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.
Claim 17 is 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.
In the instant case, newly submitted claim is confusing as to intent because it can not be definitively ascertained what standards are intended to be included and/or excluded by the recitation of the term “Type” in accompaniment with the recited ranges of hardness values that it sets forth without the standards of the hardness test referred to being set forth by the claim.
Appropriate correction is required.
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.
Claim(s) 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bruchmann et al.(WO 2007/141171) in view of Lakrout et al.(2022/0314584).
Bruchmann et al. discloses polyurethane foam composites which may be prepared from polyol, polyisocyanate, chain extender and water as a foaming agent, along with solids to form composites with the polyurethane (Last half of p. 3 – 1st half of p. 4, last 3 lines of p. 4, pp. 5& 6, last 2 paras p. 9, 2nd para p.10 of translation).
Bruchmann et al. differs from the claims in that TPU powders are not employed. However, Bruchmann et al. discloses that TPU particles may be selected as additive powders in forming the composites of their invention (last 3 lines of p.4 and 1st half of p.5 of the translation). Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the TPU solids of Bruchmann et al. in forming the composites of Bruchmann et al. for the purpose of forming acceptably developed and reinforced composite articles in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Further, Bruchmann et al. differs in that it does not require particle sizes and/or amounts of TPU filler as claimed. However, overlapping sizes and amounts are disclosed (see last half of p. 5 of translation). Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the TPU solids of Bruchmann et al. in any size and/or amount provided for by Bruchmann et al. in forming the composites of Bruchmann et al. for the purpose of forming acceptably developed and reinforced composite articles in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Regarding claim 16, selection of TPU solid material is sufficient to address the requirements of these claims and this selection is addressed hereinabove.
Bruchmann et al. differs from the claims in that water in the amounts as now claimed is not particularly required. However, as pointed above, water is disclosed. Further, Lakrout et al. discloses water in amounts in overlap with those claimed for purposes of effectively imparting expansion effects {para [0030]}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized water in any amount as provided for through the totality of the teachings and fair suggestions of the combination of Bruchmann et al. and Lakrout et al. in forming the composites of Bruchmann et al. for the purpose of forming acceptably developed and foamed composite articles in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Regarding new claim 17, Bruchmann et al. differs in that it does not particularly require ranges of density values as expressed by this claim. However, overlap within Bruchmann et al. is evident {see page 2, lines 16-22 & page 11 lines 29-45 of translation}. Accordingly, it would have been obvious for one having ordinary skill in the art to have operated within any of the material combinations and associated density values provided for by Bruchmann et al. in forming the composites of Bruchmann et al. for the purpose of forming acceptably developed and reinforced composite articles in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Additionally, regarding claim 17, Bruchmann et al. differs in that it does not particularly require ranges of hardness values as expressed by this claim. However, Bruchmann et al. discloses hardness to be a feature of its products that may be readily and routinely controlled by chain extenders, crosslinkers and reactant functionality and chain length adjustments {see page 9, lines 36 et seq. & the last 7 lines of page 10 of translation}. Accordingly, it would have been obvious for one having ordinary skill in the art to have operated within any of the material combinations and adjustments provided for by Bruchmann et al. in forming the composites of Bruchmann et al. for the purpose of forming acceptably developed and reinforced composite articles having any hardness value that may be desired in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Response to Amendment and Arguments
Applicants’ arguments regarding the rejection under 35USC103 have been considered. However, rejection is maintained for all of the reasons as set forth above.
The following previous arguments are maintained to be still applicable:
It is held and maintained that applicants’ restated arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicants point to recitations of the cited prior art and restate the features of the claims. However, they fail to point out, in fact, where patentable distinction arises in the claims over what is taught or fairly suggested by the combination of the cited prior art as laid out in the rejection set forth above. It is held and maintained that the rejection as set forth above is appropriately set forth and proper and has not been refuted through a fact based demonstration of patentable distinction supported by limitation in the claims.
Further, it is held and maintained that the particle sizes of applicants’ claims as they compare to those taught or fairly suggested by Bruchmann et al. are addressed in the body of the rejection above, and applicants’ arguments offer no patentable distinction to the ranges of their claims, in fact, beyond mere assertion that distinction is evident. Additionally, it is held and maintained that exemplified embodiments of Bruchmann et al. do not negate that which is provided for through the fully considered teachings and fair suggestions of the entirety of its disclosure.
Additionally, regarding applicants’ arguments concerning Bruchmann et al.’s disclosures that their fillers are essentially fully contained within the polyurethane materials of their disclosure, such arguments are not persuasive in that applicants’ claims are open to the inclusion of their TPU powders being either fully within the polyurethane foam compositions of their claims or not fully within the polyurethane foam compositions of their claims. Further,
Regarding applicants’ assertions concerning the disclosures of paragraphs [0038] and [0058] of their disclosure, they are unpersuasive in that they do not identify distinction supported by limitation in the claims.
Further, to the degree that arguments of applicant’s reply are concerned with results, it is held that unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977. Obviousness does not require absolute predictability. In re Miegel 159 USPQ 716. Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548. In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89; In re Beattie, 24 USPQ 2d 1040. Further, evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89; Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288. See also In re Kulling, 14 USPQ 2d 1056.
In the instant case, applicants’ have not persuasively demonstrated unexpected results for the combinations of their claims. Applicants have not demonstrated their results to be unexpected and more than mere optimizations of the knowledge in the art or more significant than being secondary in nature. Additionally, applicants’ have not demonstrated their showing to be commensurate in scope with the scope of combinations now claimed.
Additionally, as to applicants' discussion of results and problems solved, it is held that teachings may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods.,Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).[see also MPEP 2144 IV.]. “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 also MPEP 2145 II.]. Applicants’ have not related their recitations of the claims to distinguishable limitations over the teachings and fair suggestions of the above cited prior art. Further, it is reiterated that they have not established showings of new or unexpected results attributable to the invention of the claims that are commensurate in scope with the scope of the claims as they currently stand.
As to applicants’ arguments concerning results, it is held that unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977. Obviousness does not require absolute predictability. In re Miegel 159 USPQ 716. Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548. In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89; In re Beattie, 24 USPQ 2d 1040. Further, evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89; Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288. See also In re Kulling, 14 USPQ 2d 1056.
In the instant case, applicants’ have not persuasively demonstrated unexpected results for the combinations of their claims. Applicants have not demonstrated their results to be unexpected and more than mere optimizations of the knowledge in the art or more significant than being secondary in nature. Additionally, applicants’ have not demonstrated their showing to be commensurate in scope with the scope of combinations now claimed. The limited representation of the range of materials, make-ups and proportions that are encompassed by the limitations of the claims render showings pointed to on pages 11 and 12 of the instant reply insufficient in overcoming the position of obviousness as laid out again above. Further, in light of the limited showings of record, it can not even be determined if the evidence of unexpected results of record are more significant than the expected evidence of obviousness of record.
As to applicants’ latest remarks on reply which substantially amount to a restatement of those previously made, it is held, maintained and reiterated that applicants have not established distinction in the claims based on the identification of patentably distinguishable features supported, in fact, by limitation in the claims. Regarding arguments concerning the role of the “polyurethane foam” component of the claims versus that of Bruchmann et al., it is held that the alleged distinctions are not reflected by limitation in the claims, and meaning and limitations can not be inferred. Moreover, though not required to meet or provide for the limits of the claims, it is to be noted that all portions of the products formed by through the processes of the combination, including the “polyurethane foam” portion of the composites of Bruchmann et al. contribute to mechanical properties of the composite from the standpoint of patentability and to any degree that is required by the claims as they currently stand defined.
It is held, maintained and reiterated here that the particle sizes of applicants’ claims as they compare to those taught or fairly suggested by Bruchmann et al. are addressed in the body of the rejection above, and applicants’ arguments offer no patentable distinction to the ranges of their claims, in fact, beyond mere assertion that distinction is evident. Finally, in this regard, it stands to be reiterated that the exemplified embodiments of Bruchmann et al. do not negate that which is provided for through the fully considered teachings and fair suggestions of the entirety of its disclosure.
Regarding applicants’ arguments concerning Bruchmann et al.’s disclosures that their fillers are essentially fully contained within the polyurethane materials of their disclosure, it is held, maintained and reiterated that such arguments are not persuasive in that applicants’ claims are open to the inclusion of their TPU powders being either fully within the polyurethane foam compositions of their claims or not fully within the polyurethane foam compositions of their claims.
Regarding applicants’ assertions concerning the disclosures of paragraphs [0038] and [0058] of their disclosure, it is held maintained and reiterated that they are unpersuasive in that they do not identify distinction supported by limitation in the claims, and remarks on reply do not address and/or resolve this holding.
Additionally, applicants’ provided schematic of a particle surrounded by polyurethane does not serve to distinguish the claims over Bruchmann et al. through distinguishing limitation(s) in the claims in any patentable sense.
Employment of TPU’s to the degree required by the limitations of applicants’ claims are sufficiently provided for through the fully considered teachings and fair suggestions of Bruchmann et al., including those of the last 3 lines of p.4 and the totality of p.5 of the translation. Additionally, it is seen and maintained in the instant case that the number of species of filler material does not derogate from the position of obviousness as laid out again above. Further, it is held, maintained and reiterated here that the particle sizes of applicants’ claims as they compare to those taught or fairly suggested by Bruchmann et al. are addressed in the body of the rejection above, and applicants’ arguments offer no patentable distinction to the ranges of their claims, in fact, beyond mere assertion that distinction is evident. Additionally, it is held and maintained that exemplified embodiments of Bruchmann et al. do not negate that which is provided for through the fully considered teachings and fair suggestions of the entirety of its disclosure.
As to applicants’ latest arguments on reply, latest added claim limitations and new claim introductions are addressed in the body of the rejection above. Further, in addition to the above remarks on reply, it is held and maintained that applicants’ assertions regarding generalized differences between additives and fillers are not substantive in the patentable sense.
It is held and maintained that employment of TPU’s to the degree required by the limitations of applicants’ claims are sufficiently provided for through the fully considered teachings and fair suggestions of Bruchmann et al., including those of the last 3 lines of p.4 and the totality of p.5 of the translation. Additionally, it is seen and maintained in the instant case that the number of species of filler material does not derogate from the position of obviousness as laid out again above. Further, it is held, maintained and reiterated here that the particle sizes of applicants’ claims as they compare to those taught or fairly suggested by Bruchmann et al. are addressed in the body of the rejection above, and applicants’ arguments offer no patentable distinction to the ranges of their claims, in fact, beyond mere assertion that distinction is evident. Additionally, it is held and maintained that exemplified embodiments of Bruchmann et al. do not negate that which is provided for through the fully considered teachings and fair suggestions of the entirety of its disclosure.
Further, it is held, maintained and reiterated here that the particle sizes of applicants’ claims as they compare to those taught or fairly suggested by Bruchmann et al. are addressed in the body of the rejection above, and applicants’ arguments offer no patentable distinction to the ranges of their claims, in fact, beyond mere assertion that distinction is evident. Additionally, it is held and maintained that exemplified embodiments of Bruchmann et al. do not negate that which is provided for through the fully considered teachings and fair suggestions of the entirety of its disclosure.
As stated above, new claims and other added limitations are addressed in the body of the rejection above, and arguments on reply do not offer patentable distinction in refutation of the holdings set forth in the rejection above.
Regarding applicants’ assertions concerning the disclosures of paragraphs [0038] and [0058] of their disclosure, it is held maintained and reiterated that they are unpersuasive in that they do not identify distinction supported by limitation in the claims, and remarks on reply do not address and/or resolve this holding.
As to applicants’ arguments concerning results, it is held, maintained and reiterated that unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977. Obviousness does not require absolute predictability. In re Miegel 159 USPQ 716. Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548. In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89; In re Beattie, 24 USPQ 2d 1040. Further, evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89; Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288. See also In re Kulling, 14 USPQ 2d 1056.
In the instant case, applicants’ have not persuasively demonstrated unexpected results for the combinations of their claims. Applicants have not demonstrated their results to be unexpected and more than mere optimizations of the knowledge in the art or more significant than being secondary in nature. Additionally, applicants’ have not demonstrated their showing to be commensurate in scope with the scope of combinations now claimed. The limited representation of the range of materials, make-ups and proportions that are encompassed by the limitations of the claims are insufficient in overcoming the position of obviousness as laid out above. Further, in light of the limited showings of record, it is held, maintained and reiterated that it can not even be determined if the evidence of unexpected results of record are more significant than the expected evidence of obviousness of record.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. 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.
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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