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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 29, 2025, has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-16, 25, and 26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1-16, 25, and 26, claim 1 recites an upper membrane layer “configured to absorb point loads from a first side of the shock pad”, a lower membrane layer “configured to absorb point loads from a second side opposite the first side of the shock pad”, and the shock pad “configured to absorb shock and drain water”. Applicants’ specification as filed, including at page 1 line 5, page 4 lines 12 and 23, page 7 line 2, and page 5 lines 21-24, does not appear to recite the layers or the pad being “configured” as claimed.
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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/029873 to Emborg in view of WO 87/07520 to Tofte and US Pub. No. 2016/0101590 to Kane.
Regarding claims 1-16, Emborg teaches a structure for draining surface water from recreation grounds such as sports grounds, comprising a coherent force distribution layer and drain layer, wherein the drain layer is formed of an array of coherent man-made vitreous fiber (MMVF) drain elements bonded with a cured binder composition (Emborg, Abstract, page 3 lines 15-20, page 12 lines 22-27). Emborg teaches that the MMVF substrate and the binder itself may be hydrophilic (Id., page 4 lines 2-9), wherein the binder levels are preferably in the range of 0.5 to 5 wt% based on the weight of the MMVF substrate (Id., page 6 lines 4-5). Emborg teaches that the MMVF substrate that is used as drain element preferably has a density in the range of 60 to 280 kg/m3 (Id., page 7 lines 20-25). Emborg teaches that the force distribution layer is preferably an MMVF layer having a thickness of preferably up to 10 cm, preferably 1-5 cm (Id., page 11 lines 11-26). Emborg teaches that the coherent force distribution layer is a coherent MMVF layer having a density of at least 100 kg/m3, such as 100 to 280 kg/m3 (Id., page 11 line 27 to page 12 line 6). Emborg teaches that the force distribution layer is preferably hydrophilic and that the binder may be as described for the MMVF substrate (Id., page 12 lines 7-13). Emborg teaches that the structure can further comprise an upper layer, which is preferably grass, earth, artificial grass, sand, gravel, clay or combinations thereof (Id., page 12 lines 14-16).
Note that the claimed thickness, density and binder amounts substantially overlap with those disclosed in Emborg, which additionally does not require any oil. In the case 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 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Alternatively, Emborg establishes a force distribution layer being an MMVF layer having a thickness of preferably 1-5 cm, wherein when the force distribution layer is a coherent MMVF layer, it preferably has a density of at least 100 kg/m3, such as 100 to 280 kg/m3. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the sports ground structure of Emborg, wherein the force distribution layer is a coherent MMVF layer having a thickness and density within the claimed ranges, as Emborg establishes the suitability of the force distribution layer having properties within the claimed ranges.
Alternatively, Tofte teaches a similar pad for use in playgrounds and in other places, comprising a pad and a draining layer, wherein the pad consists of mineral wool being a felt of mineral fibers, which in their intersecting points are bound together by means of a bonding agent, and having bulk weight of 70-300 kg/m3 and a thickness of 30-100 mm (Tofte, Abstract, page 5 lines 4-20). Tofte teaches that a membrane or surface covering essentially aims at distributing the pressure for individual forces acting on the surface of the pad, wherein the surface coating may be made of a layer composed by a reinforcing fleece, reinforcing glass-fibre web or the like glued to the surface (Id., page 6 lines 5-21). Tofte teaches that the mineral wool possesses excellent damping properties, particularly in the frequency area which seems to cause head injuries (Id., page 3 lines 25-35, page 4 lines 1-25).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the sports ground structure of the prior art combination, wherein the force distribution layer comprises a thickness and density, such as within the claimed ranges, as taught by Tofte, motivated by the desire of forming a conventional ground structure having a force distribution comprising a structure known in the art to be predictably suitable for applications where excellent damping properties are desirable.
Emborg teaches that the structure can further comprise an upper layer, which is preferably grass, earth, artificial grass, sand, gravel, clay or combinations thereof (Emborg, page 12 lines 14-16). However, Emborg does not appear to specifically teach the claimed upper and lower membrane layers.
Regarding the upper layer, Tofte teaches a similar pad for use in playgrounds and in other places, comprising a pad and a draining layer, wherein the pad includes a membrane or surface covering essentially aims at distributing the pressure for individual forces acting on the surface of the pad, wherein the surface coating may be made of a layer composed by a reinforcing fleece, reinforcing glass-fibre web or the like glued to the surface (Tofte, page 6 lines 5-21). Tofte teaches that the membrane gives the pad a non-skid and hard-wearing surface (Id.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the sports ground structure of Emborg, wherein the upper layer comprises a reinforcing glass fibre membrane glued to the surface, as taught by Tofte, motivated by the desire of forming a conventional ground structure having an upper layer which functions to distribute the pressure for individual forces acting on the surface of the pad, thereby aiding in the damping properties, in addition to providing a non-skid and hard-wearing surface.
Regarding the lower layer, Kane teaches a composite sheet including a base sheet and a scrim formed from a plurality of intersecting strands which provides reinforcement for the base sheet (Kane, Abstract), which may be used as inner layers for flooring and the like (Id., paragraph 0020). Kane teaches that the composite sheet further includes a mesh or mesh layer that is embedded, either partially or fully, within the base sheet (Id., paragraph 0021). Kane teaches that the material of the base sheet initially comprises fibers (Id., paragraph 0023) and can include chopped fiberglass fibers (Id., paragraphs 0027, 0029). Kane teaches that the reinforcing mesh or mesh layer can be a scrim of intersecting strands with each strand being formed from one or more synthetic materials (e.g. fiberglass) (Id., paragraph 0031). Kane teaches that the intersecting strands provides dimensional integrity that resists stretching and tearing along or within the plane of the composite sheet (Id., paragraph 0032).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the sports ground structure of Emborg, and including an inner composite sheet layer comprising a fiberglass mesh embedded in nonwoven glass fibers, as taught by Kane, motivated by the desire of forming a conventional ground structure having predictably improved dimensional integrity to resist stretching and tearing, which is known in the art as being suitable for similar flooring applications.
Additionally, regarding the upper and lower layers being bonded to the coherent plate, Emborg teaches that the parts of the MMVF substrate may be connected using an adhesive (Emborg, page 10 lines 14-15) and Tofte teaches using glue to adhere a membrane (Tofte, page 6 lines 5-21). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the sports ground structure of the prior art combination, and adhesively bonding the layers together as claimed, motivated by the desire to form a composite structure such that the layers are not displaced from the composite ground structure.
Regarding the claimed preamble, the upper and lower layers being configured to absorb point loads as claimed, and the shock pad being configured to absorb shock and drain water, as set forth above, Applicants’ specification does not appear to recite the claimed layers and pad being configured as claimed. Therefore, the recitation of “configured to” does not appear to impart any structural characteristics and the limitations following “configured to” are interpreted as merely stating the intended use of the layers.
The prior art combination teaches a structure for draining surface water from recreation grounds such as sports grounds, comprising a substantially similar structure and composition as claimed. Note that as set forth in claim 1, a composition is not set forth for each of the upper and lower membrane layers. However, since the prior art combination is directed to a substantially similar structure and composition as claimed and for a substantially similar purpose, and since the layers are not required to comprise a particular composition or structure, the layers inherently appear to be configured as claimed.
Additionally, Applicant’s specification at page 5 lines 26-29 teaches that the term shock pad has its normal meaning in the art, wherein a shock pad is an underlay that is position underneath the surface of sports fields. Emborg is directed to a structure comprising a coherent force distribution layer and an upper layer for draining water from recreation grounds such as playing fields, wherein water is absorbed by the MMVF substrate (Emborg, page 3 lines 15-20, page 12 line 28 to page 13 line 2), and conveyed to a water disposal point such as a tank, with a pump (Id., page 13 lines 3-28). Additionally, Emborg teaches that the coherent force distribution layer ensures that force impacting from the ground surface is not concentrated on a single point but is instead distributed over a larger area (Emborg, page 11 lines 11-26). Therefore, Emborg and the totality of the teachings of the prior art appear to teach a shock pad as claimed.
Regarding claims 6 and 11, the prior art combination does not appear to teach the claimed hydraulic conductivity. However, Emborg teaches at page 5 that suitable binders include those used in WO 97/07664 and WO 07/129202 which are similarly recited in Applicants’ specification as suitable binders. Additionally, the coherent layer of Emborg comprises a substantially similar structure and composition as claimed. Therefore, the claimed properties appear to be inherent to the invention of the prior art combination. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Regarding claim 16, the prior art combination does not appear to teach vertically compressing the plate after curing, which appears to be within the scope of the claimed invention, as the claim requires vertically compressing by less than 10% of its original thickness.
Response to Arguments
Applicant's arguments filed July 29, 2025, have been fully considered but they are not persuasive. Applicant argues that Tofte is concerned solely with underlays for children’s playground where safety is the only concern and there is no requirement for any energy restitution or reduced vertical deformation, and the underlay material is water-repellant. Therefore, Applicant argues that the layers of Tofte are unsuitable for both water absorption/drainage and sports performance.
Regarding Applicant’s arguments, Examiner respectfully disagrees. Tofte teaches an underlay shock pad for preventing head injuries, comprising mineral wool fibers and a bonding agent, which is placed on a draining layer (Tofte, Abstract). Therefore, the shock pad of Tofte appears suitable for both water absorption/drainage and sports performance as argued.
Additionally, although Applicant argues that there is no requirement for any energy restitution or reduced vertical deformation in Tofte, it is noted that the claimed invention does not require properties directed to energy restitution or reduced vertical deformation. Therefore, Applicant’s arguments do not differentiate the claimed invention from the invention of the prior art combination.
Additionally, as set forth previously, Emborg, which shares the same assignee as the claimed invention, recites a similar structure for a similar purpose as the claimed invention. Emborg teaches that the drainage structure allows for water permeation, wherein the force distribution layer comprises compressive strength to ensure the force impacting from the ground surface is not concentrated on a single point of a drain element (Emborg, page 11 lines 27-33). Emborg teaches that the structure comprises an upper layer such as grass, earth or artificial grass, wherein the structure can be used in football pitches (Id., page 12 lines 14-21). Tofte, cited above, recites a similar structure and composition as Emborg and as claimed, including a thickness and density that overlaps with both the teachings of Emborg and the claimed ranges, wherein the structure possesses excellent damping properties, particularly in the frequency area which seems to cause head injuries, by essentially aiming at distributing the pressure for individual forces acting on the surface of the pad. Note that such a function is similarly argued by Applicant as a function of the claimed upper membrane layer. Based on the combined teachings of the prior art, it would have been obvious to one of ordinary skill in the art to make the sports ground structure of Emborg, wherein the upper layer comprises a reinforcing glass fibre membrane glued to the surface, as taught by Tofte, such that the upper layer functions to distribute the pressure for individual forces acting on the surface of the pad, thereby aiding in the damping properties, in addition to providing a non-skid and hard-wearing surface.
Applicant argues that use of an inner layer in flooring does not imply that such a material would be suitable for outdoor usage under sports fields, and that the composite sheets of Kane would be incompatible with the water drainage structure of Emborg. Examiner respectfully disagrees. Kane teaches that the composite sheet is suitable for various products including flooring, roofing underlayments, building wraps, tarps, and the like (Kane, paragraph 0020). Therefore, the invention of Kane appears suitable for outdoor usage. Additionally, Kane teaches that the reinforcing mesh or mesh layer can be a scrim of intersecting strands with each strand being formed from one or more synthetic materials (e.g. fiberglass) (Id., paragraph 0031), wherein the intersecting strands provides dimensional integrity that resists stretching and tearing along or within the plane of the composite sheet (Id., paragraph 0032). Therefore, Kane establishes that such a reinforcing mesh would predictably provide dimensional integrity when used in applications including flooring.
Additionally, similar to Applicant’s invention, Emborg teaches that water is absorbed by the MMVF substrate (Emborg, page 12 line 28 to page 13 line 2), wherein water is conveyed to a water disposal point such as a tank, with a pump (Id., page 13 lines 3-28). Emborg does not appear to teach that the water drainage structure requires water to drain through the structure and therefore, the composite sheets of Kane do not appear incompatible with the teachings of Emborg.
Applicant argues that the prior art fails to teach a lower membrane layer bonded to the lower major surface of the plate. Examiner respectfully disagrees. As set forth above, Emborg teaches that the parts of the MMVF substrate may be connected using an adhesive and Tofte teaches using glue to adhere a membrane. Therefore, it would have been obvious to one of ordinary skill in the art to make the sports ground structure of the prior art combination, and adhesively bonding the layers together as claimed, to form a composite structure such that the layers are not displaced from the composite ground structure.
Applicants argues that Emborg relates to a structure for draining surface water comprising a MMVF substrate, and not a shock pad designed to provide the shock absorption, energy restitution and vertical deformation properties required of a shock pad. Examiner respectfully disagrees. Applicant’s specification at page 5 lines 26-29 teaches that the term shock pad has its normal meaning in the art, wherein a shock pad is an underlay that is position underneath the surface of sports fields. Emborg is directed to a structure comprising a coherent force distribution layer and an upper layer. Emborg teaches that the coherent force distribution layer ensures that force impacting from the ground surface is not concentrated on a single point but is instead distributed over a larger area (Emborg, page 11 lines 11-26). Additionally, as set forth above, the claimed invention does not require properties directed to energy restitution or reduced vertical deformation. Therefore, Emborg and the totality of the teachings of the prior art appear to teach a shock pad as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786