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 .
Election/Restrictions
Applicant’s election of Group I, corresponding to Claims 1-7 and 9-13 in the reply filed on October 23, 2025 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse. M.P.E.P. § 818.01(a). Claims 14, 16-19, and 24 are withdrawn from consideration.
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 2, 3, and 10 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 Claims 2 and 3, the phrase “such as” renders these claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. “Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.” M.P.E.P. § 2173.05(d).
With regard to Claim 10, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See M.P.E.P. § 2173.05(c). In the present instance, Claim 10 recites the broad recitation that “the granules[s have] a Shore A hardness of between 20 and 90, and the claim also recites “preferably between 40 and 60,” which is the narrower statement of the range. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1-6 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Korean Patent No. 10-2011437 to Sin (English translation obtained from PE2E database is referenced herein) (“Sin”) in view of U.S. Patent Application Publication No. 2023/0243110 to Seifert et al. (“Seifert”).
With regard to Claims 1 and 11, Sin discloses an elastic infill material for artificial turf comprising unvulcanized natural rubber, which is a natural binder, and additional ingredients that would physically alter, but not initiate a chemical reaction with the unvulcanized natural rubber, such as pigment, processing oil, emulsifier, colorant, anti-aging agent, and activated carbon. See, e.g., Abstract, entire document. Sin discloses forming the elastic infill material into granules using an extrusion process. Page 5. Sin discloses that the ingredients are dispersed within the granule because Sin teaches that the ingredients are thoroughly mixed with one another prior to extrusion. Pages 4-5. Sin discloses the granules have a mean size of 0.8 to 2 mm. Page 3. The activated carbon ingredient of Sin satisfies the limitations of the claimed filler material because it is environmentally friendly, harmless to the human body, and can be derived from natural material, such as coconuts. Page 3. Although the processing oil of Sin would provide some anti-tack features to the natural rubber material, Sin does not disclose that the processing oil is biodegradable. Seifert is related to compostable artificial turf infill material formed into granules. See, e.g., Abstract, entire document. Seifert teaches that oil is mixed into the granules to render them softer and to increase their elasticity. Paragraph [0019]. Seifert teaches that the lubricating feature of the oils can be provided from biodegradable materials. Paragraphs [0020] and [0021]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a biodegradable anti-tack processing oil to the infill granules disclosed by Sin in order to provide improved lubrication, softness, and elasticity to the granules and also to improve biodegradability of the infill product, as shown to be known by Seifert. With regard to Claim 2, Seifert discloses that the inclusion of additional filler materials, such as chalk and sand, are well known to improve density. Paragraphs [0041] and [0133]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include filler in the granule disclosed by Sin in order to increase density of the granule, as shown to be known by Seifert. With regard to Claims 3 and 4, Seifert teaches that granules can further include a filler/binding agent, such as natural plant fibers, paragraph [0028], which qualify as a starch and can improve compression resilient properties of the granules. Paragraph [0029]. Additionally, Seifert teaches that the processing oil is homogenously dispersed in the granule. Paragraph [0019]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include a plant-based binding agent, such as natural fibers, into the granule disclosed by Sun, in order to improve compression resilience, or to include processing oils in order to aid in the manufacture of the extruded granules, as shown to be known by Seifert. With regard to Claim 5, Sin discloses that the granule can comprise 100 parts by weight of unvulcanized natural rubber and 100 parts by weight of activated carbon, with additional ingredients contributing up to 20 parts by weight of pigments, up to 40 pars by weight of processing oil, and up to 20 parts by weight of emulsifier. “In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists.” M.P.E.P. § 2144.05. With regard to Claim 6, Sin generally teaches particle diameter of 0.8 to 2 mm. Page 3. However, Seifert discloses that similar particle diameters, paragraph [0111], can be provided with a normal size distribution to increase the bulk density of the material. Paragraph [0112]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the infill disclosed by Sin with inclusions having a size between 10% and 90% of the average particle diameter in order to provide increased bulk density, as shown to be known by Seifert. With regard to Claims 9 and 10, the combination of Sin with Seifert does not disclose the properties of the granules at temperatures between -10 and 80 degrees C, nor does the combination disclose the Shore A hardness value. Nonetheless, it is reasonable to presume that the granules taught by the combination of reference would freely flow at the claimed temperature and have a Shore A hardness in the range of 20 to 90. Support for the presumption is found because the combination of Sin with Seifert teach granules for artificial turf infill that comprise the same materials, i.e., natural binder that has been physically altered by the inclusion of a filler material and an anti-tack agent, but not chemically modified, which are designed for use in similar applications, i.e., artificial turf. The burden is upon the Applicant to show otherwise. “[I]nherency may supply a missing claim limitation in an obviousness analysis where the limitation at issue is the natural result of the combination of prior art elements.” Persion Pharmaceuticals. V. Alvogen Malta Oper., 945 F.3d 1184, 1191 (Fed. Cir. 2019). With regard to Claim 12, Sin discloses that the artificial turf can be designed to look like grass. Page 2 and Examples 1 and 2. Seifert discloses that the infill material can be combined with a backing layer and artificial grass blades to provide the appearance of grass. Paragraph [0003] and Figure 6. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the infill disclosed by Sin with a backing layer and artificial upstanding grass blades in order to provide the appearance of grass, as shown to be known by Seifert. With regard to Claim 13, Seifert teaches that additional granules of natural material, such as sand, brick dust, and cork, can be combined with the granules to form the artificial turf. Paragraph [0133]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include natural particulate material in the infill disclosed by Sin in order to tailor the end use product in accordance with a natural surface, as shown to be known by Seifert.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sun in view of Seifert as applied to Claim 6 above, and further in view of U.S. Patent No. 5,041,320 to Meredith et al. (“Meredith”).
With regard to Claim 7, the combination of Sun with Seifert does not disclose using a natural rubber coating on the granules or the plurality of inclusions. Meredith is also related to artificial turf materials. See, e.g., Abstract, entire document. Meredith discloses that infill granules can be provided with a natural rubber coating to improve resilience. Column 3, lines 19-31. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a natural rubber coating to the surfaces of the granules disclosed by the combination of Sun with Seifert in order to improve resilience of the infill material, as shown to be known by Meredith.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 and 9-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-9, 11, and 13 of copending Application No. 18/258,566 (“the ‘566 Application”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘564 Application also recites an infill for artificial turf comprising biodegradable granules comprising a natural rubber, which is inclusive of natural binder, that is physically but not chemically modified by the addition of filler and an anti-tack agent. The dependent claims of the ‘566 Application recite limitations that overlap with the dependent claims of the present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: U.S. Patent Application Publication No. 2022/0042252 to Sick et al., U.S. Patent Application Publication No. 2019/0203425 to Sawyer et al., International Application Publication No. WO 2018/208150 to Noordegraaf, European Patent Application Publication No. 3,336,251 to Siekmann, U.S. Patent No. 6,458,300 to Meyer de Groot et al., and U.S. Patent No. 3,930,107 to Yaeda et al.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789