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 .
Response to Amendment
The Amendment filed 29 January 2026 has been entered. Claims 1 – 4 and 6 – 20 remain pending in the application.
Terminal Disclaimer
The terminal disclaimer filed on 29 January 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application No. 18/068,029 has been reviewed and is accepted. This terminal disclaimer has been recorded.
The terminal disclaimer filed on 29 January 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application No. 19/006,620 has been reviewed and is accepted. This terminal disclaimer has also been recorded.
In view of these terminal disclaimers, the double patenting rejections presented in the Office Action mailed 1 October 2025 are withdrawn.
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.
Claim 13 is 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.
Regarding claim 13, the phrase “in particular” (l. 7 of the claim) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, and 7 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over Aumonier (US 2018/0080183 A1) in view of Seaton (EP 4,220,054 A1), Sawyer (US 2019/0203425 A1), Volterrani (US 2015/0252537 A1), and Pintat (US 2020/0181852 A1).
Regarding claim 1, Aumonier discloses an artificial turf infill (e.g. ¶¶ [0002], [0005] – [0041]) comprising:
- an olive pit material comprising olive pit fragments (“olive pit particles”: e.g. ¶¶ [0005], [0008] – [0023], [0025], [0026], [0028], [0030] – [0036]).
Although Aumonier is not explicit as to (I) the olive pit fragments being rounded or (II) the artificial turf infill comprising microporous zeolite particles, these features would have been obvious in view of Volterrani, Pintat, and Sawyer.
With respect to (I), Aumonier crushes olive pits to form their olive pit fragments (e.g. ¶¶ [0010], [0016], [0023], [0025], [0026], [0031], [0036]).
Seaton states Aumonier’s crushing process can lead to sharp edges on the outer surfaces of the olive pit fragments (e.g. ¶ [0006]).
Sawyer notes infill with sharp edges creates a rough feel against skin for athletes sliding across an artificial turf, and thus uses abrasive rounding to smooth out the surface of the infill (e.g. ¶ [0111]).
While Sawyer describes this with respect to wood particles (e.g. ¶ [0111]), the examiner observes a sharp edge would feel rough against skin irrespective of the material of the infill.
Accordingly, it would have been obvious to modify the olive pit particles Aumonier discloses to comprise rounded olive pit particles, e.g. to reduce the rough feel of the artificial turf as Sawyer suggests.
With respect to (II), Pintat discloses microporous zeolite particles are used to control evaporation and therefore the temperature of artificial turf via a cooling effect (e.g. Fig. 1 – 5; ¶¶ [0004] – [0112]).
Volterrani discloses an artificial turf infill comprising (“infill material” for “synthetic turf”, e.g. “infill material” 10 for “synthetic turf” 1: e.g. Fig. 1 – 5; ¶¶ [0016] – [0117]):
an olive pit material (“olive stones” as an example of “ligninic and/or resinous material of vegetable origin”: e.g. ¶¶ [0021], [0023], [0032], [0035], [0042], [0047], [0049], [0050], [0052], [0064], [0089], [0104], [0105], [0107] – [0109], [0112]); and
zeolite particles (as a species of “sand”: e.g. ¶¶ [0024], [0037], [0044], [0048], [0111], [0112]).
Aumonier discloses their artificial turf infill may comprise sand (e.g. ¶¶ [0012], [0014], [0015], [0017] – [0020], [0022], [0023], [0026], [0028], [0030] – [0032], [0034] – [0036]). Furthermore, Aumonier discloses whole olive pits or their fragments may be used (e.g. ¶ [0034]). Given these two disclosures, one of ordinary skill in the art would have observed Volterrani bridges the species of the infill material Aumonier and Pintat respectively disclose. This implies a compatibility of Pintat’s disclosure with Aumonier’s purposes.
Accordingly, for the purpose of controlling evaporation, temperature, and cooling of the artificial turf, it would have been obvious to provide the sand as microporous zeolite particles as Pintat discloses to Aumonier’s artificial turf infill.
Regarding claim 2, in addition to the limitations of claim 1, Aumonier discloses the olive pit material comprises olive pit fragments having a size of 0.5 mm or greater in an amount of at least 42.0 wt% of the total weight of the total olive pit material in the infill (fragments have a mesh or sieve size of 8 to 30, corresponding to a size range of 0.60 to 2.36 mm: e.g. Fig. 8; ¶¶ [0008], [0011] – [0015], [0025], [0028], [0030] – [0033], [0035], [0036]).
Regarding claim 7, although Aumonier, Seaton, Sawyer, Volterrani, and Pintat are not explicit as to the microporous zeolite particles being added in the infill in an amount of 1.0 to 30.0 wt% of the total amount of the infill, Volterrani notes that using less mineralogical material such as sand, including zeolite, increases the biodegradability of the artificial turf infill and therefore avoids disposal problems (e.g. ¶¶ [0024], [0065], [0110]). However, for the embodiments of Volterrani’s disclosure which require zeolite (e.g. ¶¶ [0024], [0037], [0044], [0048], [0111], [0112]), it will be understood that the amount of zeolite should be kept to a minimum to minimize the impact on biodegradability. However, this also must be counterbalanced with the benefits Pintat discloses for microporous zeolite particles in relation to evaporation of water and temperature control of the artificial turf discussed in the 35 U.S.C. 103 rejection of claim 1.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05, II, A. Accordingly, it would have been obvious for the microporous zeolite particles Pintat discloses to be added in the infill in an amount of 1.0 to 30.0 wt% of the total amount of the infill, the motivation being to have high biodegradability of the artificial turf while still maintaining water evaporation and temperature control of the artificial turf.
Regarding claim 8, in addition to the limitations of claim 1, Pintat discloses the microporous zeolite particles have a grain size between 0.15 mm and 1.5 mm (e.g. ¶¶ [0028], [0036], [0037], [0057], [0062], [0063], [0067]), and a maximum surface specific surface area of 20 m2/g to 30 m2/g, e.g. 21 m2/g (e.g. ¶¶ [0024], [0056], [0062], [0079]).
Pintat’s grain size is within the claimed range whereas the maximum surface specific surface area overlaps or matches the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 9, in addition to the limitations of claim 1, Pintat discloses the microporous zeolite particles have a porosity between 15% and 20% volume parts (e.g. ¶¶ [0006], [0024], [0036], [0052], [0054], [0056]).
Pintat’s porosity matches the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 10, in addition to the limitations of claim 1, Pintat discloses the microporous zeolite particles have a grain size distribution wherein 70% to 90% of the grains by weight have a size in the range of 0.4 mm to 1.5 mm and 10% to 30% of the grains by weight have a size smaller than 0.4 mm (e.g. ¶ [0037]).
Pintat’s grain size distribution matches the ranges claimed. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 11, although Aumonier, Seaton, Sawyer, Volterrani, and Pintat are not explicit as at least 10% by weight of the infill consists of olive pit material, Volterrani notes that using less mineralogical material such as sand, including zeolite, increases the biodegradability of the artificial turf infill and therefore avoids disposal problems (e.g. ¶¶ [0024], [0065], [0110]). However, for the embodiments of Volterrani’s disclosure which require zeolite (e.g. ¶¶ [0024], [0037], [0044], [0048], [0111], [0112]), it will be understood that the amount of zeolite should be kept to a minimum to minimize the impact on biodegradability. However, this also must be counterbalanced with the benefits Pintat discloses for microporous zeolite particles in relation to evaporation of water and temperature control of the artificial turf discussed in the 35 U.S.C. 103 rejection of claim 1.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05, II, A. Accordingly, it would have been obvious for at least 10% by weight of the infill consists of olive pit material, the motivation being to have high biodegradability of the artificial turf while still maintaining water evaporation and temperature control of the artificial turf.
Regarding claim 12, in addition to the limitations of claim 1, Pintat discloses the microporous zeolite particles have a hardness between 3 and 4 on the Mohs scale and a moisture level smaller than 6 wt% (e.g. ¶¶ [0030], [0039], [0040], [0075]).
Pintat’s hardness range overlaps the claimed range whereas Pintat’s moisture level matches the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 13, in addition to the limitations of claim 1, Volterrani discloses the artificial turf infill further comprises at least one further bio-based material including pit fragments of at least one other stone-containing fruit,
wherein in particular the at least one further bio-based material is selected from a group comprising cork particles (e.g. ¶¶ [0049], [0108]).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I. Since Volterrani recite the same material for the pit fragments of the further bio-based material, it is understood that the pit fragments of the further bio-based material have a different elasticity than the rounded, and thermally treated olive pit fragments.
Regarding claim 14, in addition to the limitations of claim 1, Aumonier discloses the artificial turf infill comprises only bio-based materials and is free of any rubber, elastomeric, polymer-based infill, and sand (e.g. ¶¶ [0007], [0026]). Volterrani similarly discloses this to improve biodegradability (e.g. ¶¶ [0023], [0024], [0065], [0110]), thus rendering it obvious to include this feature..
While Aumonier mentions sand, it should be noted the 35 U.S.C. 103 rejection of claim 1 provides sand in the form of microporous zeolite particles, consistent with the suggestions of Volterrani and Pintat. Moreover, such provision is consistent with the claims 1 and 14 whereby it is understood that microporous zeolite particles are distinct from sand which is not microporous zeolite particles.
Regarding claim 15, Aumonier discloses an artificial turf infill comprising the artificial turf infill discussed in the 35 U.S.C. 103 rejection of claim 1 (e.g. ¶¶ [0002], [0005] – [0041]). The modifications in view of Seaton, Sawyer, Volterrani, and Pintat similarly apply.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Aumonier, Seaton, Sawyer, Volterrani, and Pintat as applied to claim 1 above, and further in view of Smollett (US 2021/0254290 A1).
Regarding claim 4, although Aumonier, Seaton, Sawyer, Volterrani, and Pintat are not explicit as to the olive pit material being thermally treated at a temperature of 80 °C to 250 °C, this feature makes claim 4 a product-by-process claim.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113, I.
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See MPEP § 2113, I.
In the case of claim 4, the examiner observes claim 4 does not specify other process parameters which would indicate the scope of the claimed products. The instant specification identifies potential results of thermal treatment within the claimed range (such as removing the natural smell of the olive pit material, reducing equilibrium moisture, chemical modification, increasing antimicrobial resistance, reducing hygroscopicity, increasing surface hardness and tenacity, increasing durability, and increasing resistance to biodegradation: e.g. p. 13, l. 1, to p. 14, l. 14). While such descriptions should not be interpreted as a required feature of the claimed olive pit material (per MPEP § 2111.01, II), such disclosures do illuminate potential features encompassed by the claim.
To this end, Smollett notes olive pit material which is dry, i.e. has reduced moisture, has benefits over other materials, e.g. coconut particles, in order to obtain proper temperature control and thus using olive pit materials helps to simplify preparation of artificial turf (e.g. ¶ [0044]).
Given the microporous zeolite particles Pintat discloses rectify any potential temperature control issues per the 35 U.S.C. 103 rejection of claim 1, it would have been obvious to provide olive pit materials having reduced moisture as Smollett suggests in order to help simplify preparation of the artificial turf.
Given Pintat discloses a same result of a process to that claimed, a prima facie case of obviousness is established with respect to claim 4.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Aumonier, Seaton, Sawyer, Volterrani, and Pintat as applied to claim 2 above, and further in view of Smollett.
Regarding claim 6, although Aumonier, Seaton, Sawyer, Volterrani, and Pintat are not explicit as to rounded, and thermally treated olive pit fragments are obtained by a thermo-tumbling treatment of fractured olive pits together with the microporous zeolite particles,
wherein the fractured olive pits are formed by fracturing in an olive oil extraction process during a compression operation for extracting oil from the olives and have sharp edges due to the fracturing, and
wherein the thermo-tumbling process smoothens the sharp edges by attrition by rubbing the fractured olive pits against each other and against the microporous zeolite particles to form the rounded, thermally treated olive pit fragments, the examiner observes these recitations make claim 6 a product-by-process claim.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113, I.
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See MPEP § 2113, I.
In the case of claim 6, the examiner observes claim 6 does not specify other process parameters which would indicate the scope of the claimed products. The instant specification identifies potential results of thermal treatment of the olive pit fragments (such as removing the natural smell of the olive pit material, reducing equilibrium moisture, chemical modification, increasing antimicrobial resistance, reducing hygroscopicity, increasing surface hardness and tenacity, increasing durability, and increasing resistance to biodegradation: e.g. p. 13, l. 1, to p. 14, l. 14). While such descriptions should not be interpreted as a required feature of the claimed olive pit material (per MPEP § 2111.01, II), such disclosures do illuminate potential features encompassed by the claim.
To this end, Smollett notes olive pit material which is dry, i.e. has reduced moisture, has benefits over other materials, e.g. coconut particles, in order to obtain proper temperature control and thus using olive pit materials helps to simplify preparation of artificial turf (e.g. ¶ [0044]).
Given the microporous zeolite particles Pintat discloses rectify any potential temperature control issues per the 35 U.S.C. 103 rejection of claim 1, it would have been obvious to provide olive pit materials having reduced moisture as Smollett suggests in order to help simplify preparation of the artificial turf.
As noted in the 35 U.S.C. 103 rejection of claim 1, Seaton states Aumonier’s crushing process can lead to sharp edges on the outer surfaces of the olive pit fragments (e.g. ¶ [0006]). Additionally, as also noted in the 35 U.S.C. 103 rejection of claim 1, Sawyer notes infill with sharp edges creates a rough feel against skin for athletes sliding across an artificial turf, and thus uses abrasive rounding to smooth out the surface of the infill (e.g. ¶ [0111]).
While Sawyer describes this with respect to wood particles (e.g. ¶ [0111]), the examiner observes a sharp edge would feel rough against skin irrespective of the material of the infill.
Accordingly, it would have been obvious to modify the olive pit fragments Aumonier discloses to comprise smooth edges, e.g. to reduce the rough feel of the artificial turf as Sawyer suggests.
Given the prior art discloses a same result of a process to that claimed, a prima facie case of obviousness is established with respect to claim 6.
Allowable Subject Matter
Claims 17 and 20 are allowed.
The following is an examiner’s statement of reasons for allowance:
With respect to claim 17, as noted in the Office Action mailed 1 October 2025 (incorporated herein by reference in its entirety), claim 17 contained allowable subject matter in view of Volterrani, Pintat, and Aumonier failing to teach or suggest a method step of allowing the olive pit particles in the applied artificial turf infill to automatically trickle down into voids between the olive pit fragments, thereby automatically forming a stabilizing layer consisting essentially of the trickled-down particles, and a performance layer containing the rounded olive pit fragments.
Claim 17 was previously objected to for depending on a rejected independent claim but otherwise allowable. The Amendment filed 29 January 2026 amends claim 17 into an independent claim and thus is allowed for the reasons above.
A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Therefore, claim 20 is allowed for at least the same reasons as claim 17.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claims 3 and 16 – 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 3, Aumonier discloses an olive pit material for artificial turf infill having olive pit fragments having a size between 0.5 mm to 4.0 mm and olive pit particles having a size less than 0.15 mm (e.g. Fig. 8; ¶ [0036]). While Aumonier acknowledges using different sizes for purposes of surface stability (e.g. Fig. 8; ¶¶ [0023], [0036]), the examiner observes such descriptions do not necessarily disclose or suggest a bimodal size distribution where a major mode comprises rounded, thermally treated olive pit fragments and having a peak between 0.5 mm to 4.0 mm and a minor mode comprises olive pit particles of less than 63 µm in an amount of at least 0.5 wt% and has a peak at less than 63 µm.
Therefore, claim 3 has allowable subject matter.
With respect to claim 16, Volterrani acknowledges artificial turf comprising a stabilization layer and a performance layer (“lower layer” 11 and “upper layer” 12, respectively: e.g. Fig. 1, 3, 4; ¶¶ [0030], [0065], [0107], [0112], [0114]). Aumonier discloses olive pit materials for artificial turf infill, wherein the olive pit material comprises olive pit fragments having a size of 0.5 mm or greater and olive pit particles having a size of less than 63 µm (e.g. Fig. 1 – 8; ¶¶ [0005] – [0041]) for providing a more stable surface and therefore better foot stability and playability (e.g. ¶ [0025]).
However, Volterrani, Pintat, and Aumonier do not disclose the claimed arrangement of
a stabilization layer comprising at least one of sand, the olive pit particles, and at least a portion of the microporous zeolite particles; and
a performance layer positioned on the stabilizing layer, the performance layer comprising the olive pit fragments and being substantially free of the olive pit particles
as required of claim 16. Therefore, claim 16 contains allowable subject matter.
A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Therefore, claims 18 and 19 have allowable subject matter for at least the same reasons as claim 16.
Response to Arguments
Applicant’s arguments, see pp. 8 – 9, filed 29 January 2026, with respect to the rejections of claims 1 – 16, 18, and 19 under nonstatutory double patenting have been fully considered and are persuasive. Therefore, these rejections have been withdrawn. As noted above, Applicant has overcome these rejections in view of the noted Terminal Disclaimers.
Applicant’s arguments, see p. 9, filed 29 January 2026, with respect to the rejections of claims 6, 13, and 14 under 35 U.S.C. 112 have been fully considered and are persuasive, except for the remaining recitation of “in particular” in claim 13. The other rejections under 35 U.S.C. 112 have been withdrawn.
Applicant’s arguments, see pp. 10 – 13, filed 29 January 2026, with respect to the rejections of claims 1, 2, and 4 – 15 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, these rejections has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of a combination of Aumonier, Seaton, Sawyer, Volterrani, and Pintat.
Applicant asserts Volterrani and Sawyer cannot be combined to arrive at the rounded olive pit fragments required of claim 1. Notably, Applicant asserts olive pits are hard, smooth endocarps that do not splinter and therefore do not present sharp edges as Sawyer suggests, and thus Sawyer cannot be used to modify properties of olive pits.
The examiner notes Aumonier discloses olive pit fragments which, when viewed in light of evidentiary disclosures from Seaton, do have sharp edges. While Sawyer relates to wood particles, Sawyer’s disclosure acknowledges a sharp or rough edge is undesirable to athletes sliding across the surface during play (e.g. ¶ [0111]), and any material which has a sharp or rough edge would be undesirable. Accordingly, smoothing the edges of olive pit fragments as Aumonier discloses would have been desirable.
With respect to Seaton, the examiner notes MPEP § 2124 states the following regarding exceptions to the rule that a reference must be prior art and in particular not need antedate the filing date (portions of emphasis in bold):
In certain circumstances, references cited to show a universal fact need not be available as prior art before the effective filing date of applicant’s claimed invention. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. Some specific examples in which later publications showing factual evidence can be cited include situations where the facts shown in the reference are evidence "that, as of an application’s filing date, undue experimentation would have been required, In re Corneil, 347 F.2d 563, 568, 145 USPQ 702, 705 (CCPA 1965), or that a parameter absent from the claims was or was not critical, In re Rainer, 305 F.2d 505, 507 n.3, 134 USPQ 343, 345 n.3 (CCPA 1962), or that a statement in the specification was inaccurate, In re Marzocchi, 439 F.2d 220, 223 n.4, 169 USPQ 367, 370 n.4 (CCPA 1971), or that the invention was inoperative or lacked utility, In re Langer, 503 F.2d 1380, 1391, 183 USPQ 288, 297 (CCPA 1974), or that a claim was indefinite, In re Glass, 492 F.2d 1228,1232 n.6, 181 USPQ 31, 34 n.6 (CCPA 1974), or that characteristics of prior art products were known, In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962)." In re Koller, 613 F.2d 819, 824 n.5, 204 USPQ 702, 706 n.5 (CCPA 1980) (quoting In re Hogan, 559 F.2d 595, 605 n.17, 194 USPQ 527, 537 n.17 (CCPA 1977) (emphasis in original)). See also Amgen Inc. v. Sanofi, 872 F.3d 1367, 1375, 124 USPQ2d 1354, 1359 (Fed. Cir. 2017)(post-effective-filing-date evidence could be relied upon to show that patent failed to disclose a representative number of species of a claimed genus, and to show that patentees may have engaged in undue experimentation to enable the full scope of the claims before the effective filing date). However, it is impermissible to use a later factual reference showing the state of the art existing after the effective filing date of the claimed invention to determine whether the application is enabled or described as required under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In re Koller, 613 F.2d 819, 823 n. 5, 204 USPQ 702, 706 n.5 (CCPA 1980). Post-effective-filing-date evidence offered to illuminate the post-effective-filing-date state of the art is improper. Amgen, 872 F.3d at 1374, 124 USPQ2d at 1359. References which do not qualify as prior art because they postdate the claimed invention may be relied upon to show the level of ordinary skill in the art at or around the relevant time. See Ex parte Erlich, 22 USPQ2d 1463 (Bd. Pat. App. & Inter. 1992).
Since Seaton is only cited for providing further details of what Aumonier already discloses, the Wilson and Erlich decisions highlighted above indicates any disclosure Seaton makes in this regard is sufficiently considered knowledge available to one of ordinary skill in the art at the time Aumonier was published.
For these reasons, the rejections are presented herein.
Conclusion
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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