DETAILED ACTION
This is an Office action based on application number 18/700,739 filed 12 April 2024, which is a national stage entry of PCT/EP2022/077930 filed 7 October 2022, which claims priority to PCTCN2021124151 filed 15 October 2021. Claims 19-36 are pending. Claims 1-18 are canceled.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group I, claims 19-23 and 26 in the reply filed on 26 March 2026 is acknowledged. The traversal is on the ground(s) that Gama et al. (3D Printed Thermoplastic Polyurethane Filled with Polyurethane Foams Residues) (Gama) does not disclose the thermoplastic polyurethane powders of the claims; therefore, the special technical feature shared by the claims makes a contribution over the prior art and unity of invention exists between all the claim groups. This is not found persuasive because the claimed thermoplastic polyurethane powders of the claim (i.e., the shared inventive concept) is not novel as set forth in the prior art rejections below; therefore, the special technical feature shared by the claims does not make a contribution over the prior art and the claims lack unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 24-25 and 27-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 26 March 2026.
Claim Rejections - 35 USC § 102
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.
Claims 19-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cartier et al. (US Patent Application Publication No. US 2018/0009961 A1) (Cartier).
Regarding instant claims 19-20:
Cartier discloses expanded thermoplastic particles comprising a thermoplastic matrix and having a volume average particle size of from 1 to 100 microns, wherein thermoplastic matrix is selected from the group inclusive of thermoplastic polyurethane (Claims 1-2).
The disclosure of “expanded thermoplastic particles” meets the claimed “derived from expanded TPU” as recited by the claims.
Regarding instant claim 21:
Cartier further discloses a narrower particle size range of 5-20 microns (Claim 5).
Claim Rejections - 35 USC §§ 102/103
(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.
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.
Claim 23 is 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 Cartier.
Regarding instant claim 23:
Cartier discloses the expanded thermoplastic particles as cited in the rejection of claim 19, above, but does not explicitly disclose that the particles are derived from expanded TPU pellets or molding part thereof or leftover expanded TPU or recycled expanded TPU, or mixture thereof.
However, the source of the claimed TPU claimed is tantamount to a product-by-process limitation (i.e., obtained from such sources).
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
In the instant case, as Cartier discloses the expanded thermoplastic polyurethane particles that are substantially identical to those of the claims, Cartier meets the product-by-process limitations also recited by the claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
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.
Claims 22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Cartier in view of Spies et al. (US Patent Application Publication US 2015/0344661 A1) (Spies).
Regarding instant claim 22:
Cartier discloses expanded thermoplastic polyurethane particles as cited in the rejection of claim 19, above, but does not explicitly disclose the bulk density of the particles.
However, Spies discloses polyurethane-based expandable polymer particles (Title).
Spies teaches that the bulk density of the particles, once expanded to pellets, have a bulk density of at most 300 g/l (paragraph [0072]). 300 g/l is 0.3 g/cm3.
Spies teaches that low density is a major advantage for foams (paragraph [0002]).
Before the effective filing date of the claim, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the expanded thermoplastic polyurethane particles of Cartier has the bulk density described by Spies. The motivation for doing so would have been that such a low density is a recognized major advantage for foam-based materials.
Therefore, it would have been obvious to combine Spies with Cartier to obtain the invention as specified by the instant claim.
Regarding instant claim 26:
Cartier discloses expanded thermoplastic polyurethane particles as cited in the rejection of claim 19, above, but does not explicitly disclose an at least one auxiliary agent.
However, Spies discloses polyurethane-based expandable polymer particles (Title).
Spies further discloses that auxiliary agents are known additives in the production of thermoplastic polyurethane (paragraph [0034]).
Spies further disclose that examples of auxiliaries include hydrolysis stabilizers and flame retardants (paragraph [0051]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the claims before him or her, to include the auxiliary agents of Spies into the particles of Cartier. The motivation for doing so would have been that such auxiliaries are known additives to polyurethane-based foam materials to provide benefits inclusive of hydrolysis stabilization and flame retardancy.
Therefore, it would have been obvious to combine Spies with Cartier to obtain the invention as specified by the instant claim.
Claims 19-23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Prissok et al. (US Patent Application Publication No. US 2010/0047550 A1) (Prissok).
Regarding instant claims 19-21:
Prissok discloses foamed particles comprising a foamed thermoplastic polyurethane material having a diameter of from 0.1 mm to 10 cm (paragraph [0018]). It is noted that the disclosed range overlaps the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
The disclose of “foamed particles” and “foamed thermoplastic polyurethane” meet the claimed “powders derived from expanded TPU”.
Regarding instant claim 22:
Prissok further discloses that the foamed particles have a density of from 0.005 to 0.5 g/cm3 (paragraph [0018]), wherein said density is a bulk density (paragraph [0106]).
Regarding instant claim 23:
Prissok does not explicitly disclose that the particles are derived from expanded TPU pellets or molding part thereof or leftover expanded TPU or recycled expanded TPU, or mixture thereof.
However, the source of the claimed TPU claimed is tantamount to a product-by-process limitation (i.e., obtained from such sources).
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
In the instant case, as Cartier discloses the expanded thermoplastic polyurethane particles that are substantially identical to those of the claims, Cartier meets the product-by-process limitations also recited by the claims.
Regarding instant claim 26:
Prissok further discloses that the thermoplastic polyurethane is prepared in the presence of customary auxiliaries (paragraph [0045])
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sachs et al. (CA2203418A1) discloses a porous pressed molded part having a bulk density of from 50 to 300 kg/m3 that is obtained by comminution of a rigid plastic foam to powder, wherein the plastic foam is a polyurethane foam (Claims 1-2).
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/TAM/Examiner, Art Unit 1788 04/21/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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