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 .
Status of the Claims
Claims 1-2, 4-7, 11-21, 23-25, and 27-36 are currently pending.
Claims 3, 8-10, 12-22, and 26 are canceled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/10/2025 has been entered.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on three applications filed in the DK on 12/01/2017 having translations being present in CIP family applications: 16/767,215, 16/767,229, and 16/767,201.
Claims 1-2, 4-7, 11, 21, and 23-25 will be given a priority of 04/15/2020 in view of the receipt of certified copies of papers required by 37 CFR 1.55 for EP20169555.8 as the CIP family applications listed above do not appear to have all of the claimed features of independent claims 1 and 23. When applicant files a continuation-in-part whose claims are not supported by the parent application, the effective filing date is the filing date of the child CIP. Any prior art disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the filing date of the child will bar the issuance of a patent under 35 U.S.C. 102(b). Paperless Accounting v. Bay Area Rapid Transit System, 804 F.2d 659, 665, 231 USPQ 649, 653 (Fed. Cir. 1986). See MPEP 2133.01
Response to Amendments
Applicant’s amendments filed 11/10/2025 have been entered.
Claims 1, 11, and 23 have been amended. Claims 3, 8-10, 12-22, and 26 have been canceled. Claims 27-36 have been newly added.
The Section 102 and 103 rejections in view of Sun have been withdrawn in view of Applicant’s amendments and arguments. The Section 102s in view of Mikkelsen have been withdrawn in view of Applicant’s amendments.
However, new Section 103 rejections in view of Mikkelsen have been applied in view of Applicant’s amendments. A new Section 102 rejection has been implemented for claim 23 in view of Applicant’s amendments.
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.
Claim 23 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mikkelsen et al. (WO 2019/106129 A1).
Regarding claim 23,
Mikkelsen teaches toy building elements from recycled acrylonitrile butadiene styrene (“ABS”) (Mikkelsen: abstract). The recycled ABS polymers may be mechanically recycled and/or chemically recycled (Mikkelsen: pg. 8, lin. 22-35).
Mikkelsen is silent towards the ABS material does not include a carcinogenic, a mutagenic or toxic for reproduction (CMR) substance identified in category 1A, 1B or 2 under Regulation (EC) No 1272/200 including the presence of the substances listed in claim 23. However, Mikkelsen teaches any additives are optional and does not mention any of the unwanted substances listed in the claim as being present (Mikkelsen: pg. 13, lin. 20-36). Thus, the toy building element may be considered to not include the claimed substances identified in in category 1A, 1B or 2 under Regulation (EC) No 1272/200.
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, 4-7, 11, 24-25, and 27-36 are rejected under 35 U.S.C. 103 as being unpatentable over Mikkelsen in view of Ott et al. (US 4,009,227 A).
Regarding claims 1-2, 4-6, 27-28, 30-31, and 33-35,
Mikkelsen teaches toy building bricks (toy building element) made of biopolymeric material (Mickelson: abstract). The toy building elements may be made of a resin comprising at least one bio-based and/or at least one hybrid bio-based polymer and/or a recycled polymer which may be composed of acrylonitrile butadiene styrene (“ABS”) (Mikkelsen: pg. 2, lin. 29-33 and pg. 10, lin. 6-19). The resin may further comprise petroleum-based polymers comprising ABS polymers (virgin ABS polymers as the petroleum-based ABS polymers are not described as recycled) (Mikkelsen: pg. 2, lin. 29-33 and pg. 9, lin. 29-32 – pg. 10, lin. 1-4). The resin may comprise recycled ABS (which may be mechanically recycled as mentioned below) may be present in a ratio of at least 90 wt% in a mixture with the petroleum-based ABS polymers (virgin ABS) which would be the remainder amount (i.e. 10 wt% or less) resulting in an overlapping ratio with the claimed range of 100:0 to 5:95 (Mikkelsen: pg. 11, lin. 34-36 – pg. 12, lin. 1-4). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I. The resin may comprise additives such as lubricants, impact modifiers, flame retardants, and other fillers (Mikkelsen: pg. 13, lin. 29-36).
The limitations requiring the recycled ABS polymers to be “mechanically recycled” or “chemically recycled of a solvent-dissolution-recycled grade” are product by process limitations. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, the recycled ABS polymers may be mechanically recycled and/or chemically recycled (Mikkelsen: pg. 8, lin. 22-35).
Mikkelsen does not explicitly teach wherein the recycled ABS polymers comprise butadiene spheres that are less than or equal to 0.5 micrometers.
Ott teaches ABS molding compositions wherein butadiene particles (spheres) preferably have an average diameter of from 0.05 to 0.25 micrometers, which is within the claimed less than or equal to 0.5 micrometers, to provide an improved balance of toughness and surface gloss (Ott: claim 1; col. 1 and 2).
Mikkelsen and Ott are in the corresponding field of ABS compositions which undergo molding processes. Therefore, it would have been obvious to one of ordinary skill in the art to utilize butadiene spheres with the claimed size of 0.5 micrometers or less in the ABS of Mikkelsen to provide appropriate balance of improved toughness and surface gloss as taught by Ott.
Mikkelsen and Ott are silent towards the toy building element made of recycled ABS materials having the claimed relative Charpy v-notch impact strength when tested in the claimed manner, the claimed surface gloss, melt flow index, and color stability when tested in the claimed manner. However, Mikkelsen in view of Ott teaches the claimed structure, including the claimed composition, structure, and proportions. Therefore, it would be expected to exhibit the same properties when tested in the claimed manner, such as the claimed Charpy v-notch impact strength, melt index, surface gloss, and aging properties. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. See MPEP 2112.
Regarding claim 7,
Mikkelsen and Ott teaches the toy building element required by claim 1. Mikkelsen further teaches the resin may comprise recycled ABS (which may be mechanically recycled as mentioned above) may be present in a ratio of at least 90 wt% in a mixture with the petroleum-based ABS polymers (virgin ABS) which would be the remainder amount (i.e. 10 wt% or less) resulting in the total amount of ABS polymers in the resin being within the at least 50 wt% range as additives and the like may be optional and the polymers may be only ABS (Mikkelsen: pg. 11, lin. 34-36 – pg. 12, lin. 1-4; pg. 13, lin. 20-36).
Regarding claim 11,
Mikkelsen and Ott teaches the toy building element required by claim 1, including overlapping ranges with the claimed 20-95 wt% recycled ABS material as explained above. Mikkelsen further teaches the toy building element may be produced by injection molding (Mikkelsen: pg. 2, lin. 25). The limitations requiring the toy building element is “obtained under steady-state injection molding conditions “are product by process limitations. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, there appears to be no structural difference between the final toy building element of claims 1 and 11 and the toy building element taught by Mikkelsen.
Regarding claims 24 and 25,
Mikkelsen and Ott teaches the toy building element required by claim 1. The limitations requiring the recycled ABS polymers to be produced from ABS waste material originating from a toy industry or form discarded toy building elements is immaterial to the final claimed structure of the claimed product and are not giving patentable weight. These limitations are akin to product by process limitations. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113.
Regarding claim 29,
Mikkelsen and Ott teaches the toy building element required by claim 1. Mikkelsen is silent towards the ABS material does not include a carcinogenic, a mutagenic or toxic for reproduction (CMR) substance identified in category 1A, 1B or 2 under Regulation (EC) No 1272/200. However, Mikkelsen teaches any additives are optional and does not mention any of the unwanted substances listed in the specification as being present (Mikkelsen: pg. 13, lin. 20-36). Thus, the toy building element may be considered to not include the claimed substances identified in in category 1A, 1B or 2 under Regulation (EC) No 1272/200.
Regarding claim 32,
Mikkelsen and Ott teaches the toy building element required by claim 1. Mikkelsen further the toy building elements may be made of a resin comprising at least one bio-based and/or at least one hybrid bio-based polymer and/or a recycled polymer which may be composed of acrylonitrile butadiene styrene (“ABS”) (Mikkelsen: pg. 2, lin. 29-33 and pg. 10, lin. 6-19).
The limitations requiring the recycled ABS polymers to be “mechanically recycled” or “chemically recycled of a solvent-dissolution-recycled grade” are product by process limitations. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, the recycled ABS polymers may be mechanically recycled and/or chemically recycled (Mikkelsen: pg. 8, lin. 22-35). Thus, the ABS material may comprise the claimed combination of ABS recycled resins and biobased ABS polymers.
Regarding claim 36,
Mikkelsen and Ott teaches toy building bricks (toy building element) made of biopolymeric material (Mickelson: abstract). The toy building elements may be made of a resin comprising at least one bio-based and/or at least one hybrid bio-based polymer and/or a recycled polymer which may be composed of acrylonitrile butadiene styrene (“ABS”) (Mikkelsen: pg. 2, lin. 29-33 and pg. 10, lin. 6-19). The resin may further comprise petroleum-based polymers comprising ABS polymers (virgin ABS polymers as the petroleum-based ABS polymers are not described as recycled) (Mikkelsen: pg. 2, lin. 29-33 and pg. 9, lin. 29-32 – pg. 10, lin. 1-4). The resin may comprise recycled ABS (which may be mechanically recycled as mentioned below) may be present in a ratio of at least 90 wt% in a mixture with the petroleum-based ABS polymers (virgin ABS) which would be the remainder amount (i.e. 10 wt% or less) resulting in an overlapping ratio with the claimed range of 100:0 to 5:95 (Mikkelsen: pg. 11, lin. 34-36 – pg. 12, lin. 1-4). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
The limitations requiring the recycled ABS polymers to be “mechanically recycled” or “chemically recycled of a solvent-dissolution-recycled grade” are product by process limitations. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, the recycled ABS polymers may be mechanically recycled and/or chemically recycled (Mikkelsen: pg. 8, lin. 22-35).
Mikkelsen does not explicitly teach wherein the recycled ABS polymers comprise butadiene spheres that are less than or equal to 0.5 micrometers.
Ott teaches ABS molding compositions wherein butadiene particles (spheres) preferably have an average diameter of from 0.05 to 0.25 micrometers, which is within the claimed less than or equal to 0.5 micrometers, to provide an improved balance of toughness and surface gloss (Ott: claim 1; col. 1 and 2).
Mikkelsen and Ott are in the corresponding field of ABS compositions which undergo molding processes. Therefore, it would have been obvious to one of ordinary skill in the art to utilize butadiene spheres with the claimed size of 0.5 micrometers or less in the ABS of Mikkelsen to provide appropriate balance of improved toughness and surface gloss as taught by Ott.
Mikkelsen is silent towards the ABS material does not include a carcinogenic, a mutagenic or toxic for reproduction (CMR) substance identified in category 1A, 1B or 2 under Regulation (EC) No 1272/200. However, Mikkelsen teaches any additives are optional and does not mention any of the unwanted substances listed in the specification as being present (Mikkelsen: pg. 13, lin. 20-36). Thus, the toy building element may be considered to not include the claimed substances identified in in category 1A, 1B or 2 under Regulation (EC) No 1272/200.
Mikkelsen and Ott are silent towards the toy building element made of recycled ABS materials having the claimed relative Charpy v-notch impact strength when tested in the claimed manner. However, Mikkelsen in view of Ott teaches the claimed structure, including the claimed composition, structure, and proportions. Therefore, it would be expected to exhibit the same properties when tested in the claimed manner, such as the claimed Charpy v-notch impact strength. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. See MPEP 2112.
Response to Arguments
Applicant’s arguments filed 11/10/2025 in view of the Mikkelsen reference have been fully considered but they are not found persuasive and addressed below. The arguments towards the Sun reference have been found persuasive in view of Applicant’s amendments.
Applicant argues that as Mikkelsen does not disclose the claimed chirpy impact resistance properties and as the Examples in the specification prove it is a structural property, Mikkelsen cannot be said to teach it.
The argument is not found persuasive as it is not a requirement for a reference to explicitly teach a property when said reference, such as Mikkelsen, teaches the structure that would necessarily arrive at said claimed property. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). See MPEP 2145 II. Applicant has not proven or pointed to a structural difference that would distinguish the claimed structure and the structure disclosed by the prior art. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 2145 I.
Applicant argues that Mikkelsen does not disclose “chemically recycled ABS polymers of a solvent-dissolution-recycled-grade” and thus does not teach the claimed structure required by claim 1 and cannot be used to render claim 1 Chirpy properties inherent as a result.
The argument is not found persuasive as claim 1 requires mechanically recycled ABS polymers and/or chemically recycled ABS polymers of a solvent-dissolution-recycled-grade. Thus, the alleged required structure of the chemically recycled polymers being solvent-dissolution-recycled-grade are an optional limitation. Mikkelsen explicitly teaches mechanically recycling as explained above. Further, Applicant has not proven a structural difference of the combination of Mikkelsen and Ott, but merely states a conclusionary position that the processes result in different structure. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. See MPEP 2112.
Applicant further argues, regarding claim 23, that Mikkelsen is silent and thus cannot be said to teach the absence of the claimed impurities.
The argument is not found persuasive as Mikkelsen accounts for 100% being ABS polymers with additives being optional as explained in the rejection above. The burden of proof is on Applicant to provide evidence that Mikkelsen would have these claimed impurities or substances present in the resin of Mikkelsen. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 2145 I.
Applicant argues that Mikkelsen does not teach or suggest the claimed newly added claims for similar reasons as previously argued.
The arguments are not found persuasive as Mikkelsen in view of Ott does teach the claimed limitations as outlined in the updated rejection above.
Conclusion
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/TRAVIS M FIGG/Primary Examiner, Art Unit 1783