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.
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 12-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Welker (WO2012069264).
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 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 1, Claim 4, Claim 10, Claim 13, Claim 18, Claim 21 and Clam 22.
CosCat exemplified anticipates the catalyst of Claim 2.
Chain Extender (BDO) anticipates Claim 3.
Fillers, flame retardants, etc are taught on page 10 lines 5-20 anticipating Claim 9 and 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
Note for Claim 17 Applicant has placed a new method step into Claim 1 from which Claim 17 depends. This further makes Claim 17 a product by process claim. The introduction of the process step does not appear to impart any structure on the resulting molded part. Therefore, while Welker itself does not the specifically anticipate this extra process step, there is no evidence this step imparts any additional structure on any kind of molded part envisioned from Welker.
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 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 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 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.
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 Claims 6-8, 14-16 and 18-20, 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, Claim 6, Claim 7, Claim 8, Claim 14, Claim 15, Claim 16 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 1-10, 12-16, 18-24 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).
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 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 1, Claim 4, Claim 10, Claim 13, Claim 18, Claim 21 and Clam 22.
CosCat exemplified anticipates the catalyst of Claim 2.
Chain Extender (BDO) anticipates Claim 3.
Fillers, flame retardants, etc are taught on page 10 lines 5-20 anticipating Claim 9 and 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 11, Claim 17 and Claim 25.
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 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 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 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.
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.
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 October 23, 2025 have been fully considered but are not persuasive. Applicant has amended Claim 1 to introduce a new process step and placed the molded limitation of Claim 17 and Claim 25 into Claim 11 and Claim 18. This has necessitated some of the previous §102 rejection of Welker to be recast as a §103 rejection. This has been necessitated by Applicant’s amendments.
Applicant arguments filed October 23, 2025 have been fully considered but are not persuasive.
Applicant argues that Welker does not exemplify molded articles and that a Pierre Declaration states that Welker’s formulations do not appear to be moldable. These arguments are not persuasive. Applicant is reminded of the following:
The Pierre declaration is absent from the response filed October 23, 2025.
Welker is not limited to the exemplified techniques especially considering that Welker specifically teaches any manufacturing technique can be used in practicing the invention.
Welker specifically teaches mold release additives can be used in the composition. If molding is not possible in Welker, then it is unclear why Welker teaches the mold release additives can be used. (page 10 lines 15-21).
Applicant specifically states WO2012069264’s compositions can be used to practice their disclosed invention. WO2012069264 is Welker of record. (¶[0042] of the as-filed specification).
For the above reasons, the above arguments are not persuasive.
Applicant argues the density limitation of the claims has been improperly rejected under inherency as no evidence is provided. This argument is not persuasive. The evidence has been outlined in the rejection of record including the similarity of the compositions claimed vs. Welker. This is not conjecture but the application of the evidence of record to come a conclusion of inherency. Furthermore, the cited area of 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.
Additionally, note Applicant does not compare manufacturing or processing techniques so any remarks to differences in the art’s exemplified techniques are considered speculative in nature.
Finally, Applicant’s arguments to lack of specific silica fillers in Lu and Bernabe are not persuasive. These references used to establish known TPU processing techniques in the field and Applicant has not presented any evidence as to how silica filled TPUs cannot be processed according to the techniques taught in Lu and Bernabe.
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 CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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, 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.
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.
/Christopher M Rodd/ Primary Examiner, Art Unit 1766