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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 § 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 1-2, 157, 159-162, 164-167 and 171-172 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. In claim 1 which recites, polyurethane coating is “less than 0.5%” fails to derive support in the originally filed specification, Applicant has a support to recite, “about 0.1 to about 0.5%” polyurethane coating, but does not have a support to recite any number below 0.1 such as 0.01, 0.09 etc. Thus claim 1 lacks written description requirement.
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.
Claim(s) 1-2, 157, 159-162, 164-167 and 171-172 are rejected under 35 U.S.C. 103 as being obvious over Gershanovich et al. (US 2016/0376496) in view of Assemat (WO 2020/092762) and Tanguay et al. (US 2015/0315458).
Regarding claims 1-2, 157, 159-162, 164-167 and 171-172 Gershanovich discloses proppant of the subject disclosure can also have applications beyond hydraulic fracturing and crude oil filtration, including, but not limited to, water filtration and artificial turf (para 0012) where the artificial turf would intrinsically have turf infill having a backing having pile fibers extending upwardly above the infill material. Gershanovich discloses the proppant includes a particle and a polyurethane coating disposed on the particle (para 0013) which meets the coated particulate limitation. A proppant includes a particle present in an amount of from 90 to 99.5 percent by weight based on the total weight of the proppant, and a polyurethane coating disposed about the particle and present in an amount of from 0.5 to 10 percent by weight based on the total weight of the proppant. polyurethane coating comprises the reaction product of an isocyanate component and an isocyanate-reactive component comprising a polydiene polyol (abstract). Gershanovich discloses polydiene polyol, the isocyanate-reactive component can also include one or more supplemental polyols. If included, the supplemental polyol is typically selected from the group of conventional polyols which are not polydiene polyols, such as polyether polyols, polyester polyols (para 0049), where a combination of polyester and polyether would meet the new limitation of isocyanate reactive blend.
The proppant includes a particle and a polyurethane coating disposed on the particle. As used herein, the terminology “disposed on” encompasses the polyurethane coating being disposed about the particle and also encompasses both partial and complete covering of the particle by the polyurethane coating (para 0013). The instant disclosure describes a polyurethane system for forming the polyurethane coating comprising the isocyanate component and the isocyanate-reactive component (para 0026). Specific isocyanates that may be included in the isocyanate composition and may be used to prepare the polyurethane coating include, but are not limited to, toluene diisocyanate; 4,4′-diphenylmethane diisocyanate; m-phenylene diisocyanate; 1,5-naphthalene diisocyanate; 4-chloro-1; 3-phenylene diisocyanate; tetramethylene diisocyanate; hexamethylene diisocyanate (para 0029). The polyurethane coating comprises the reaction product of the isocyanate component and the isocyanate-reactive component. The isocyanate component may include aliphatic isocyanates, aromatic, polymeric isocyanates, or combinations thereof. The isocyanate component typically includes more than one different isocyanate, e.g., polymeric diphenylmethane diisocyanate and 4,4′-diphenylmethane diisocyanate. In various embodiments, the isocyanate is selected from the group of diphenylmethane diisocyanates (MDIs), polymeric diphenylmethane diisocyanates (pMDIs), toluene diisocyanates (TDIs), hexamethylene diisocyanates (HDIs), isophorone diisocyanates (IPDIs), and combinations thereof (para 0027). The isocyanate-reactive component may include one or more chain extenders. Examples of suitable chain extenders, for purposes of the present disclosure, include 1,4-butanediol (para 0052). The isocyanate-reactive component may also include various additives. Suitable additives include, but are not limited to, blowing agents, blocking agents, dyes, pigments (para 0070) where dyes and pigments encompasses colorants. The isocyanate-reactive component also typically comprises one or more catalysts. Isocyanate-reactive component typically includes a “polyurethane catalyst” which catalyzes the reaction between an isocyanate and a hydroxy functional group (para 0055). Sand is a preferred particle (para 0019).
Gershanovich discloses the isocyanate-reactive component can also include a silicon-containing adhesion promoter. This silicon-containing adhesion promoter is also commonly referred to in the art as a coupling agent or as a binder agent. The silicon-containing adhesion promoter binds the polyurethane coating to the particle. More specifically, the silicon-containing adhesion promoter typically has organofunctional silane groups to improve adhesion of the polyurethane coating to the particle. Examples of suitable adhesion promoters, which are silicon-containing, include, but are not limited to, glycidoxypropyltrimethoxysilane, aminoethylaminopropyltrimethoxysilane (para 0064-0065). The silicon-containing adhesion promoter may be present in the proppant in an amount of from about 0.001 to 5, alternatively from about 0.01 to 2, alternatively from about 0.02 to 1.25, percent by weight based on the total weight of the proppant (para 0066).
Gershanovich disclose polyurethane coating in an amount of 0.5 wt%, while the present claims require less than 0.5 wt%.
It is apparent, however, that the instantly claimed polyurethane coating and that taught by Gershanovich are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the disclosed by Gershanovich and the polyurethane coating disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of polyurethane coating disclosed in the present claims is but an obvious variant of the amounts disclosed in Gershanovich, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
However, Gershanovich fails to disclose that artificial turf infill further comprises polyether-modified polydimethylsiloxane and cocamidopropyl hydroxysultaine.
Whereas, Assemat discloses coated infill, an artificial turf that includes the coated infill and a method of making the coated infill of the present disclosure. The coated infill includes an infill granule, an exterior coating layer at least partially covering the infill granule, where the exterior coating layer includes a cured hydrophilic polyurethane, and an intermediate coating layer at least partially covering the infill granules (abstract). The isocyanate and isocyanate- reactive composition are each used in amounts such that the isocyanate prepolymer produced with the isocyanate and isocyanate-reactive composition has a free isocyanate content (%NCO) from 7 weight percent (wt.%) to 20 wt.% (para 0037). The reaction mixture used in the present disclosure may further include a variety of optional additives, where when present the optional additives may be present in an amount from 0.1 wt.% to 10 wt.% based on a total weight of the reaction mixture. Examples include water-soluble polyether siloxanes that have a polydimethylsiloxane group attached to a copolymer of ethylene oxide and propylene oxide (para 0038).
Whereas, Tanguay discloses proppant includes a surface treatment comprising an antistatic component and a hydrophilic component. The antistatic component comprises a quaternary ammonium compound (abstract). The quaternary ammonium compound comprises a sulfate anion such as cocamidopropyl hydroxysultaine (claim 6, table 1). Tanguay discloses it is to be appreciated that the proppant of the subject disclosure can also have applications beyond hydraulic fracturing and crude oil filtration, including, but not limited to, water filtration and artificial turf (para 0010).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include water-soluble polyether siloxanes that have a polydimethylsiloxane group as taught by Assemat and sulfate anion such as cocamidopropyl hydroxysultaine as taught by Tanguay in the artificial turf infill of Gershanovich motivated by the desire to have improved abrasion resistance, flexibility and easy cleaning characteristics and wetting agent to improve the spreadability.
Alternatively, However, the recitation in the claims that the coated particulated comprising a core and a polymer coating is “for a turf infill” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Gershanovich disclose coated particulated comprising a core and a polymer coating as presently claimed, it is clear that the coated particulate of Gershanovich would be capable of performing the intended use, i.e for a turf infill, presently claimed as required in the above cited portion of the MPEP.
Response to Arguments
Applicant’s arguments filed on 06/02/2026 have been fully considered but they are moot in view of new grounds of rejections as stated above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONAK C PATEL whose telephone number is (571)270-1142. The examiner can normally be reached M-F 8:30AM-6:30PM (FLEX).
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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