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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 13, 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.
Claims 14 – 18, 21 – 24, 26, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/016313 to Jaehnigen et al. (hereinafter Jaehnigen) in view of JP 2018062588 to Hayashi et al. (hereinafter Hayashi) and CN 106674475 to Ding et al. (hereinafter Ding), as evidenced by US 6,531,556 to Satake.
For the purposes of examination, citations for Hayashi are taken are taken from a machine translation of the document obtained from the European Patent Office website in May 2025. Citations for Jaehnigen are taken from an English language equivalent of the document, US 2020/0231739. Citations for Ding are taken are taken from a machine translation of the document obtained from the European Patent Office website in May 2025.
Regarding Claims 14 – 17 and 27. Jaehnigen teaches foamed beads/pellets comprising a thermoplastic polyurethane [0001] – [0002]. The foamed pellets are obtained by a process comprising:
reacting a polyol composition comprising a polyether diol with a polyisocyanate and a chain extender [0012] – [0017]. The polyether diol may specifically be polypropylene glycol [0052]. The chain extender has a molecular weight of less than 300 g/mol [0049]. The diameter of the obtained foamed pellets is 0.2 to 20 mm [0181]. Jaehnigen teaches its foamed pellets generally have a bulk density of 50 to 200 g/l [0182].
Jaehnigen is silent regarding the quantity of primary hydroxyl groups in the polypropylene glycol. However, Hayashi teaches the concept of using a commercially available polypropylene glycol, SANNIX® PP-2000, in the preparation of a polyurethane foam. Hayashi teaches SANNIX® PP-2000 has a molecular weight of 2,000 g/mol [0060]. Satake provides evidence that SANNIX® PP-2000 has a proportion of primary hydroxyl groups of 2% (Column 14, Line 65 – Column 15, Line 1). The remaining 98% of the hydroxyl groups in SANNIX® PP-2000 are thus non-primary/secondary hydroxyl groups. Jaehnigen and Hayashi are analogous art as they are from the same field of endeavor, namely polyurethane foams. 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 provide SANNIX® PP-2000 as the polypropylene glycol in Jaehnigen. 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, Hayashi shows that SANNIX® PP-2000 is known in the art to be a suitable, commercially available polypropylene glycol for the preparation of polyurethane foams [0060].
Jaehnigen teaches the polyurethane may be formed by a prepolymer process in which some of the OH components are reacting with isocyanate in a first step and then the remaining OH components are reacted with the prepolymer in a second step [0054]. Jaehnigen does not expressly teach the remaining OH components correspond to the chain extender, i.e. that the polyol composition containing the prepolymer is reacted with the chain extender. However, Ding teaches the concept of preparing polyurethane granules/pellets by a prepolymer process in which the polyol and isocyanate component are reacted in a first step to form a prepolymer. The obtained prepolymer is then reacted with a chain extender is a second step [0024]. Jaehnigen and Ding are analogous art as they are from the same field of endeavor, namely polyurethane pellets. 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 polyurethane of Jaehnigen by providing reacting the polyol with the isocyanate in the first step and then reacting the prepolymer formed with the chain extender in the second step, as taught by Ding. The motivation would have been that Ding shows this is a suitable sequence for adding the isocyanate-reactive components when forming polyurethane pellets by a prepolymer process [0024].
Regarding Claim 18. Jaehnigen teaches the foamed pellets of Claim 14 wherein the chain extender is preferably butane-1,4-diol [0049].
Regarding Claims 21 and 22. Jaehnigen teaches a method comprising producing a foam molding/molded body in which the foamed pellets of Claim 14 are introduced into a mold and fused together [0232] – [0234].
Regarding Claim 23. Jaehnigen teaches the method of Claim 21 in which the molded body is a shoe insole [0251].
Regarding Claim 24. Jaehnigen teaches sports equipment comprising the foamed pellets of Claim 14 [0251].
Regarding Claim 26. Jaehnigen teaches a sports surface comprising the foamed pellets of Claim 14 [0251].
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/016313 to Jaehnigen et al. (hereinafter Jaehnigen) in view of JP 2018062588 to Hayashi et al. (hereinafter Hayashi) and CN 106674475 to Ding et al. (hereinafter Ding), as evidenced by US 6,531,556 to Satake - as applied to Claim 14 above - and further in view of WO 2010/010010 to Schips et al. (hereinafter Schips).
For the purposes of examination, citations for Schips are taken from a machine translation of the document filed by applicant with United States Patent and Trademark Office on November 9, 2022.
Regarding Claim 19. Jaehnigen teaches the foamed pellets of Claim 14 but does not expressly teach the foamed pellets further comprise at least one thermoplastic resin. However, Schips teaches the concept of combining a styrene polymer with a thermoplastic polyurethane to prepare foamed particles/pellets [0068] – [0076]. Jaehnigen and Schips are analogous art as they are from the same field of endeavor, namely foamed pellets based on thermoplastic polyurethane. 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 further include a polystyrene polymer in the foamed pellets of Jaehnigen, as taught by Schips. The motivation would have been that Schips teaches the combination of thermoplastic polyurethane and polystyrene polymers provides particles having high expansion capacity, low storage volume, and high elasticity [0008].
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/016313 to Jaehnigen et al. (hereinafter Jaehnigen) in view of JP 2018062588 to Hayashi et al. (hereinafter Hayashi) and CN 106674475 to Ding et al. (hereinafter Ding), as evidenced by US 6,531,556 to Satake - as applied to Claim 14 above - and further in view of US 2010/0047550 to Prissok et al. (hereinafter Prissok).
Regarding Claim 25. Jaehnigen teaches the foamed pellets of Claim 14 but does not expressly teach the foamed pellets are further combined with a matrix composed of a polymer to provide a hybrid material. However, Prissok teaches the concept of preparing a hybrid material comprising a matrix of polyurethane and foamed particles of a thermoplastic polyurethane [0001]. Jaehnigen and Prissok are analogous art as they are from the same field of endeavor, namely foamed pellets based on thermoplastic polyurethane. 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 a hybrid material comprising a matrix of polyurethane and the foamed pellets of Jaehnigen. 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, Prissok shows that foamed particles of thermoplastic polyurethane are known in the art to be suitable for the preparation of hybrid materials comprising a matrix of polyurethane [0001]. Prissok further teaches this combination of materials is useful in the production of hybrid materials having reduced density, particular/targeted properties, and/or in which material costs are reduced [0004].
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/016313 to Jaehnigen et al. (hereinafter Jaehnigen) in view of JP 2018062588 to Hayashi et al. (hereinafter Hayashi) and CN 106674475 to Ding et al. (hereinafter Ding), as evidenced by US 6,531,556 to Satake.
For the purposes of examination, citations for Hayashi are taken are taken from a machine translation of the document obtained from the European Patent Office website in May 2025. Citations for Jaehnigen are taken from an English language equivalent of the document, US 2020/0231739. Citations for Ding are taken are taken from a machine translation of the document obtained from the European Patent Office website in May 2025.
Regarding Claim 20. Jaehnigen teaches a process for the production of foamed beads/pellets comprising a thermoplastic polyurethane [0001] – [0002]. The process comprises:
reacting a polyol composition comprising a polyether diol with a polyisocyanate and a chain extender [0012] – [0017]. The polyether diol may specifically be polypropylene glycol [0052]. The chain extender has a molecular weight of less than 300 g/mol [0049]. The diameter of the obtained foamed pellets is 0.2 to 20 mm [0181]. Jaehnigen teaches its foamed pellets generally have a bulk density of 50 to 200 g/l [0182].
Jaehnigen is silent regarding the quantity of primary hydroxyl groups in the polypropylene glycol. However, Hayashi teaches the concept of using a commercially available polypropylene glycol, SANNIX® PP-2000, in the preparation of a polyurethane foam [0060]. Satake provides evidence that SANNIX® PP-2000 has a proportion of primary hydroxyl groups of 2% (Column 14, Line 65 – Column 15, Line 1). 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 provide SANNIX® PP-2000 as the polypropylene glycol in Jaehnigen. 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, Hayashi shows that SANNIX® PP-2000 is known in the art to be a suitable, commercially available polypropylene glycol for the preparation of polyurethane foams [0060].
Jaehnigen teaches the polyurethane may be formed by a prepolymer process in which some of the OH components are reacting with isocyanate in a first step and then the remaining OH components are reacted with the prepolymer in a second step [0054]. Jaehnigen does not expressly teach the remaining OH components correspond to the chain extender, i.e. the polyol composition containing the prepolymer is reacted with the chain extender. However, Ding teaches the concept of preparing polyurethane granules/pellets by a prepolymer process in which the polyol and isocyanate component are reacted in a first step to form a prepolymer. The obtained prepolymer is then reacted with a chain extender is a second step [0024]. 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 polyurethane of Jaehnigen by providing reacting the polyol with the isocyanate in the first step and then reacting the prepolymer formed with the chain extender in the second step, as taught by Ding. The motivation would have been that Ding shows this is a suitable sequence for adding the isocyanate-reactive components when forming polyurethane pellets by a prepolymer process [0024].
Response to Arguments
Applicant's arguments filed February 13, 2026 have been fully considered. The Office responds as follows:
Obviousness Rejection
(i) Applicant argues that the one-shot process of Jaehnigen would not have been reasonably expected produced foamed pellets having the claimed bulk density of 50 to 250 g/l. However, every patent is presumed to be valid (35 U.S.C. 282, first sentence). Jaehnigen teaches its foamed pellets generally have a bulk density of 50 to 200 g/l [0182]. Thus, the Office must presume that the bulk density of the foamed pellets of Jaehnigen is 50 to 200 g/l, which is entirely within the claimed range of 50 to 250 g/l.
(ii) Applicant argues that the cited references do not qualify as analogous art. The Office recognizes that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In the instant case, the Office maintains the position that each of the prior art references is within the same field of endeavor as the claimed invention. The claimed invention and all of the cited references are directed to polyurethanes prepared with substantially similar ingredients via the reaction of isocyanate components and isocyanate-reactive polyols, e.g. polyols. Thus, the remains the Office’s position that there is sufficient nexus between their disclosures, chemistry, etc. to combine them. While applicant details the differences between the end applications of the instant applications, the "Federal Circuit reads KSR as direct[ing] us to construe the scope of analogous art broadly' because 'familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.' [emphasis added] Wyers v. Master Lock Co., 616 F.3d 1231, 1238, 95 USPQ2d 1525, 1530 (Fed. Cir. 2010) (quoting KSR, 550 U.S. at 402, 127 S. Ct. at 1727) (MPEP 2141.01(a)) Additionally, while the Office acknowledges that none of the applied references disclose all elements of the instant claims, the Office respectfully submits that the present rejection is based upon a combination of references, which is proper for rejections under 35 U.S.C. 103.
112 Rejections
The Office agrees that the amendments to the claims are sufficient to overcome all outstanding rejections under 35 U.S.C. 112(a). Accordingly, the outstanding rejections under 35 U.S.C. 112(a) have been withdrawn.
Correspondence
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764