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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 22, 2026 has been entered.
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, 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, 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 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, elongation at break, compressive stress at 10% compression, and tensile strength 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 by Koshita 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 rebound resilience, elongation at break, compressive stress at 10% compression, and tensile strength 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 Claim 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 June 22, 2026 have been fully considered. The Office responds as follows:
Obviousness Rejection
(a)(i) Applicant argues there is no reasonable expectation of successfully achieving the presently claimed properties starting from the generic disclosure of Haseyama, noting that Haseyama does not exemplify adding polyethylene to its TPU resin.
However, disclosed examples do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Additionally, it has been held that the comprehensiveness of a listing in the general disclosure does not negate that the fact the a compound is specifically taught by the reference (See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) and MPEP 2131.02). Haseyama expressly discloses polyethylene in [0157] and thus its use is readily envisaged from the reference disclosure.
Applicant additionally argues that a person of ordinary skill in the art would not have had a reasonable expectation of successfully achieving the presently claimed properties because Haseyama is silent with respect to such properties. However, as detailed in the rejection of Claim 1 under 35. U.S.C. 103, Haseyama, when modified by Koshita in the manner proposed, 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 rebound resilience, elongation at break, compressive stress at 10% compression, and tensile strength 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.
Applicant additionally argues that the burden to show the present properties must necessarily result has not been met by the Office. The Office respectfully disagrees. The rejection under 35 U.S.C. 103 details the Office’s position that the claimed molded body and molded body arising from the proposed combination of art are substantially identical. “Where . . . the claimed and prior art products are identical or substantially identical . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. . . . [The] fairness [of the burden-shifting] is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Thus, the burden now shifts to applicant to show the prior art products do not necessarily or inherently possess the characteristics of the claimed product.
(ii) Applicant argues that that there is no hint or motivation to combine polyethylene and TPU in Haseyama. This argument has been responded to in detail in section (i) above. In addition, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant also argues that the property of hardness of 85A or more in Koshita must be incorporated when combining with Haseyama. However, the Office respectfully submits that the limitation with respect to Shore A hardness is no longer present in the instant claim set filed June 22, 2026.
(iii) In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The Office maintains the claimed composition having the claimed ingredients in the claimed amounts is readily envisioned from the reference disclosures for the reasons detailed in the rejection under 35 U.S.C. 103 and in the preceding sections (i) and (ii) above. The Office then maintains the position that the claimed properties would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Claim 3
Applicant argues that there is no additional disclosure or suggestion of an average diameter of the bead foam of from 0.5 to 15 mm. However, Pages 4 – 5 of the Final Office action of March 19, 2026 discuss that 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.
(b) - (d) Applicant’s arguments that the applied secondary and evidentiary references do not remedy the deficiencies of Haseyama and Koshita are not persuasive, as the alleged deficiencies have been addressed above.
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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