DETAILED ACTION
As of the response to the Restriction Requirement filed on March 6, 2026, claims 1 – 18 are pending. Claims 19 – 20 have been canceled.
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 without traverse of Group I, claims 1 – 18 in the reply filed on March 6, 2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 2 – 17 are objected to because of the following informalities: “A method” should be “The method” as claims 2 – 17 are dependent claims referencing parent claims. Appropriate correction is required.
Claim 16 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other preceding claims in the alternative only. See MPEP § 608.01(n), especially heading B, numeral 2 example 3. Accordingly, the claim 16 has not been further treated on the merits.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later 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 1, 2, 7, 8, 10, 12 – 15, 17, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jones US 903865 A (hereinafter “Jones”) in view of Kamei JP201717824 A (of record, translation of record and referenced, hereinafter “Kamei”).
Regarding claims 1, 2, 8:
Jones is directed to cork compositions and methods of making such compositions. Jones discloses that the method of forming a cork-containing composition comprises:
providing a plurality of cork particles in a volume (page 1, lines 50-60);
thoroughly mixing the cork particles with a dispersion comprising rubber to form a mixture (page 1, lines 102-111);
heating the mixture and allowing the heated mixture to cool (page 2, lines 20-64), altogether to arrive at cork particles individually coated with rubber (Jones, page 2, lines 9-11).
Jones does not expressly teach that thermoplastic elastomer is added, and mixed/agitated with the cork particles.
Kamei is directed to a thermoplastic elastomer composition with no tackiness and having high frictional coefficients, a molding comprising the composition, and a composite molding in which the composition is fused to a member (Abstract). Kamei discloses that the thermoplastic elastomer composition comprises a styrenic block copolymer A [thermoplastic elastomer], e.g. styrene-ethylene-butadiene-styrene polymer and styrene-ethylene-butylene-styrene [meeting claim 8], and a wood filler B, e.g. cork particles (Claims; translation page 2, 1st paragraph, translation page 2, 2nd to last paragraph). Kamei discloses that binding filler with styrenic block copolymer aids in providing molded composites with high coefficients of friction without excessive tackiness (page 2 2nd – 3rd paragraph).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Jones by coating the cork particles with the styrenic block copolymer of Kamei as a substitute to rubber because Kamei teaches that after molding and setting, styrenic block copolymer aids in providing molded composites with high coefficients of friction without excessive tackiness.
Regarding claim 4:
Jones in view of Kamei does note expressly teach the repetition of the recited steps in order to provide a second layer of the thermoplastic elastomer.
However, the recited steps amount to a duplication of steps to create a duplicate coating of the cork particulate. Outside a showing of unexpected results, a prima facie case of obviousness exists where steps and their resultant products (in this case the encapsulations of the cork particles are merely duplicates. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959).
Regarding claim 7:
Jones does not expressly teach that each of the cork particles have a maximal dimension of between 0.5mm and 2.0mm.
Kamei discloses that the wood filler is preferably small and have an average particle diameter between 0.01 to 5 mm, or more preferably 0.5 to 1 mm (page 2 last paragraph). The wood filler size is kept within the range in order to maintain a smoothness of surface of a resultant molded body and provide a feeling of unique texture.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Jones by providing the cork particles at a maximal dimension of between 0.5mm and 2.0mm as a matter of routine experimentation in order to arrive at resultant molded bodies having smooth surfaces yet unique textures. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claims 10 and 15:
Kamei discloses a step of blow molding to form the cork composition (translation page 4 3rd line). As known by those of ordinary skill in the art, a blow molding process typically comprises a mixing step by spraying and a cooling step by air-blowing.
Regarding claim 12:
Jones discloses heating the mixture from 125oF to 350oF (Jones, page 2, lines 54-56) which is equivalent to 56 to 175oC, and which overlaps the claimed range of “at least 60oC”. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 13:
As the process of Jones or Kamei involves no water or aqueous solution, the humidity is expected to be below 10%.
Regarding claim 14:
Jones discloses that the process is allowed to cool at room temperature (Jones, page 2, lines 20-64).
Regarding claim 17:
Jones does not expressly teach adding the dispersion of thermoplastic elastomer to the volume at a ratio of between 1.25:1 and 5:1 cork particles to dispersion of thermoplastic elastomer by weight.
Kamei discloses the proportions of the wood component, in particular, cork, to the TPE is between 5 wt% up to 40wt% (translation copy, page 3) which overlaps the claimed volume ratio of 1.25:1 to 5:1 because the cork is significantly lower than TPE in density (natural cork has a density between 160kg/m3 to 220 kg/m3 while styrene-butadiene TPE has a density of over 1500 kg/m3 . Thus, 40/100 mass ratio of cork/TPE would be equivalent to about 120/100 to 160/100 in volume ratio of cork/TPE, or equivalent to 1.2:1 to 1.6:1. The ratios of components affect intermediate and resultant properties such as melt fluidity, coefficient of friction of the resultant product (page 3 1st – 3rd paragraph).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Jones in view of Kamei by adding the dispersion of thermoplastic elastomer to the volume at a ratio of between 1.25:1 and 5:1 cork particles to dispersion of thermoplastic elastomer by weight as a matter of routine experimentation to optimize processing conditions and resultant coefficient of friction. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 18:
The discussion of the claim limitations shared between claim 1 and claim 18 are discussed above with regards to claim 1. Kamei teaches the use of the wood-polymer composition in making shoe soles (translation copy, page 1, penultimate paragraph).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Jones to apply the composition rendered obvious by Jones in Kamei in making a portion of a midsole as claimed.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of Kamei as applied to claims 1, 2, 7, 8, 10, 12 – 15, 17, 18 above, and further in view of McMullin et al “(Biodegradable Thermoplastic Elastomers, Macromolecules 2016, 49, 10, 3769–3779) (of record, hereinafter “McMullin”).
Regarding claim 9:
Jones in view of Kamei does not expressly teach that the thermoplastic elastomer comprises a biopolymer.
McMullin is directed to biodegradable thermoplastic elastomers that
meet requirements of softness and elasticity in a variety of applications, while being amenable to conventional plastics processing technology (Abstract; Introduction). McMullin discloses incorporating a soft segment of biopolymer into a thermoplastic elastomer in order to obtain a biodegradable thermoplastic elastomer material.
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have included as part of the thermoplastic elastomer a biopolymer in order to produce a biodegradable composition which is highly desirable for environmental protection purposes, in light of McMullin’s teaching.
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.
Claim 11 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12030995 . This is a statutory double patenting rejection.
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 – 10, 12 – 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 18 of U.S. Patent No. 12030995. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of the application claims 1 – 10, 12 – 18 are to be found in the patent claims (as the application claims 1 – 10, 12 – 18 fully encompasses the patent claims). The difference between the application claims and the patent claims lies in the fact that the patent claim includes many more elements and is thus more specific. Thus the invention of claims 1 – 18 of the patent is effect a "species" of the "generic" invention of the application claims 1 – 10, 12 – 18. It has been held that the generic invention is “anticipated" by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir.1993). Since application claims 1 – 10, 12 – 18 is anticipated by claims 1 – 18 of the patent, it is not patentably distinct from claims 1 – 18 of the patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
Prosecution Insights