (hereinafter Koshita), as applied to Claim 1 above, and further in view of US 2014/0227505 to Schiller et al. (hereinafter Schiller).
Regarding Claims 9, 11, 14, and 15. Haseyama teaches the bead foam of Claim 1 and the molded body of Claim 5 may be prepared in the form of a shoe sole [0390] but does not specify the type of shoe sole or density thereof. However, Schiller also teaches the concept of preparing midsoles/intermediate for the soles of footwear [0048]. The density of such articles is in the range of about 0.1 to 0.45 g/cm3 (100 – 450 kg/m3) [0011]. Haseyama and Schiller are analogous art as they are from the same field of endeavor, namely bead foams based upon TPUs. 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 bead foam Haseyama in the preparation of a midsole for footwear having a density of from 100 – 450 kg/m3, as suggested by Schiller. 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, Schiller shows that TPU bead foams are known in the art to be suitable for the preparation of midsoles for footwear and further suggests an appropriate density range thereof.
Claims 16 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over US 2002/0193549 to Haseyama et al. (hereinafter Haseyama) in view of WO 2016/194737 to Koshita et al. (hereinafter Koshita) - as applied to Claim 1 above - and further in view of US 2015/0344661 to Spies et al. (hereinafter Spies), as evidenced by “Atomic force microscopy visualization of hard segment alignment in stretched polyurethane nanofibers prepared by electrospinning” to Sakamoto et al. (hereinafter Sakamoto 2).
Regarding Claims 16 and 22. Haseyama teaches the bead foam of Claim 1 but is silent with respect to the molecular weight of the TPU. However, Spies also prepares a bead foam in which the TPU used is ELASTOLLAN® 1180A [0048]. Sakamoto 2 provides evidence that ELASTOLLAN® 1180A has a Mn of 77,000 and a Mw/Mn = 1.89 (see last paragraph of Page 2). Using these values, ELASTOLLAN® 1180A can be calculated to have a weight average molecular weight of roughly 145,530 g/mol. Haseyama and Spies are analogous art as they are from the same field of endeavor, namely bead foams based upon TPUs. 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 select ELASTOLLAN® 1180A as the TPU polymer in Haseyama. 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, Spies shows that ELASTOLLAN® 1180A is a known, commercially available TPU for use in TPU bead foams.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over US 2002/0193549 to Haseyama et al. (hereinafter Haseyama) in view of WO 2016/194737 to Koshita et al. (hereinafter Koshita) - as applied to Claim 1 above - and further in view of “POLYETHYLENE ICSC: 1488 (October 2004)” to the International Programme on Chemical Safety (hereinafter ICPS).
Regarding Claim 23. Haseyama teaches the molded body of Claim 1 wherein the additional thermoplastic resin may be polyethylene [0157]. ICPS provides evidence that polyethylene has a melting point between 85 to 140°C (Page 2).
Response to Arguments
Applicant's arguments filed January 12, 2026 have been fully considered. The Office responds as follows:
Obviousness Rejection
(i) – (v) Applicant’s arguments with respect to the rejections of Claim 1 – 4 , 6 – 9, 12 – 14, 17 – 19, and 21 under 35 U.S.C. 103 over Koshita in view of Sakamoto; Claims 11 and 14 – 15 under 35 U.S.C. 103 over Koshita in view of Sakamoto and Schiller; Claims 16 and 22 under 35 U.S.C. 103 over Koshita in view of Sakamoto and Spies, in view of Sakamoto 2; and Claim 23 under 35 U.S.C. 103 over Koshita in view of Sakamoto, as evidenced by Hansen are persuasive. Accordingly, each of these rejections have been withdrawn.
(vi) With respect to the rejection of Claims 1 – 4, 6 – 8, 12 – 14, and 17 – 21 over Haseyama in view of Koshita, applicant argues that Haseyama discloses TPUs having a resin hardness of 80 Shore A or less. On the other hand, Koshita discloses a minimum of Shore A hardness of 85. It is consequently applicant’s position that the teachings of the references would not have been combined.
However, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The Office respectfully submits that that outstanding rejection did not suggest it would have been obvious to modify the Shore A hardness of the TPU of Haseyama, in light of the teachings of Koshita. Instead, Koshita is relied upon to teach a suitable bead diameter and bulk density, as well as a general method of manufacture, as Haseyama is silent with respect to these particular features of its bead foam.
(vii) – (viii) Applicant’s arguments that the additionally applied secondary references do not remedy the deficiencies of Haseyama and Koshita are not persuasive, as the alleged deficiencies have been addressed above.
Written Description Rejection
The Office agrees that the amendments to Claim 22 overcome the outstanding rejection of the claim under 35 U.S.C. 112(a). Accordingly, this rejection has been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764