DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 17-36 are pending as presented on 12/12/2025.
Election/Restrictions
Applicant's election with traverse of species “a” wherein the base polymer is a mixture LDPE and LLDPE as in instant example 1 in the reply filed on 12/12/2025 is acknowledged. The traversal is on the ground(s) that there is no search burden to examine all claims. This is not found persuasive because a search burden exists, as established in paragraph 5 of the requirement mailed 10/14/2025.
The requirement is still deemed proper and is therefore made FINAL.
Claims 27, 29, 33, 35 and 36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected species, there being no allowable generic or linking claim.
Claim Objections
Claim 22 is objected to because of the following informalities: lines 4-5 of claim 22 contain awkward wording/grammar. Appropriate correction is required.
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 21, 25 and 32 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 21 recites that the agent stays dispersed for “at least one year,” and also recites preferred embodiments of at least 2, 5 and 10 years. 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 MPEP § 2173.05(c). Claim 21 is considered indefinite because there is a question or doubt as to whether the feature introduced by the narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Claim 25 depends from claim 17, and recites “the grafted polyolefin grafted with the one or more siloxanes.” However, there is no previous recitation in either claim 25 or claim 17 of “a grafted polyolefin” or of “one or more siloxanes.” The lack of antecedent basis for the recitation in claim 25 renders the scope of the claim unclear. The examiner suggests amending claim 25 to recite the broader grafted polymer recited in claim 17, or, to change the dependency of claim 25 to a different claim (such as to claim 26).
Claim 32 recites a soccer field playing surface comprising artificial turf which “is compliant with the FIFA standard for reducing ankle injuries of soccer players playing soccer in wet or dry condition of the artificial turf.” However, Applicant has not described any specific FIFA standard test or specific performance criteria which must be met in order to be considered “compliant,” and one having ordinary skill in the art would not know what is meant by “the FIFA standard for reducing ankle injuries of soccer players playing soccer in wet or dry condition.” Therefore, the scope of claim 32 is unclear.
Claim Rejections - 35 USC § 102
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.
Claim(s) 17, 19, 20-23 and 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka (JP H11313751; machine translation cited herein), as evidenced by Horio et al (JP 2004002816A; machine translation cited herein).
(Note: this is a rejection of broader generic claims, and not specific to the elected species wherein the base polymer is LDPE and LLDPE.)
As to claims 17, 19, 20, 22 and 23, Tanaka discloses an artificial turf with good drainage properties [0004] comprising a substrate and a large number of protrusions extending upward from the substrate [0006]. See also figures 2-5, wherein the protrusions are “1.” The protrusions disclosed by Tanaka correspond to an artificial turf fiber as presently recited.
Tanaka teaches that the resin composition constituting the protruding body has a mixture of thermoplastic resin and silicone graft polymer. Tanaka names several examples of the thermoplastic resin, including polyethylene, and teaches olefin resin is preferable from the viewpoint of water repellency, moldability and economic efficiency [0006]. The thermoplastic resin corresponds to the “base polymer” as presently recited. Tanaka teaches that the silicone graft polymer is obtained by graft polymerizing polydimethylsiloxane to a polymer having thermoplasticity, and names polyethylene as an example of the main chain of the silicone graft polymer [0008].
Tanaka exemplifies an artificial turf formed from a resin composition comprising polyethylene (LLDPE) as the thermoplastic resin (corresponding to a “base polymer” as presently recited) and SP-350 as the silicone graft polymer resin [0037]. SP-350 is silicone-grafted polyethylene as evidenced by Horio [0068; C-1], and therefore, Tanaka’s exemplified artificial turf fibers contain a base polymer and silicone graft polymer resin meeting the base polymer and traction control agent recited in instant claims 17, 19, 20, 22 and 23. (Tanaka recognizes that increasing the content of silicone graft polymer in the thermoplastic resin decreases slip resistance (p 3, top), and therefore, Tanaka recognizes that the silicone graft polymer is an additive (agent) which controls traction.)
Tanaka fails to specifically teach that the turf fiber is “for a soccer or rugby artificial turf” as recited in the preamble of claim 17. However, Tanaka teaches that the fiber has a textured portion with a grain depth selected to avoid being worn away in a short period of time due to friction caused by shoe soles (p 5, middle). For at least this reason, and further given that Tanaka discloses an artificial turf fiber which is the same as the presently recited fiber, there is reasonable basis to conclude that the fiber taught by Tanaka is capable of being used for a soccer or rugby turf. [It is noted that if the body of a claim fully and intrinsically sets forth all 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. Furthermore, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. (See MPEP 2111.02 regarding the effect of the preamble).]
As to claim 21, Tanaka fails to measure the duration of homogenous dispersion of the silicone graft polymer in the base polymer. However, Tanaka teaches that compared to silicone oil, since the silicone is graft polymerized, the molecular weight is large and there is little loss of silicone due to bleeding on the surface, and no decrease in physical properties because of the compatibility with the main material (p 3, last paragraph). Considering Tanaka’s disclosure that there is little loss of bleeding and that the silicone graft polymer is compatible with the main material, and further given that the instant claim does not limit the conditions (temperature, humidity/moisture, use) to which the fiber is subjected during the recited one year duration, there is reasonable basis to conclude that, under some set of conditions, the silicone graft polymer in the fiber taught by Tanaka is capable of remaining homogeneously dispersed for at least one year.
As to claim 28, Tanaka further teaches that the SP-350 is added as a pellet [0037], and therefore there is reasonable basis to conclude that the amount of grafted siloxane is such that the siloxanes are solid at room temperature, as recited in claim 28.
Claim(s) 17-26, 28 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sick et al (US 2019/0100857; referred to herein as “Sick-3” for consistency with related applications) in view of Knebelkamp et al (EP 1211277; included machine translation cited herein) and Tanaka (JP H11313751; included machine translation cited herein).
As to claims 17, 19, 20, 22-24 and 34, Sick-3 discloses an artificial turf and artificial turf fiber (title, abstract) for soccer or rugby [0002] formed by creating a polymer mixture of 60-99 wt% LLDPE and 1-15 wt% LDPE, and extruding the mixture into a monofilament [0009-15, 0131]. The polymer mixture of LLDPE and LDPE in the fiber of Sick-3 corresponds to the base polymer as recited in claims 17, 23 and 24, wherein the base polymer is at least 50 wt% polyolefin (as recited in claims 19 and 22). The range of LLDPE disclosed by Sick (60-99 wt%) overlaps the presently claimed range of 10-70 wt% LLDPE recited in claim 34. Sick-3 teaches that LLDPE has a higher tensile strength than LDPE, and that a polymer fiber solely consisting of LLDPE would be susceptible to splicing. Addition of LDPE results in fibers with high split resistance and high tensile strength, and which are soft and flexible [0022-23, 0110]. It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any content of LLDPE within the range disclosed by Sick-3, including a content within the presently claimed range, in order to achieve a desired balance of split resistance and tensile strength. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
Sick-3 teaches that the polymer mixture may further comprise additives [0041]. However, Sick-3 fails to teach including a polyolefin grafted with siloxane as an additive in the polymer mixture.
Knebelkamp discloses that stresses on the surface of plastics means increased wear on the manufactured molded parts, but that such influences can be counteracted by additives [0002-3]. Knebelkamp teaches that polydimethylsiloxanes have favorable surface properties and are used in a number of applications to take advantage of low cohesive energies, high flexibility and low surface tension [0006]. They also migrate to the surface due to incompatibility with the base polymer, which promotes surface durability, but a permanent chemical bond of siloxane to polymer matrix is not guaranteed due to the nature of the blend [0010].
To solve this problem, Knebelkamp discloses a siloxane-modified polyolefin [0013] wherein organopolysiloxanes are linked to a polyolefin backbone via ester bonds [0015]. Knebelkamp names polyethylenes as suitable for forming the siloxane-modified polyolefin [0029]. The compounds are introduced into molten polymer (polyethylene exemplified [0040]) and preferentially migrate to the surface to develop their properties there, but there is no delamination or separation [0017]. The additives are used to improve scratch resistance, weather resistance and hydrophobization [0019], [0026]. Knebelkamp teaches that concentrations at which the advantages of the modified polyolefins become apparent are in the range of 0.1 to 10% [0026]. Knebelkamp further shows that the addition of the siloxane-modified polyolefin to polypropylene reduces the power consumption in the extruder, lowers pressure buildup, and improves melt flow behavior [0042].
Tanaka similarly discloses an artificial turf with good drainage properties [0004] comprising a substrate and a large number of protrusions extending upward from the substrate [0006]. Tanaka teaches that the resin composition constituting the protruding body has a mixture of thermoplastic resin and silicone graft polymer. Tanaka names several examples of the thermoplastic resin, including polyethylene [0006]. Tanaka teaches that the silicone graft polymer is obtained by graft polymerizing polydimethylsiloxane to a polymer having thermoplasticity, and names polyethylene as an example of the main chain of the silicone graft polymer [0008].
Tanaka teaches that if the silicone content in the mixture is too low, the water-repellent effect is small, but if too high, slip resistance is small and target strength is significantly reduced (p 3, top). Tanaka further teaches that since the silicone is graft polymerized, the molecular weight is large and there is little loss of silicone due to bleeding on the surface, and no decrease in physical properties because of the compatibility with the main material (p 3, last paragraph). Tanaka also discloses that silicone acts as a lubricant, such that releasability during molding is improved (p 4, top).
Considering the disclosures of Knebelkamp and Tanaka, when preparing a molded article (including artificial turf fibers) from thermoplastic polymers such as polyethylene, the person having ordinary skill in the art would have been motivated to include a polyolefin (such as polyethylene) grafted with siloxane as an additive in order to improve scratch/weather resistance, and, to achieve a desired degree of hydrophobicity and slip resistance without risk of delamination. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed an artificial turf fiber comprising a polyethylene (LLDPE/LDPE) mixture and additive, as taught by Sick-3, by including a siloxane-modified polyethylene as the additive (as taught by either Knebelkamp or Tanaka), thereby arriving at a fiber as presently recited comprising a base polymer mixture of polyethylenes (LLDPE/LDPE) and a grafted polymer comprising a slip agent (siloxane) grafted on a backbone of the same type of polymer as the base polymer (i.e., polyethylene).
The cited prior art fails to characterize the siloxane-modified polyethylene as a “traction control agent” as presently recited. However, considering Knebelkamp’s disclosure that the siloxane-modified polyolefin migrates to the surface to develop properties there [0017], and further considering Takana’s disclosure that increasing the content of silicone graft polymer in the thermoplastic resin decreases slip resistance (p 3, top), there is reasonable basis to conclude that a siloxane-modified polyethylene in an artificial turf fiber, as suggested by modified Sick-3, functions as a traction control agent as presently recited.
As to claims 18 and 25, modified Sick-3 suggests a fiber according to claim 17, as set forth above. Knebelkamp teaches that concentrations at which the advantages of the modified polyolefins become apparent are in the range of 0.1 to 10% [0026], which overlaps the range of 0.01 to 0.25 wt% recited in instant claim 25. As discussed, Knebelkamp discloses that the additives are used to improve scratch resistance, weather resistance and hydrophobization [0019], [0026]. Knebelkamp further shows that the addition of the siloxane-modified polyolefin to polypropylene reduces the power consumption in the extruder, lowers pressure buildup, and improves melt flow behavior [0042]. Tanaka also recognizes silicone content as a result effective variable: Tanaka teaches that if the silicone content in the mixture is too low, the water-repellent effect is small, but if too high, slip resistance is small and target strength is significantly reduced (p 3, top).
When forming a molded article by extruding a polyolefin, the person having ordinary skill in the art would have been motivated to utilize any appropriate concentration of modified polyolefin within Knebelkamp’s disclosed range in order to achieve a desired degree of modification of any one or more of the properties taught by Knebelkamp and/or Tanaka to be affected by including a modified polyolefin. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed an artificial turf fiber comprising polyethylene and a siloxane-modified polyethylene, as suggested by modified Sick-3, by selecting any appropriate concentration of siloxane-modified polyethylene within Knebelkamp’s disclosed range of 0.1 to 10% in order to obtain the desired change in properties affected by the modified polyolefin, including a concentration which falls within the presently claimed range of 0.01 to 0.25 wt% of the fiber (as recited in claim 25) and/or including a concentration which results in a reduction in friction coefficient within the presently claimed range of 5-50% (as recited in claim 18).
As to claim 21, modified Sick-3 suggests a fiber according to claim 17, as set forth above. The cited prior art fails to measure the duration of homogenous dispersion of a silicone graft polymer in the base polymer. However, Tanaka teaches that compared to silicone oil, since the silicone is graft polymerized, the molecular weight is large and there is little loss of silicone due to bleeding on the surface, and no decrease in physical properties because of the compatibility with the main material (p 3, last paragraph). Knebelkamp similarly teaches that the graft polymers migrate to the surface to develop their properties there, but there is no delamination or separation [0017]. Considering Tanaka’s and Knebelkamp’s disclosure that there is little loss due to bleeding and that there is no delamination/separation, and further given that the instant claim does not limit the conditions (temperature, humidity/moisture, use) to which the fiber is subjected during the recited one year duration, there is reasonable basis to conclude that, under some set of conditions, the silicone graft polymer in the fiber of modified Sick-3 is capable of remaining homogeneously dispersed for at least one year.
As to claim 26, modified Sick-3 suggests a turf fiber according to claim 17, as set forth above. Knebelkamp teaches a siloxane-modified polyolefin comprising (i) olefin units (D), wherein the molecular weight of (i) is 10,000 to 500,000 (see claim 1 on p 13 of the original document), which falls within the presently claimed range of larger than 2000-1,000,000 Dalton.
As to claim 28, modified Sick-3 suggests a turf fiber according to claim 17, as set forth above. Knebelkamp exemplifies polyolefin-grafted with siloxane products that are prepared by reacting a molten mixture at 180 C, and which are solid after cooling [0034-7]. Therefore, the amount of grafted siloxanes must be such that the siloxanes are solid at room temperature, as recited in claim 28. Tanaka further exemplifies adding graft polymer (SP-350) as a pellet [0037], which means that the amount of grafted siloxane must be such that the siloxanes are solid at room temperature, as recited in claim 28. It would have been obvious to the person having ordinary skill in the art to have utilized a solid grafted additive, as taught by both Knebelkamp and Tanaka, for at least the reason of convenience for adding the polymeric components to an extruder during the process of preparing the turf fiber.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harmeling (US 2011/0117297) in view of Tanaka (JP H11313751; included machine translation cited herein), and further in view of Van Voorst et al (US 2019/0323179).
(Note: this is a rejection of broader generic claims, and not specific to the elected species wherein the base polymer is LDPE and LLDPE.)
Harmeling discloses an artificial turf wherein additives that reflect light are incorporated in the fibrous material of the turf [0015]. Harmeling discloses a fibrous material [0017] (corresponding to an artificial turf fiber as presently recited) made of a synthetic polymer (such as polyethylene) [0029], which corresponds to a base polymer as presently recited. The additives or pigments reflect heat generated by sunlight [0024], and exhibit a considerably reduced surface temperature [0031], and therefore correspond to reflective particles/pigments for preventing overheating of the fiber as presently recited. Harmeling discloses that artificial turf is most often used in arenas for sports normally played on grass [0002], and that the invention has an advantage for sports fields to increase player comfort and safety [0032]. There is reasonable basis to conclude, therefore, that an artificial turf fiber as disclosed by Harmeling is suitable for any type of sport normally played on grass, including soccer or rugby as presently recited.
Harmeling fails to teach including a grafted polymer comprising a slip agent grafted on a backbone of the grafted polymer.
Tanaka similarly discloses an artificial turf with good drainage properties [0004] comprising a substrate and a large number of protrusions extending upward from the substrate [0006]. Tanaka teaches that the resin composition constituting the protruding body has a mixture of thermoplastic resin and silicone graft polymer. Tanaka names several examples of the thermoplastic resin, including polyethylene [0006]. Tanaka teaches that the silicone graft polymer is obtained by graft polymerizing polydimethylsiloxane to a polymer having thermoplasticity, and names polyethylene and polypropylene as examples of the main chain of the silicone graft polymer [0008].
Tanaka teaches that the if the silicone content in the mixture is too low, the water-repellent effect is small, but if too high, slip resistance is small and target strength is significantly reduced (p 3, top). Tanaka further teaches that since the silicone is graft polymerized, the molecular weight is large and there is little loss of silicone due to bleeding on the surface, and no decrease in physical properties because of the compatibility with the main material (p 3, last paragraph). Tanaka also discloses that silicone acts as a lubricant, such that releasability during molding is improved (p 4, top).
Considering Tanaka’s disclosure, when preparing artificial turf fibers from thermoplastic polymers such as polyethylene, the person having ordinary skill in the art would have been motivated to include a polyolefin (polyethylene) grafted with siloxane as an additive in order to achieve a desired degree of water-repellent effect, slip resistance and strength, and in order to improve releasability during molding. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed an artificial turf fiber including a polymer such as polyethylene, and further including reflective particles/pigments, as taught by Harmeling, by further including a polyolefin (polyethylene) grafted with siloxane in order to improve water-repellency and releasability, as taught by Tanaka. (The cited prior art fails to characterize the siloxane-modified polyethylene as a “traction control agent” as presently recited. However, considering Takana’s disclosure that increasing the content of silicone graft polymer in the thermoplastic resin decreases slip resistance (p 3, top), there is reasonable basis to conclude that a siloxane-modified polyethylene in an artificial turf fiber, as suggested by modified Harmeling, functions as a traction control agent as presently recited.)
Modified Harmeling fails to teach that the fiber is texturized with a wave shape as presently recited.
Van Voorst discloses that artificial turf has become steadily more accepted as a playing surface for various sports, and that it must be resilient and resistant to wear and damage, and also as pleasant to play on as natural grass [0003]. Van Voorst teaches that extrusion allows a monofilament to have a cross-sectional shape engineered for the intended functionality [0005, 0021], and that a fiber having offset ridges with no reflectional symmetry [0011 and figs 1 and 2] has improved resilience with respect to similarly dimensioned fibers [0012]. Considering Van Hoorst’s disclosure, it would have been obvious to the person having ordinary skill in the art to have formed a polyethylene turf fiber, as suggested by modified Harmeling, by extruding the fiber to have a cross-sectional offset ridged (i.e., wave) shape in order to improve resilience. It would have been obvious to the person having ordinary skill in the art to have extruded the entire length (meeting at least 30% as presently recited) of the fiber having the same cross-sectional shape in order to simplify the extrusion process and provide the entire fiber with the advantages taught by Van Hoorst. The cited prior art fails to teach “enhanced softness and coverage” as presently recited. However, these properties are not limited to any particular test or measurement or degree of enhancement. Therefore, there is reasonable basis to conclude that texturizing a fiber, as taught by Van Hoorst, results in some degree of enhancement of some property relating to softness and coverage.
Claim(s) 31 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sick-4 (US 2017/0051453) in view of Tanaka (JP H11313751; included machine translation cited herein).
(Note: this is a rejection of broader generic claims, and not specific to the elected species wherein the base polymer is LDPE and LLDPE.)
As to claim 31, Sick-4 discloses an artificial turf comprising artificial turf fiber securely attached in a backing, and wherein loops of fibers above a tops surface of the backing are formed. See [0094] and figure 6. The artificial turf is used to replace grass, and typically used as a surface for sports including soccer and rugby [0002]. Sick-4 discloses that the embodiments of the invention lead to increased life expectancy of artificial turf made from polyethylene by mechanically fixing the fibers in the backing [0035]. See also [0090]: Sick-4 discloses that the polymer used for creating the fiber is preferably polyethylene (corresponding to the presently recited “base polymer”).
Sick-4 fails to teach including a grafted polymer comprising a slip agent grafted on a backbone of the grafted polymer.
Tanaka similarly discloses an artificial turf with good drainage properties [0004] comprising a substrate and a large number of protrusions extending upward from the substrate [0006]. Tanaka teaches that the resin composition constituting the protruding body has a mixture of thermoplastic resin and silicone graft polymer. Tanaka names several examples of the thermoplastic resin, including polyethylene [0006]. Tanaka teaches that the silicone graft polymer is obtained by graft polymerizing polydimethylsiloxane to a polymer having thermoplasticity, and names polyethylene and polypropylene as examples of the main chain of the silicone graft polymer [0008].
Tanaka teaches that the if the silicone content in the mixture is too low, the water-repellent effect is small, but if too high, slip resistance is small and target strength is significantly reduced (p 3, top). Tanaka further teaches that since the silicone is graft polymerized, the molecular weight is large and there is little loss of silicone due to bleeding on the surface, and no decrease in physical properties because of the compatibility with the main material (p 3, last paragraph). Tanaka also discloses that silicone acts as a lubricant, such that releasability during molding is improved (p 4, top).
Considering Tanaka’s disclosure, when preparing artificial turf fibers from thermoplastic polymers such as polyethylene, the person having ordinary skill in the art would have been motivated to include a polyolefin (polyethylene) grafted with siloxane as an additive in order to achieve a desired degree of water-repellent effect, slip resistance and strength, and in order to improve releasability during molding. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed an artificial turf comprising a plurality of polyethylene artificial turf fibers, as taught by Sick-4, by including a polyolefin (polyethylene) grafted with siloxane in order to improve water-repellency and releasability, as taught by Tanaka. (The cited prior art fails to characterize the siloxane-modified polyethylene as a “traction control agent” as presently recited. However, considering Takana’s disclosure that increasing the content of silicone graft polymer in the thermoplastic resin decreases slip resistance (p 3, top), there is reasonable basis to conclude that a siloxane-modified polyethylene in an artificial turf fiber, as suggested by modified Sick-4, functions as a traction control agent as presently recited.)
As to claim 32, as set forth above, Sick-4 teaches that the artificial grass is used as a surface for playing soccer [0002]. It would have been obvious to the person having ordinary skill in the art, therefore, to have ensured FIFA compliance when preparing a turf as suggested by modified Sick-4 in order to improve player safety, and, to increase the ability of the turf product to be marketed by ensuring suitability for fields requiring FIFA compliance.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 17-26, 28, 30, 31 and 34 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 17-26, 28, 30, 31 and 34 of copending Application No. 18/482231 (reference application).
The preamble of instant claim 17 recites a turf fiber for a soccer or rugby artificial turf, while the preamble of claim 17 in copending ‘231 recites a turf fiber for a hockey artificial turf. The instant independent and dependent claims and copending independent and dependent claims are otherwise identical. A claim preamble is not limiting if the body of the claim defines a structurally complete invention, and the preamble only states a purpose or intended use of the invention. Given that the recited intended uses of the fibers in the instant and copending claims are not limiting, and given that there is no structural difference between the fiber recited in the instant claims and the fiber recited in the copending claims, the instant claims and the claims recited in copending ‘231 are deemed coextensive in scope.
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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.
Claim 32 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 32 of copending Application No. 18/482231 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The instant claim to a soccer field is identical to copending claim 32 except for a difference in type of playing surface (soccer vs hockey), and except for the recitation in the instant claim that the turf is compliant with a FIFA standard. Given that the artificial turf recited in the copending claims is otherwise identical to the presently recited turf, there is reasonable basis to conclude that a hockey field as recited in copending claim 32 is capable of being a soccer field according to instant claim 32. Furthermore, given that player safety is important for any sport which is normally played on grass, and given that field which meets safety standards for various sports would have increased marketability, it would have been obvious to the person having ordinary skill in the art to have formed a field as recited in copending claim 32 having FIFA compliance, as recited in instant claim 32.
Claim 17 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 34 of copending Application No. 18/555773 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
An artificial turf fiber within the scope of instant claim 17 is recited in copending claim 34. Copending claim 34 limits the base polymer and grafted polymer and is therefore narrower in scope than instant claim 17 (i.e., reads on instant claim 17 in an anticipatory manner).
Conclusion
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766