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 on 8/21/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 24, 26-38 and 46 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 24, as amended, recites "wherein the granule is free of plasticizers." The original disclosure does not use the term "plasticizer" (or "plasticiser") at all and does not describe excluding plasticizers from the granule. "Any negative limitation or exclusionary proviso must have basis in the original disclosure.... The mere absence of a positive recitation is not basis for an exclusion." MPEP 2173.05(i); Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff'd mem., 738 F.2d 453 (Fed. Cir. 1984). Silence in the specification regarding an element is generally not sufficient written description support for a limitation excluding that element unless the skilled artisan would understand the element to be necessarily excluded. Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1016-17 (Fed. Cir. 2022); see also Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1356-57 (Fed. Cir. 2015).
Applicant relies on the following passages (8/21/2026 response, pages 8-11), none of which reasonably conveys possession of the claimed subgenus:
(a) Paragraph [0039] ("Regardless of whether the granule(s) is formed of only PBAT and pigment/pigment masterbatch, or if other constituents are added, such as other thermoplastic polymers, fillers or the like...") describes, at most, a two-component species consisting of PBAT and a pigment/pigment masterbatch. Claim 24 is not limited to that species. It uses the open transitional term "comprising" and therefore encompasses granules containing any additional component (fillers, other polymers, and any other additive) except plasticizers. The disclosure of a closed two-component species does not describe the much broader, newly claimed genus of open compositions from which only one undisclosed class of additives has been carved out. Further, the masterbatch of the disclosed species is itself described only generically as pigments "encapsulated in a carrier, such as a resin made of polymer, wax or the like" ([0015]); its composition is not limited.
(b) The passage "The material comprises at least 60 wt% polybutylene adipate terephthalate (PBAT) and a pigment or pigment masterbatch" ([0071]) uses the open term "comprises" and is not a "closed composition" as Applicant contends. The specification expressly states that "[t]he word 'comprising' does not exclude the presence of other elements or steps than those listed in the claim" ([0093]).
(c) The statement that "[t]he granules may comprise PBAT as the only polymeric constituent" ([0034], [0074]) addresses only polymeric constituents and says nothing about non-polymeric additives such as plasticizers.
(d) The lists of optional ingredients ([0035]-[0038], [0074]-[0075]) are not exhaustive. They are introduced by open language ("may further comprise," "at least one of," "such as") and, in any event, the specification states that "comprising" does not exclude other elements ([0093]). Exclusion by proviso of a disclosed genus or species may be permissible (In re Johnson, 558 F.2d 1008 (CCPA 1977)), but plasticizers were never disclosed, so there is no described genus from which they could be excluded.
Moreover, rather than conveying a plasticizer-free granule, the original disclosure affirmatively contemplates including components that the art recognizes as plasticizers. The specification lists polycaprolactone (PCL), starch and thermoplastic starch (TPS) as optional constituents of the granule ([0035], [0074]). PCL is a recognized plasticizer (see Toikka, WO 2013/181705, describing that "[e]xamples of suitable plasticisers include ... poly(caprolactone)" (page 20, lines 26-27); starches are recognized plasticizers (see Nedi, US 2024/0301632, [0022], [0064], listing "starches" among plasticizers); and TPS is, by definition, starch that has been melt-mixed with a plasticizer such as glycerol (see US 2011/0086950 to Changping, [0006]). Finally, the only tested granules are described as "comprising more than 90 wt% of PBAT ... in combination with a dark green pigment" ([0080]); the specification does not identify the balance of that composition or state that it was free of plasticizers.
Accordingly, the limitation "wherein the granule is free of plasticizers" constitutes new matter. Claims 26-38 and 46 are rejected for depending from claim 24 and incorporating the new matter.
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 24, 26-38 and 46 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 24 recites "wherein the granule is free of plasticizers." "Plasticizer" is a functional term that identifies a substance by what it does in a particular polymer (e.g., lowering the glass transition temperature and increasing flexibility), rather than by structure. Whether a given substance is a "plasticizer" therefore depends on the host polymer and the amount used. The specification provides no definition of the term and no guidance for determining which components are excluded. The ambiguity is compounded because the claims and specification expressly permit components that the art recognizes as plasticizers or that necessarily contain plasticizers: PCL (a recognized plasticiser, see Toikka page 20, lines 26-27), starch (listed among plasticizers in Nedi, [0022], [0064]) and TPS (starch melt-mixed with a plasticizer, see for example US 2011/0086950 to Changping, [0006]) are all recited in dependent claim 34 and described in the specification ([0035], [0074]). A person of ordinary skill in the art therefore cannot determine with reasonable certainty whether, for example, a granule containing PCL, starch, TPS or a wax-based pigment masterbatch carrier ([0015]) is or is not "free of plasticizers." See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); MPEP 2173.05(g). Claims 26-38 and 46 are rejected for depending from claim 24 and failing to cure the deficiency.
Regarding claim 34, the claim requires the granule of claim 24 (which is "free of plasticizers") to further comprise a compostable polymer selected from a group that includes PCL, TPS and starch. As explained above, those materials are recognized as plasticizers (PCL, starch) or necessarily contain a plasticizer (TPS). The claim is internally inconsistent with claim 24, rendering its scope unclear.
Regarding claims 34 and 35, each recites "a compostable [biobased] polymer other than PBAT comprising at least one selected from the group consisting of: ...." Because the polymer is said to be "comprising" a member of the group, it is unclear whether the polymer must be one of the recited polymers, or whether any polymer that merely contains (e.g., as a copolymer segment or blend component) one of the recited polymers is encompassed.
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.
Claims 24, 26-38 and 46 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0224374 to Harmeling in view of US 2011/0081506 to Lee.
Regarding claim 24, Harmeling discloses granules for use as infill in an artificial turf system, the infill layer being disposed on a substrate and interspersed between pile fibers ([0001], [0006], [0023]). The material for the granules may be selected from a group of thermoplastics that expressly includes "polybutylene adipate co-terephthalate (PBAT)" ([0017]). The granules "have a substantially homogeneous density, in the sense that they are solid and not hollow" ([0017]); inclusion of gas bubbles by foaming is merely optional ([0017]-[0018]: granules "may include" gas bubbles; foamed granules "may be used"). The granules "may be homogenous in structure" and the thermoplastic "may be combined with a filler such as chalk" ([0019]). Harmeling does not disclose including any plasticizer in the granules. A granule made of PBAT, optionally with filler, therefore comprises at least 70 wt% PBAT based on the total weight of the granule and is free of plasticizers.
Harmeling does not expressly disclose (i) selecting PBAT, rather than another of the listed thermoplastics, as the granule material, or (ii) including a pigment or pigment masterbatch in the granule.
As to (i), Harmeling expressly identifies PBAT as a suitable granule material ([0017]). Selecting a known material on the basis of its suitability for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945); MPEP 2144.07. That Harmeling discloses several alternatives, and identifies others as "particularly promising," does not render the selection of PBAT any less obvious; disclosed but non-preferred embodiments remain prior art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); MPEP 2123.
As to (ii), Lee, also directed to artificial turf infill, discloses resin infill pellets that "may contain additives typically used in the art, for instance an antioxidant, a light stabilizer, a heat stabilizer, and a colorant," the resin and additives being mixed and extruded (e.g., in a single or twin screw extruder) ([0033]) and formed into pellets having, e.g., a rod shape with a circular cross section ([0034]). Lee further teaches using a green pigment in the turf pile elements to give a feel similar to natural turf ([0022]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a colorant (i.e., a pigment) in the PBAT granules of Harmeling, compounded with the resin as taught by Lee, to provide the infill with a desired color and appearance. This is the use of a known additive, in the manner taught by the prior art, for its known purpose, yielding predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-17 (2007). Because Lee's colorant is mixed and extruded with the resin, it is distributed throughout the granule, so the granule is "in its entirety made of a homogeneous material," consistent with Harmeling's homogeneous granules ([0019]).
The resulting granule is solid and non-foamed, made in its entirety of a homogeneous material, comprises at least 70 wt% PBAT based on the total weight of the granule together with a pigment, and is free of plasticizers. It is capable of use as an infill for an artificial turf system, and in fact is taught for that use.
Regarding claims 26 and 46, Harmeling's granules are made of the selected thermoplastic, filler being optional ([0017], [0019]), and Lee's colorant is one of the minor "additives" ([0033]). A granule of PBAT with no filler and a conventional colorant amount comprises at least 80 wt% and at least 90 wt% PBAT. In any event, the amount of colorant and optional filler are result-effective variables (color intensity; cost, density and hardness, Harmeling [0019], [0022]), and optimizing them would have been routine. In re Aller, 220 F.2d 454, 456 (CCPA 1955); MPEP 2144.05(II).
Regarding claim 27, PBAT is necessarily fossil-based, partly bio-based, or fully bio-based. Selecting conventional fossil-based or partly bio-based PBAT from this small number of known, predictable options would have been obvious. KSR, 550 U.S. at 421. The specification itself acknowledges that PBAT is "a per se well known thermoplastic polymer" ([0017]).
Regarding claim 28, Harmeling discloses granules having a mean size of between 1 mm and 5 mm ([0020]), which may be cylindrical with a length to diameter ratio of between 0.6 and 2 ([0016]), i.e., a diameter of about 1-5 mm and a length of about 0.6-10 mm. These ranges overlap the claimed diameter (1-5 mm) and length (1.5-10 mm) ranges, establishing a prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); MPEP 2144.05(I).
Regarding claim 29, Harmeling teaches a granule material having a surface hardness of greater than Shore D 40 ([0022]). The prior art range overlaps the claimed range of Shore D 25-44 (i.e., at greater than 40 up to 44), establishing a prima facie case of obviousness. Peterson, 315 F.3d at 1329; In re Wertheim, 541 F.2d 257 (CCPA 1976).
Regarding claim 30, Lee teaches a green pigment in turf components (the pile elements) to give a feel similar to natural turf ([0022]). It would have been obvious to color the infill granules green as well, for the same reason of matching the appearance of natural turf. Selecting a particular shade, such as dark green, is a matter of aesthetic design choice that does not patentably distinguish the claimed product. In re Seid, 161 F.2d 229 (CCPA 1947); MPEP 2144.04(I).
Regarding claims 31-33, the granule rendered obvious by Harmeling and Lee is substantially identical in composition and structure to the granule disclosed by Applicant as having the claimed properties: a solid, homogeneous granule of more than 90 wt% PBAT with a pigment ([0080]-[0086] of the instant specification). Where the claimed and prior art products are identical or substantially identical, a prima facie case of either anticipation or obviousness has been established, and the burden shifts to Applicant to show that the prior art product does not necessarily possess the claimed properties. In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990); MPEP 2112.01(I). Alternatively, Harmeling teaches tailoring the mechanical properties of the granule (hardness, crush strength; [0019], [0022]), and selecting a granule with the claimed flexural properties would have been an obvious matter of routine optimization. MPEP 2144.05(II).
Regarding claim 34, Harmeling teaches that the granule material may be selected from the listed thermoplastics and "derivatives and combinations of the above" ([0017]), the list including PEF, PHA, PLA, PBS, PCL and TPS in addition to PBAT. It would have been obvious to combine PBAT with, e.g., PLA or PBS in the granule, since each is taught by Harmeling as suitable for the same purpose. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980); MPEP 2144.06(I). Harmeling recognizes that granule composition is adjusted to tune characteristics such as hardness and density ([0019], [0022]). Selecting a minor amount of the second polymer (1-30 wt%), so as to retain the PBAT-based character of the granule while adjusting its properties, would have been routine optimization. Aller, 220 F.2d at 456; MPEP 2144.05(II).
Regarding claim 35, the same rationale applies, Harmeling's list including the biobased polymers PLA and PHA ([0017]).
Regarding claim 36, Harmeling teaches combining the thermoplastic material with a filler such as chalk ([0019]).
Regarding claims 37 and 38, Harmeling teaches cylindrical granules ([0016]), and Lee teaches rod-shaped infill pellets having a circular cross section ([0034]). It would have been obvious to provide Harmeling's cylindrical granules with a circular cross section, the conventional cross section of an extruded and cut strand, as taught by Lee.
Response to Arguments
Applicant's arguments filed 8/21/2026 have been fully considered. They are addressed as follows.
35 U.S.C. 112(b). Applicant's amendments overcome the grounds of indefiniteness set forth in the prior Office action, and those rejections have been withdrawn. New grounds of rejection under 35 U.S.C. 112(b), necessitated by the amendment, are set forth above.
Support for the amendments. Applicant's arguments regarding written description support for "solid," "non-foamed," "in its entirety made of a homogeneous material," "at least 70 wt%" and "at least 80 wt%" have been considered and are persuasive for purposes of this action (see [0016], [0039]-[0040], [0071]-[0072], [0076], [0087]). Applicant's arguments regarding support for "free of plasticizers" are not persuasive for the reasons given in the 35 U.S.C. 112(a) rejection above.
Toikka and Nedi. Applicant's arguments directed to the rejections over Toikka and over Nedi in view of Assemat and/or Harmeling are moot. Those rejections have been withdrawn, and the new grounds of rejection necessitated by the amendment do not rely on Toikka, Nedi or Assemat for any teaching. Toikka and Nedi are cited above only as evidence of the meaning of "plasticizer" in the art.
Plasticizer. Applicant argues that Harmeling "says nothing about eliminating a plasticizer" (Remarks, pages 16-17). This argument is not persuasive. Harmeling's granules are made of the selected thermoplastic, optionally with a filler ([0017], [0019]), and Harmeling never adds a plasticizer. There is nothing to eliminate; the granule of Harmeling as modified by Lee is free of plasticizers as claimed.
Hardness / teaching away (claim 29). Applicant argues that Harmeling teaches relatively hard granules (greater than Shore D 40) for a purpose opposite to the "preferably Shore D 34-40" granules of the application, and therefore teaches away (Remarks, page 17). This argument is not persuasive. First, claim 29 recites a Shore D hardness of 25-44, not 34-40. Limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Second, Harmeling's minimum of Shore D 40 overlaps the claimed range. A reference teaches away only when it criticizes, discredits or otherwise discourages the claimed solution. Fulton, 391 F.3d at 1201. Harmeling does not discourage the overlapping portion of the claimed range; it expressly encompasses it. Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738-39 (Fed. Cir. 2013). Third, Harmeling expressly lists PBAT as a suitable granule material ([0017]), and a prior art reference is presumed operable for what it discloses. In re Antor Media Corp., 689 F.3d 1282, 1287-88 (Fed. Cir. 2012); MPEP 2121.
Unexpected results. Applicant argues that the data of the application show a "sweet spot": increasing the PBAT concentration in a solid, homogeneous granule achieves FIFA Quality Pro performance and Shore D 34-40 softness without plasticizers (Remarks, pages 17-18). This argument is not persuasive, for the following reasons.
(a) The argument is attorney argument, which cannot take the place of evidence. In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997); MPEP 716.01(c).
(b) The data do not compare the claimed invention with the closest prior art, Harmeling. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); MPEP 716.02(e).
(c) The results are not commensurate in scope with the claims. The only tested composition is a cylindrical granule (mean diameter of about 2.5 mm) of more than 90 wt% PBAT with a dark green pigment ([0080]). The claims encompass at least 70 wt% PBAT, any pigment, and up to 30 wt% of other polymers or fillers. In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); MPEP 716.02(d).
(d) There is no evidence of criticality. No data are presented at different PBAT contents, or with versus without a plasticizer, and the specification itself describes granules of at least 60 wt% PBAT as suitable ([0012], [0071]). See MPEP 2144.05(III). Nor does the specification state that the tested granules were free of plasticizers.
(e) The asserted results are not shown to be unexpected. The low hardness and flexibility of the granule are properties of PBAT itself, which the specification acknowledges is a "per se well known thermoplastic polymer ... known to be a highly flexible and tough co-polyester" ([0017]). Compliance with FIFA performance criteria was also achieved by the prior art thermoplastic granule infill of Harmeling ([0034], FIFA Quality Pro at 5 and 3005 cycles). See MPEP 716.02(a)-(c).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
