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 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8,10-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is directed to a composition, regenerated foamed particles , but is defined primarily by process steps, including ‘melting and foaming’, “melting and pelletizing” and forming regenerated TPU particles”. It is unclear whether these steps are intended to limit the structure of the claimed particles or merely describe one method of making them. As claimed, the boundaries of the claimed composition cannot be determined with reasonable certainty.
Further, the relationship between the following elements is unclear:
Regenerated foamed particles
Regenerated TPU particles
Pelletized recycled composition
optional TPU prepolymer.
It is not clear whether the TPU prepolymer is part of the recycled composition, added afterward during foaming or present in the final regenerated foamed particles.
It is also unclear how regenerated TPU different from regenerated foamed TPU.
Additionally, the claim uses several “wherein” clauses back-to-back, and it is not clear which part of the claim each one is referring back to in each instance.
Since claims 2-8 and 10-11 depend from claim 1, the indefiniteness of claim 1 also renders these dependent claims indefinite.
Examiner’s Interpretation:
In view of the 112(b) rejection above, the Examiner is interpreting Claim 1 as a product-by-process claim. The claim defines the “regenerated foamed particles’ primarily by the steps used to produce them, rather than by clear structural characteristics. Because the actual structure of the particles is not well defined in the claim, the scope unclear as well. Therefore, for the purposes of the prior -art search and the § 102 and § 103 analysis, the Examiner will move forward using the interpretation that claim 1 is directed to the structure of the final foamed particles and not the manufacturing steps.
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.
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.
Claim(s) 1-8,10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2019237280A1 machine translation, see abstract, page 1 lines 7-10 and page 3 lines 31-43 in view of CN101376718B machine translation, note abstract, page 2, lines 30-31, page 3 lines 23-27.
Claim 1 is directed to:
Regenerated foamed particles, wherein the regenerated foamed particles are made by melting and foaming regenerated TPU particles, and the regenerated TPU particles are formed by melting and pelletizing a recycled composition, and the recycled composition comprises 100 parts by weight of scraps of a waste ETPU molded body and 0 to 20 parts by weight of a TPU prepolymer, the regenerated TPU particles have a viscosity of 1,000 poise to 9,000 poise measured at 1700 C according to JISK 7311 method, wherein the TPU prepolymer is an oligomer produced by reaction of a polyol monomer and a diisocyanate monomer, and the TPU prepolymer has an isocyanate (RNCO) functional group at an end of a polymer chain and R is an alkane, the TPU prepolymer has a NCO content of 3 to 13 weight percent based on the total weight of the TPU prepolymer as measured according to ASTM D2572.
WO2019237280A1 discloses a foamable thermoplastic polyurethane particles made from unfoamed TPU particles, wherein the TPU particles have a viscosity of 1000 to 9,000 poise at 170°C by the JISK 7311. Page 1 lines 7-10. WO2019237280A1 further teaches melting and foaming TPU particles, including microwave foaming and using as additives such as tackifiers or bridging agents to promote bonding and improve foam performance. Note page 3 lines 31-43. Thus WO2019237280A1 teaches a foamed TPU particle product having the same viscosity range, similar additives and the same general foaming method as recited in claim 1. See also page 3 lines 31-43 and page 4 lines 20-22
WO2019237280A1 does not expressly disclose that the unfoamed TPU particles are regenerated TPU particles, that the starting material is scraps of a waste ETPU molded body, or that the additive is specifically a TPU prepolymer having an NCO content of 3-13%.
CN101376718B teaches a method for recycling waste polyurethane materials. The method is to decontaminate the recovered waste polyurethane and crush it, then put the crushed particles into a high-mixer, and then add antioxidant, foaming agent, and stabilizers, melting extruding, and pelletizing the material to form regenerated polyurethane particles. The reference further teaches that the regenerated polyurethane particles can be injection molded or used to adjust density, hardness and melt properties of the recycled TPU. Note page 2, lines 30-31, page 3 lines 23-27.
Thus, CN101376718B teaches regenerating Polyurethane/TPU particles since it discloses crushing, melting, extruding and pelletizing waste polyurethane materials to form regenerated polyurethane particles. These steps correspond to the regenerated TPU particle formation recited in claim 1. Additionally, the reference also teaches adding polyester polyol and isocyanate and polymerizing them during melting. As a result, CN101376718B teaches how to produce regenerated TPU particles from waste molded TPU/ETPU using the same melt, extrusion and pelletizing process recited in claim 1.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of WO2019237280A1 in view of CN101376718B since both references teach melt processable TPU particles having controlled viscosity. WO2019237280A1 teaches melting and forming TPU particles and using additives to improve bonding. CN101376718B teaches how to prepare regenerated TPU particles from waste and how to add polyol-isocyanate components during regeneration using the same melt , extrusion and pelletizing steps as recited in claim 1. Combining the two references would result in predictable results of foamed TPU particles made from regenerated TPU and having the same viscosity and foaming behavior as in claim 1.
With regard to the TPU prepolymer limitation, the TPU prepolymer limitation would have been obvious since CN101376718B discloses adding polyester polyol or component A and isocyanate or component B and polymerizing them during the regeneration process. See page 3 lines 19-22 machine translation. These polyol -isocyanate mixtures would meet the definition of a TPU prepolymer. Selecting an NCO ranges is considered routine optimization because CN101376718B already teaches adjusting polyol and isocyanate proportions to control hardness and melt properties. The reference states. In the abstract and on page 3 lines 7-11, the reference states:
“On the one hand, the present invention adjusts the number of cells in the material by adjusting the amount of foaming agent in the formula and the decomposition period of the foaming agent, thereby realizing the control of the density of recycled materials and products; on the other hand, by adjusting the polyether in the formula Or the amount of polyester polyol, isocyanate and the choice of adding different hardness and different amounts of thermoplastic styrene-butadiene rubber, etc., so as to realize the control of the hardness of recycled materials.”
Thus, WO2019237280A1 discloses foamed TPU particles having the same viscosity and foaming method and CN101376718B teaches adding polyester polyol and isocyanate components during regeneration and polymerizing them with recycled polyurethane. Consequently, one of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to combine the teachings of both references to arrive at the regenerated foamed particles of claim 1.
Claim 2 is directed to:
The regenerated foamed particles according to claim 1, wherein the waste ETPU molded body is an article formed by bonding foamed particles through microwave, and the foamed particles are different from the regenerated foamed particles.
Thus, claim 2 further recites that the waste ETPU molded body is an article formed by bonding foamed particles through microwave, and the foamed particles are different from the regenerated foamed particles and is different from the regenerated foamed particles.
In addition to the discussion in claim 1, WO2019237280A1 discloses molded TPU bodies containing foamed TPU beads that are distinct from the unfoamed or regenerated TPU particles used as starting material. See page 4 lines 20-22 and page 3 lines 31-43. CN101376718B discloses that recycled polyurethane /TPU is obtained by crushing and melting previously molded bodies to create regenerated particles. See page 2 lines 30-31 and page 3 lines 7-12.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to recognize that the waste molded TPU moieties processed in CN101376718B inherently contain foamed particles and that such molded bodies differ from the regenerated famed particles produced after recycling.
Claim 3 is directed to:
The regenerated foamed particles according to claim 1, wherein the waste ETPU molded body is composed of foamed particles formed by melting and foaming TPU particles, the TPU particles have a viscosity of 1,000 poise to 9,000 poise, the TPU particles are different from the regenerated TPU particles, and the viscosity is measured at 170*C according to the JISK 7311 method.
In addition to the discussion in claim 1, WO2019237280A1 discloses producing foamed TPU particles by melting and flaming TPU particles and its molded TPU moieties contain these earlier generated foamed particles. See page 1 lines 7-10 and page 4 lines 20-22, page 3 lines 31-43, and page 3 lines 31-43. CN101376718B discloses recycling molded TPU moieties which inherently contain such foamed particles. See page 3 lines 7-12. After melting, extruding and pelletizing, the regenerated particles in CN101376718B differ from the original foamed particles.
Claim 4 is directed to:
The regenerated foamed particles according to claim 1, wherein the recycled composition comprises 0 to 10 parts by weight of the TPU prepolymer.
WO2019237280A1 discloses adding functional materials such as urethane based tackifiers or bridging agents to improve bonding and molding performance. See abstract and page 2 lines 24-30.
CN101376718B discloses adding polyester polyol and isocyanate components to recycled polyurethane and adjusting the amount to control melt properties. See page 3 lines 7-12. These polyol isocyanate mixtures are chemically the same to TPU prepolymers. Selecting an amount within the claimed 0-10 parts ranges is considered routine optimization.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ particular amounts and/or parameters as known in the art, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971). One would have been motivated to employ particular amounts and/or parameters as known in the art, since, the primary reference discusses the generally use of such and generally, it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 205 USPQ 215 (CCPA 1980); and In re Peterson, 315 F.3d 1325 (CA Fed 2003).
Claim 5 is directed to:
The regenerated foamed particles according to claim 1, wherein the recycled composition comprises 0 to 5 parts by weight of the TPU prepolymer.
WO2019237280A1 discloses adding functional materials such as urethane based tackifiers or bridging agents to improve bonding and foaming of TPU particles. See abstract and page 2 lines 24-30.
CN101376718B discloses adding polyester polyol and isocyanate components to recycled polyurethane and adjusting their concentration to achieve desired melt and molding properties. amount to control melt properties. See page 3 lines 7-12. These polyol isocyanate mixtures are chemically the same to TPU prepolymers. Selecting an amount within the claimed 0-5 parts ranges is considered routine optimization.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ particular amounts and/or parameters as known in the art, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971). One would have been motivated to employ particular amounts and/or parameters as known in the art, since, the primary reference discusses the generally use of such and generally, it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 205 USPQ 215 (CCPA 1980); and In re Peterson, 315 F.3d 1325 (CA Fed 2003).
Claim 6 is directed to:
The regenerated foamed particles according to claim 1, wherein the recycled composition comprises 0.1 to 20 parts by weight of the TPU prepolymer.
WO2019237280A1 and CN101376718B both teach adding oligomeric or polyurethane forming components to TPU compositions and adjusting quantities to control processing performance. Selecting an amount of TPU prepolymer within 0.1 – 20 parts by weight is considered a predictable design choice. Note CN101376718B page 2 lines 32-34 and page 3 lines 7-12. See WO2019237280A1 abstract and page 2 lines 24-30.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ particular amounts and/or parameters as known in the art, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971). One would have been motivated to employ particular amounts and/or parameters as known in the art, since, the primary reference discusses the generally use of such and generally, it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 205 USPQ 215 (CCPA 1980); and In re Peterson, 315 F.3d 1325 (CA Fed 2003).
Claim 7 is directed to:
The regenerated foamed particles according to claim 1, further comprising melting and foaming a recycled foamed composition, the recycled foamed composition comprising the regenerated TPU particles and TPU particles, the TPU particles being different from the regenerated TPU particles.
WO2019237280A1 discloses compositions containing different TPU particle types. See page 3 lines31-43. CN101376718B discloses mixing recycled TPU particles with fresh polyurethane raw materials. See page 2 lines 30-31 and page 3 lines 23-27. Combining regenerated TPU particles weight other TPU particles is obvious to one having ordinary skill in the art.
Claim 8 is directed to:
The regenerated foamed particles according to claim 7, further comprising melting and foaming a recycled foamed composition, the recycled foamed composition comprising the regenerated TPU particles and an anti-wear agent.
WO2019237280A1 discloses using additives to enhance durability and bonding. See page 5 lines 38-43 and page 2 lines 24-30. CN101376718B discloses adding lubricants, antioxidants and stabilizers. See page 2 lines 32-34.
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended purpose. See Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). (Selection of solvent having boiling point and vapor pressure properties recognized as being ideal for printing inks into printing ink compositions found obvious on its face). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). (Selection of a known plastic to make a plastic container found obvious on its face).
Claim 10 is directed to:
A regenerated foamed and molded body is formed by bonding the regenerated foamed particles according to claim1 through microwave.
WO2019237280A1 discloses forming molded TPU moieties using microwave heating. See page 2 lines 3-15.
CN101376718B discloses producing regenerated polyurethane particles suitable for molding. Page 2 lines 30-31, page 3 lines 23-27. Using regenerated TPU particles in the microwave molding process is an obvious combination to one having ordinary skill in the art.
Claim 11 is directed to:
The regenerated foamed and molded body according to claim 10, wherein the regenerated foamed and molded body is formed by jointly bonding the regenerated foamed particles and foamed particles through microwave, and the foamed particles are formed by melting and foaming TPU particles, the foamed particles are different from the regenerated foamed particles.
WO2019237280A1 teaches microwave bonding of different TPU particles. See abstract and page 2 lines 3-15.
CN101376718B discloses mixing regenerated materials with other polyurethane components. Page 2 lines 30-31, page 3 lines 23-27.Combining regenerated and other foamed TPU particles during microwave molding is an obvious step to one having ordinary skill in the art.
In conclusion, in view of the above, there appears to be no significant difference between the reference(s) and that which is claimed by applicant(s). Any differences not specifically mentioned appear to be conventional. Consequently, the claimed invention cannot be deemed as unobvious and accordingly is unpatentable.
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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/Terressa Boykin/ Primary Examiner, Art Unit 1765