DETAILED ACTION
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments and claim amendments submitted on May 18, 2026 have been entered into the file. Currently claims 1, 4, and 9 are amended resulting in claims 1-15 pending for examination.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Van Der Werf (WO 2022/069483)1.
With respect to claims 1 and 12, Van Der Werf discloses a textile product comprising a first polyester sheet (substrate), polyester yarns stitched through the first sheet to form a pile on a first surface of the first sheer, and a polyester dispersion adhesive coated on the second surface of the first sheet (page 4, lines 14-26). Sulfopolyester (co-polyester adhesive) is particularly suitable for application as the polyester for the polyester particles in the dispersion (page 11, lines 30-32). The dispersion of polyester particles is thermoplastic (page 25, lines 17-31). Van Der Werf further provides examples where the laminating tuft bond varied from 33-40 N and the delamination strength varied from 43-63 (Table 6). The textile product uses only polyester materials for ease of recycling (page 4, lines 28-37).
The recitation “an artificial turf arranged for use as a sports field” in claim 1 has not been given patentable weight because it is a recitation of intended use that occurs in the preamble. A preamble is generally not accorded any patentable weight were it merely recites the purpose of a product or the intended use of a structure, and where the body of the claim does not depend upon the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02. In the instant case, the body of the claim is able to stand alone and does not require structure from the preamble for completeness. Additionally, Van Der Werf further discloses the dispersion of polyester particles can be used to make any type of textile product, and suggests methods which are used to form tufted synthetic turf (page 25, line 17 – page 26, line 3).
In the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the textile product of Van Der Werf as an artificial turf for a sports field because it includes all the structure of artificial turf and is made by the same method as is used to produce artificial turf, as described by Van Der Werf on page 25, line 17 – page 26, line 3.
The limitation "for completely recycling the artificial turf into polyester granules” is a use limitation and does not determine the patentability of the product, unless the use produces a structural feature of the product. The use of the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed use because Van Der Werf teaches the same structure of the claimed invention as described above and that the textile product uses only polyester materials for ease of recycling (page 4, lines 28-37). Since Van Der Werf teaches the same materials and structure as disclosed by the Applicant as well as that the textile product is recyclable, then it would be capable of performing in the manner claimed.
With respect to claim 2, Van Der Werf discloses all the limitations of claim 1 above. Van Der Werf further discloses the polyester adhesive particles are applied as a dispersion (page 4, lines 14-26).
With respect to claims 3-11, Van Der Werf discloses all the limitations of claim 1 above. As described above, Van Der Werf teaches a sulfopolyester (co-polyester adhesive) particularly suitable for application as the polyester for the polyester particles in the dispersion (page 11, lines 30-32). Therefore, in claim 1, the co-polyester was selected as the coating material from the list of polyether sulfone and co-polyester. Claims 3-11 further limit the polyether sulfone embodiment but does not require the selection of polyether sulfone from the list of coating materials in claim 1. Therefore, claims 3-11 do not further limit the selected made (co-polyester coating).
It is noted that Van Der Werf further discloses the aqueous polyester dispersion is heated to a temperature above the melting temperature of the thermoplastic particles (page 25, lines 26-31) and the lamination is performed at 140oC (page 28, lines 6-8). Van Der Werf also discloses that the sulfopolyester is formed from isophthalic acid, cyclohexane dimethanol, and diethylene glycol (page 17, lines 19-23).
Claim(s) 1-12 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Williams (US 2014/0272262)2.
With respect to claims 1-2 and 12, Williams discloses a substantially 100% polyester floorcovering article comprising a tufted polyester carpet comprising polyester yarns tufted through a polyester nonwoven backing (substrate) coated with a copolyester hot melt adhesive powder (paragraphs [0029], [0055], [0076]-[0078]). The floorcovering had a delamination resistance of greater than 8 lbs (35.6 N) and a tuft bind of greater than 8 lbs (35.6 N) (paragraph [0078]).
The recitation “an artificial turf arranged for use as a sports field” in claim 1 has not been given patentable weight because it is a recitation of intended use that occurs in the preamble. A preamble is generally not accorded any patentable weight were it merely recites the purpose of a product or the intended use of a structure, and where the body of the claim does not depend upon the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02. In the instant case, the body of the claim is able to stand alone and does not require structure from the preamble for completeness. Additionally, Williams further teaches the term floorcovering describes all substrates which comprises fibers and is utilized to cover surfaces on which people are prone to walk, including outdoor mats.
In the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the floorcovering article of Williams as an artificial turf for a sports field because it includes all the structure of artificial turf and is considered suitable for outdoor uses where people walk (paragraph [0028]).
The limitation "for completely recycling the artificial turf into polyester granules” is a use limitation and does not determine the patentability of the product, unless the use produces a structural feature of the product. The use of the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed use because Van Der Werf teaches the same structure of the claimed invention as described above and that the floorcovering article is substantially 100% polyester that is fully recyclable (paragraph [0029]). Since Williams teaches the same materials and structure as disclosed by the Applicant as well as that the floorcovering article is recyclable, then it would be capable of performing in the manner claimed.
With respect to claims 3-11, Williams discloses all the limitations of claim 1 above. As described above, Williams teaches a hot melt copolyester powder adhesive . Therefore, in claim 1, the co-polyester was selected as the coating material from the list of polyether sulfone and co-polyester. Claims 3-11 further limit the polyether sulfone embodiment but does not require the selection of polyether sulfone from the list of coating materials in claim 1. Therefore, claims 3-11 do not further limit the selected made (co-polyester coating).
It is noted that Williams further discloses the floorcovering may comprise a first layer of polyester hot melt adhesive having a certain viscosity and a second layer of polyester hot melt adhesive having a viscosity that is three to five times higher than the viscosity of the first layer of hot melt adhesive (paragraph [0014]). The copolyester hot melt adhesive in Example 1 has a viscosity of 100,000 cps (paragraph [0078]). Williams also discloses the application of adhesive above the softening temperature of the adhesive but below the heat set temperature of the primary backing will allow for improved adhesive penetration (paragraph [0039]).
With respect to claim 15, Williams discloses all the limitations of claim 1 above. Williams further discloses a process for recycling the floorcovering includes providing the floorcovering, breaking down the floorcovering into smaller pieces by shredding, and extruding into pellets (paragraph [0021]).
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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Der Werf (WO 2022/069483)3 as applied to claim 1 above, and further in view of Williams (US 2014/0272262)1.
With respect to claim 15, Van Der Werf discloses all the limitations of claim 1 above.
Van Der Werf discloses the textile product is recyclable (page 1, lines 12-13), but is silent as to a process for recycling the textile product.
Williams discloses a substantially 100% polyester floorcovering article comprising a tufted polyester carpet comprising polyester yarns tufted through a polyester nonwoven backing coated with a copolyester hot melt adhesive powder (paragraphs [0029], [0055], [0076]-[0078]). The floorcovering had a delamination resistance of greater than 8 lbs (35.6 N) and a tuft bind of greater than 8 lbs (35.6 N) (paragraph [0078]). Williams further discloses a process for recycling the floorcovering includes providing the floorcovering, breaking down the floorcovering into smaller pieces by shredding, and extruding into pellets (paragraph [0021]).
Since both Van Der Werf and Williams teach recyclable 100% polyester floorcoverings it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have recycled the recyclable textile product of Van Der Werf by the method disclosed by Williams because it is known in the art as a suitable method for recycling 100% polyester floorcoverings and would provide the predictable result of the polyester floorcovering being processed into polyester pellets.
Allowable Subject Matter
Claim 13 is 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.
REASONS FOR ALLOWANCE
Claim 14 is allowed for the reasons presented in the non-final office action mailed on December 17, 2025.
Response to Arguments
Response – Drawings
The objections to the drawings have been overcome by Applicant’s amendments to the drawings in the response received on May 18, 2026.
Response – Claim Rejections 35 USC §112
The rejections of claims 1-13 and 15 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 pre-AIA the applicant regards as the invention, are overcome by Applicants amendments to the claims in the response filed May 18, 2026.
Response – Claim Rejections 35 USC §102/103
Applicant’s arguments in the response filed May 18, 2026 have been fully considered and are not persuasive.
On pages 10 and 14 of the response Applicant submits that Van Der Werf is not prior art under 102(a)(2) as the effective filing date of the present application is August 3, 2021 and Van Der Werf has a PCT filing date of September 28, 2021.
These arguments are not persuasive. According to MPEP 2154.01(a), the WIPO publication of a PCT international application that designates the United States is an application for patent deemed published under 35 U.S.C. 122(b) for purposes of AIA 35 U.S.C. 102(a)(2) under 35 U.S.C. 374. Thus, under the AIA , WIPO publications of PCT applications that designate the United States are treated as U.S. patent applications publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States. Accordingly, a U.S. patent, a U.S. patent application publication, or a WIPO published application that names anther inventor and was effectively filed before the effective filing date of the claimed invention is prior art under AIA 35 U.S.C. 102(a)(2).
In the instant case, Van Der Werf designates the US and therefore is treated as a U.S. patent application publication for prior art purposes.
According to MPEP 2154.01, the WIPO published application may be applicable as prior art under AIA 35 U.S.C. 102(a)(2) if it was “effectively filed” before the effective filing date of the claimed invention in question. According to MPEP 2153.01 if the application properly claims foreign priority under 35 U.S.C. 119(a)-(d), 365(a) or (b), or 386(a) or (b), the effective filing date of a claimed invention is the filing date of the foreign priority document if the claim is adequately supported in the foreign priority document.
In the instant case Van Der Werf has a priority date of October 1, 2020 which is earlier than the effective filing date of the claimed invention of August 3, 2021. Therefore Van Der Werf is eligible as prior art under 102(a)(2).
On page 11, 14, and 16-17 of the response Applicant submits that Van Der Werf does not disclose the polyether sulfone adhesive or the thermoplastic copolyester adhesive required by claim 1.
The Examiner respectfully disagrees. As described in the rejection above, sulfopolyester (co-polyester adhesive) is particularly suitable for application as the polyester for the polyester particles in the dispersion (Van Der Werf; page 11, lines 30-32). Van Der Werf explicitly states that copolyesters are included in the definition of polyester (Van Der Werf; page 7, line 16-page 8, line 1). Claim 1 requires a polyether sulfone or a thermoplastic co-polyester adhesive, therefore Van Der Werf teaching a co-polyester reads on the claim.
On pages 11-12 and 14-15 of the response Applicant submits that the preamble is limiting because it provides an antecedent basis for the “tuft withdrawal force of the first artificial turf fibers of at least 30 Newtons” and sets forth specific structural and functional requirements as well as various properties.
These arguments are not persuasive. The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use “can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim “as drafted without importing” ‘extraneous’ limitations form the specification. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference between the claimed invention and the prior art. To satisfy an intended use limitation which is limiting, a prior art structure that is capable of performing the intended use as recited in the preamble meets the claim. See MPEP 2111.02(II). (emphasis added).
In the instant case, the preamble does not appear to impart structure not already recited by the body of the claim. Applicant’s assertion that the preamble requires a specific tuft withdrawal force as well as unspecified functional requirements and properties does not describe the structure which the preamble provides that is not already recited by the body of the claim. It is also noted that as described in the rejection above, Van Der Werf provides examples where the laminating tuft bond varied from 33-40 N and the delamination strength varied from 43-63 (Van Der Werf’ Table 6). Therefore Van Der Werf teaches the tuft withdrawal force alleged by Applicant as required by the preamble. Applicant further states that the specification sets forth specific structural requirements required to be artificial turf arranged for use as a sports field, but fails to identify the specific structure required by the preamble but not taught by Van Der Werf. Van Der Werf teaches all the structural limitations of the claims and suggests methods which are used to form tufted synthetic turf (Van Der Werf; page 25, line 17 – page 26, line 3), therefore the structure of Van Der Werf is capable of performing the intended use as recited in the preamble of the claim.
On pages 13, 15, and 16-17 of the response Applicant submits that Williams explicitly states that its article is comprised of 100% polyester material for recyclability, and therefore does not disclose a polyether sulfone adhesive as required by claim 1.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., use of a polyether sulfone adhesive) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim 1 states that the coating is a polyether sulfone adhesive or a thermoplastic co-polyester adhesive (emphasis added). A polyether sulfone adhesive is not required if a thermoplastic co-polyester adhesive is used. As described in the rejection and as acknowledged by Applicant, Williams teaches the use of a copolyester hot melt adhesive powder in paragraph [0078]). Therefore, Williams meets the requirements of claim 1.
On pages 13 and 15-16 of the response Applicant submits that Williams does not teach the specific requirements for sports fields as required by the preamble.
As discussed with respect to Van Der Werf above, the preamble does not appear to impart any structure to the claim not already recited by the claim body. Since Williams teaches all the recited structure as well as a specific use for flooring materials such as outdoor mats, Williams is capable of performing the intended use as recited in the preamble of the claim.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Previously presented
2 Previously presented
3 Previously presented
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