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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 9, 2026 has been entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 12, 13, 16, 18, 20-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Welker (WO2012069264).
Claim 12 is considered a product by process claim. Product by process claims are evaluated by the structure the process imparts upon the recited product. In the instant case, the structure is one in which a polyurethane is made to have a density of no less than 0.8 g/mL, which has the fumed silica recited by Claim 1, polyols as recited by Claim 1 and the material properties in Claim 1.
Claim 12’s product by process limitation is anticipated specifically by the below disclosures and, alternatively as Welker teaches multiple types of ways to add the fumed silica to the compositions, as there is no evidence at present to reasonably suggest order of addition of the fumed silica matters. In other words, there is no evidence the order of addition of the fumed silica imparts structure onto the resulting thermoplastic polyurethane of Claim 12.
Welker teaches polyol compositions comprising polytetramethylene 1000 (number average molecular weight via page 9 lies 10-11), chain extender (BDO), MDI (aromatic isocyanate) with from 3 to 6 parts of Aerosil R974V a 170 m2/g fumed silica powder of dimethyldichlorsilan which is a C1 alkylsilyl compound. See Table 1, Table 2 and Table 3. Welker also teaches other C1 alkyl silyl type compounds on page 6 lines 5-10 as preferred and organosilanes with methyl ethyl propyl (C1-3) groups on page 4 lines 10-30 which renders Welker sufficient specific to anticipate methyl, ethyl or propyl alkyl silyl groups (silyl being the result of silanation of these compounds) as in Claim 12/1, Claim 5, Claim 18, and Claim 24.
The exemplified fumed silica is particulate and used in the amount with surface areas (BET) anticipating the range of Claim 12/1, Claim 13, Claim 18, Claim 21 and Claim 22.
Fillers, flame retardants, etc are taught on page 10 lines 5-20 anticipating Claim 23.
Molded articles of TPU are taught on Page 1 lines 10-15 along with the hardness test which are reasonably suggested to require a molded plaque to perform the hardness test rendering Welker sufficiently specific to anticipate Claim 12 and Claim 18
Welker teaches and exemplifies the fumed silica may be in the polyol (i.e. dispersion) or added separately (page 7 lines 1-10 and pag 11 lines 14-15 along with Table 3 where both dispersions and powders are exemplified). This anticipates Claim 18’s product. Claim 12’s product by process limitation is anticipated specifically by the above disclosures and, alternatively as Welker teaches multiple types of ways to add the fumed silica to the compositions, as there is no evidence at present to reasonably suggest order of addition of the fumed silica matters.
Welker is silent on the density limitation of Claim 1, Claim 12 and Claim 18.
However, as the components used to make the compositions of Welker anticipate the claimed components used for an extrudable material and there is no evidence that these components can be made combined and processed in such a way as to not have the recited density, one of ordinary skill in the art is reasonably suggested the composition of Welker, especially those exemplified, must have the recited density when tested appropriately. Further, the as-filed specifications examples have no data with respect to the density of Applicant’s examples.
Alternatively, and further reinforcing the above conclusion, Applicant’s as-filed specification specifically states in ¶[0029] the combination of components claimed and as put forth by Welker as above have the recited density. Therefore, one of ordinary skill in the art is reasonably suggested the composition as discussed above by Welker must have the recited density when tested appropriately for this reason. In other words, one of ordinary skill in the art practicing Welker not wishing to infringe on anything disclosed by Applicant is reasonably suggested the above discussed compositions must infringe because of Applicant’s as-filed specification disclosure.
The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011).
With respect to the material properties of 16, 18 and 20, Welker is silent on these properties. However, every composition tested by Applicant with fumed silica as recited in the amount of ~3-6 wt% (Exemplified amounts of Welker) has the recited elongation at break, compression set and resilience claimed. See Figures 2, 4 and 8. Note Figure 8 explicitly disclose the % fumed silica and in Figures 2 and 4, Example 2 and 3 are on the order of the amount exemplified while Example 1 is not. Therefore, when tested appropriately, one of ordinary skill in the art is reasonably suggested based on the above analysis the composition with the exemplified amount of Welker must have the material properties of these claims. Therefore, Claims 16, 18 and 20 are anticipated.
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.
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 1-5, 8-10, 12-13, 16, 18, and 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Welker (WO2012069264) and further view of Bernabe (U.S. 20180258283) and Lu (U.S. 20180319925) and Nakamura (U.S. 20070088146) and Bates (U.S. 5,378,733).
Welker teaches polyol compositions comprising polytetramethylene 1000 (number average molecular weight via page 9 lies 10-11), chain extender (BDO), MDI (aromatic isocyanate) with from 3 to 6 parts of Aerosil R974V a 170 m2/g fumed silica powder of dimethyldichlorsilan which is a C1 alkylsilyl compound. See Table 1, Table 2 and Table 3. Welker also teaches other C1 alkyl silyl type compounds on page 6 lines 5-10 as preferred and organosilanes with methyl ethyl propyl (C1-3) groups on page 4 lines 10-30 which reads over methyl, ethyl or propyl alkyl silyl groups (silyl being the result of silanation of these compounds) as in Claim 1, Claim 5, Claim 18, and Claim 24.
The exemplified fumed silica is particulate and used in the amount with surface areas (BET) reads over the range of Claim 1, Claim 4, Claim 10, Claim 13, Claim 18, Claim 21 and Claim 22.
CosCat exemplified reads over the catalyst of Claim 2.
Chain Extender (BDO) reads over Claim 3.
Fillers, flame retardants, etc are taught on page 10 lines 5-20 reads over Claim 9 and Claim 23.
Welker teaches and exemplifies the fumed silica may be in the polyol (i.e. dispersion) or added separately (page 7 lines 1-10 and pag 11 lines 14-15 along with Table 3 where both dispersions and powders are exemplified). This reads over Claim 1’s method along with Claim 18’s product. Claim 12’s product by process limitation is anticipate specifically by the above disclosures and, alternatively as Welker teaches multiple types of ways to add the fumed silica to the compositions, as there is no evidence at present to reasonably suggest order of addition of the fumed silica matters.
Welker is silent on the density limitation of Claim 1, Claim 12 and Claim 18.
However, as the components used to make the compositions of Welker reads over the claimed components used for an extrudable material and there is no evidence that these components can be made combined and processed in such a way as to no have the recited density, one of ordinary skill in the art is reasonably suggested the composition of Welker, especially those exemplified, must have the recited density when tested appropriately. Further, the as-filed specifications examples have no data with respect to the density of Applicant’s examples.
Alternatively, and further reinforcing the above conclusion, Applicant’s as-filed specification specifically states in ¶[0029] the combination of components claimed and as put forth by Welker as above have the recited density. Therefore, one of ordinary skill in the art is reasonably suggested the composition as discussed above by Welker must have the recited density for this reason. In other words, one of ordinary skill in the art practicing Welker not wishing to infringe on anything disclosed by Applicant is reasonably suggested the above discussed compositions must infringe because of Applicant’s as-filed specification disclosure.
With respect to the material properties of Claims 1, 8, 16, 18 and 20, Welker is silent on these properties. However, every composition tested by Applicant with fumed silica as recited in the amount of ~3-6 wt% (Exemplified amounts of Welker) has the recited elongation at break, compression set and resilience claimed. See Figures 2, 4 and 8. Note Figure 8 explicitly disclose the % fumed silica and in Figures 2 and 4, Example 2 and 3 are on the order of the amount exemplified while Example 1 is not. Therefore, when tested appropriately, one of ordinary skill in the art is reasonably suggested based on the above analysis the composition with the exemplified amount of Welker must have the material properties of these claims. Therefore, the Claims 1, 8, 16, 18 and 20 are read over.
The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011).
Welker suggests molded articles as above but prefers extrusion (page 10 lines 20-25). Welker is not limited to extrusion and states the reaction of the invention can be carried out using devices known in the TPU field. Further, Welker does not teach or suggest the mixture is poured into a mold first the polymerized.
Bernabe, working in the field of TPU compositions similar to Applicant and Welker, teaches in ¶[0042] known processing / molding techniques in the TPU include but are not limited to, cast molding, cold forming matched-die molding, compression molding, foam molding, injection molding, gas-assisted injection molding, profile co-extrusion, profile extrusion, rotational molding, sheet extrusion, slush molding, spray techniques, thermoforming, transfer molding, vacuum forming, wet lay-up or contact molding, blow molding, extrusion blow molding, injection blow molding, and injection stretch blow molding or combinations thereof.
Lu, working in the field of TPU compositions similar to Applicant and Welker, teaches the same list of molding processes as Bernabe in ¶[0072].
Lu and Bernabe are drawn to different TPUs from themselves and also from Applicant and Welker but establish the above molding processes are known in the TPU art generally.
Nakamura, working in the field of molding TPU compositions similar to Welker and Applicant, teaches known processing techniques such as prepolymer method can be used (¶[0073]) and that the prepolymer process comprise mixing reactants together and then pouring them in a mold. (¶[0088]). This two-step process of making isocyante terminated prepolymer then further reacting it is a similar kind of two-step reaction process according to Welker
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Welker to produce molded articles taught by Welker using any of the molding processes above, particularly including cast molding and injection molding, because Welker teaches any device known in the TPU art can be used to process the reaction mixtures and Lu and Bernabe teach these processes are functionally equivalent, as in serving the same function in the inventions, to extrusion molding preferred by Welker. Further, one would find it obvious to pour the prepolymer composition of Welker into the above mold and then polymerize it based on Nakamura’s teaching of similar processes that involve adding TPU reaction components to a mold and then polymerizing them. This represents the simple substitution of known TPU processing method to yield the predictable result of a TPU molded into a finished product.
A skilled artisan would have a reasonable expectation of success in the above modification because Bates exemplifies cast molding MDI, PTMEG 1000/2000, and BDO thermoplastic polyurethanes with fumed silica. (See Examples and Column 4 lines 1-5). These are the materials exemplified by Welker to make the TPU.
Note that the stirred reactor suggested by Welker is nothing more than another way of saying mixer. After using a stirred reactor (or mixer) to produce the composition, it logically follows the compositions must be put in something else such as a mold to produce the molded articles as the suggested end use of TPUs of Welker.
This reads over the prepolymer step of the method of Claim 1, Claim 12 and Claim 18.
Finally, In general as multiple §103s (including combined with §102) are made in this action, If Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Applicant presents no comparisons to different processing / molding techniques for a TPU compositions which are otherwise anticipated by Welker.
Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973). See MPEP §2131.04.
Response to Arguments
Applicant’s claim amendments and remarks filed April 9, 2026 have been fully considered but are not persuasive. Applicant has amended Claim 1 to place previous Claim 6 and 7 into Claim 1 and Claim 19 into Claim 18 making it similar to Claim 1’s polyurethane. The rejections of record have been updated to address this and correct the claim listings.
The Pierre Declaration filed October 23, 2025 is proper and accepted. The declaration does not include additional evidence or data and contains Santiague Pierre’s opinions on what the Welker reference teaches. As opinion evidence this is given little patentable weight.
With respect to 6) Mr. Pierre makes reference to polyols and polyisocyanates which have some of the lowest (most viscous) values of all the examples of Welker. It is unclear what Mr. Pierre’s counter point to the rejection of record is. These exemplified polyols and polyisocyanates are permitted by Applicant’s claimed invention, read on the claimed invention specifically and are permitted by the broader as-filed specification. (MDI in ¶[0030], polymer polyols (PTMEG 1000 – tetramethylene oxide (PTMEG) specifically mentioned) in ¶[0031], BDO (butanediol) as chain extender in ¶[0033]. Even the polyadipate exemplified by Welker (a polyester polyol) is permitted by Applicant’s as-filed specification. (¶[0032]) If these components, as this section of the Rule 132 declaration states, are too viscous to permit molding, then future prosecution will have to investigate the suitability of rejections based on scope of enablement. In other words, the as-filed specification does not give any indication how the Welker polyurethane components are not moldable as the as-filed specification specifically states these components result in moldable components without qualification.
With respect to 7), the argument here is hardness measurements are not necessarily done from molded parts. The implication appears to be if an alternative method of making the hardness samples of Welker exists, this means Welker’s samples (and compositions) cannot be made via molding techniques. This argument is not persuasive especially in light of the additional references of record to motivate molding the compositions.
Additionally, Applicant is again reminded the as-filed specification specifically states Welker’s (WO2012069264) own thermoplastic polyurethane can be used in the molding method of the claimed invention. (See ¶[0042]) This severely undermines any arguments to Welker not being able to be molded as Applicant specifically states Welker’s TPUs can be used in the molding technique of the claimed invention without qualification.
Applicant’s arguments filed April 9, 2026 have been fully considered but are not persuasive.
Applicant argues the resilience properties are not present in Welker, contrary to the rejection of record, because the hardness values of Welker show different amounts of improvement on putting in silica vs the hardness values of the instant demonstrations. This argument is not persuasive as Applicant’s Pierre Declaration specifically states to be comparable, measurements should be done on samples produced by the same method. The data of Welker is an extrusion method and the data of Applicant is an extrusion method. Therefore, it is unclear how Applicant can arrive at the conclusion they are making when they have previously stated via the Pierre Declaration that samples made from dissimilar process techniques are not comparable.
Additionally, Applicant desires to relate hardness to resilience but it unclear how this is relatable. The rejections of record do not use hardness to address the material properties claimed. Applicant has also not put forth any extrinsic evidence suggesting that hardness and resilience are necessary related properties (such as when one goes up the other goes up by the same amount or larger amount). Therefore, the arguments to hardness as an indicator of resilience performance are not persuasive.
Applicant’s arguments to “mold release agents” not indicting the compositions of Welker are suitable for molding are not persuasive. Molding is in the name. Applicant does not explain why this statement is support their conclusion. They simply state it as fact. This is no persuasive.
Applicant’s arguments to the discovery the particular composition is suitable for the processing technique recited is not persuasive. Applicant is making arguments to hindsight without particularly pointing out what part of the rejection is based on hindsight. The use of Applicant’s disclosure (that Welker is suggested by the as-filed application as a suitable TPU formulation to process according to the claimed process) is only made in the response to arguments section of the Office Action of January 12, 2026. It is not used to make the rejection of record. Furthermore, the basis of establishing the TPU of Welker is moldable is found through disclosure in Welker, Bernabe and Nakamura and not through Applicant’s as-filed specification.
With respect to In re Kao, as previously put forth In re Kao specifically deals with using Applicant’s examples to determine if a property is inherent. The Federal Circuit has found this is no inappropriate to use contrary to Applicant’s assertion. Applicant’s desire to use hardness data as a proxy for what to expect with resilience properties is not persuasive for the above reasons.
Not the material property limitations are rejected by the commonly of the components used and the 3-6 wt% of fumed silica according to the claims in Welker, not the hardness data of Welker. These rejections are also from the perspective of one of ordinary skill in the art reasonably being suggested the Welker compositions, when tested appropriately (emphasiss added), must meet the material properties recited. Stating the properties are not there due to differences in testing techniques via properties not even recited is not persuasive.
Therefore, this argument is not persuasive.
Applicant’s arguments to Lu, Bernabe and Nakamura are not persuasive as there does not appear to be arguments put forth. Applicant simply states these references with Welker would not produce the resilience properties recited and continues their arguments to the lack of moldability of the compositions of Welker without adding any additional support for these arguments. Therefore, these arguments are not persuasive.
Applicant is strongly encouraged to exercise their right to appeal the decision of the examiner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher M Rodd/ Primary Examiner, Art Unit 1766
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