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 19-22 and 24-36 are pending. Claims 24-25 and 27-36 are withdrawn from consideration due to Applicant’s election. Claims 1-18 and 23 are canceled.
Amendments to the claims, filed 28 July 2026, have been entered into the above-identified application.
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 .
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 19-21 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 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).
Although Cartier does not explicitly disclose TPU powders derived from pulverizing expanded TPU and/or molding part thereof, wherein the TPU powders are derived from expanded TPU pellets or molding thereof or leftover expanded TPU or recycled expanded TPU, or mixture thereof, the pulverization is a product-by-process limitation, and 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 (i.e., powders composed of expanded TPU having an average particle size of less than 1 mm), Cartier meets the limitations 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 § 103
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 19-22 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.
Although Prissok does not explicitly disclose TPU powders derived from pulverizing expanded TPU and/or molding part thereof, wherein the TPU powders are derived from expanded TPU pellets or molding thereof or leftover expanded TPU or recycled expanded TPU, or mixture thereof, the pulverization is a product-by-process limitation, and 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 Prissok discloses the expanded thermoplastic polyurethane particles that are substantially identical to those of the claims (i.e., powders composed of expanded TPU having an average particle size of less than 1 mm), Cartier meets the limitations recited by the claims.
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 26:
Prissok further discloses that the thermoplastic polyurethane is prepared in the presence of customary auxiliaries (paragraph [0045]).
Answers to Applicant’s Arguments
Applicant’s arguments regarding the application of the prior art references are fully considered, but are unpersuasive.
Applicant’s contends that Cartier does not disclose or reasonably suggest TPU powders derived from pulverizing expanded TPU pellets or molding part thereof or leftover expanded TPU or recycled expanded TPU, or mixture thereof. Applicant further contends that the Office has not established that Cartier’s expanded particles reasonable appear to be identical or substantially identical to TPO powders produced by pulverizing the specific expanded TPU source materials. Applicant cites Examples in their original disclosure wherein TPU powders derived from the claimed pulverization of specific source material exhibit different properties when formed into molded materials than those molded materials formed from other commercially available expanded TPU powders. Applicant traverses the Office’s position that the recitation of the pulverization method of specific TPU sources is a product-by-process limitation. Applicant further attributes unexpected properties to their claimed TPU powders and cites the examples in their original disclosure as support.
Applicant’s arguments are unpersuasive. 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). In the instant case, Applicant relies upon the examples from their original disclosure to establish that the product derived from the product-by-process limitations (i.e., pulverization method and the source of the TPU material) are patentably distinct from prior art powders. However, the examples in Applicant’s original disclosure are produced using a specific pulverization processes and different source TPU materials having different original properties. Therefore, it is not readily apparent that all TPU powders encompassed by the scope of the claims (i.e., produced from a generic pulverization process and generically sourced expanded TPU pellets/molding part thereof/leftover expanded TPU/recycled TPU) would necessarily have the different properties of the examples. In other words, the evidence upon which Applicant relies to show patentable distinction between the prior art TPU powders and those of the claims is not commensurate in scope with the claimed invention. Therefore, since the prior art references meet the limitations of an expanded TPU powder having the claimed particle size range, those products of the prior art are not patentably distinct from the claimed invention.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP §716.02(d).
In the instant case, Applicant’s allegation of unexpected results supported by the examples of the original disclosure is not persuasive because said examples are much narrower in scope than the claims, and it is not readily apparent that the alleged unexpected results would be present in every embodiment encompassed by the claims.
Applicant further traverses the combination of Spies with Cartier. Applicant first argues that Spies fails to cure the deficiencies of Cartier. Further, Applicant argues that the bulk density and auxiliary agents disclosed by Spies are additives for a different polymer-particle composition than that of the claims.
Applicant’s arguments are unpersuasive. The alleged deficiencies of the Cartier reference are addressed above.
Applicant’s arguments regarding the different polymer-particle composition are unpersuasive. Spies discloses a particle composed of a TPU particle. Spies discloses that low density is a major advantage for foams, in general. Therefore, it would have been obvious to ensure that the density of the TPU particles of Cartier have the bulk density disclosed by Spies in order to provide the desired low density. As to the auxiliaries, Spies discloses that such auxiliaries are known additives for the production of thermoplastic polyurethane-based products to provide hydrolysis stabilization and flame retardancy. Therefore, it would have been obvious to one ordinary skill in the art to include said auxiliaries into the product of Cartier to achieve the same benefits.
Applicant further traverses the rejection over the Prissok reference (Note – Applicant refers to a rejection of Cartier in view of Prissok; however, the grounds of rejection refer to the disclosure of Prissok alone.
Applicant’s arguments are unpersuasive. Similar to their arguments traversing the prior art rejection over Cartier, Applicant relies upon the evidence provided by the examples of their original disclosure to show patentable distinction between their product-by-process powders and the powders of the prior art.
Applicant’s arguments are unpersuasive. 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). In the instant case, Applicant relies upon the examples from their original disclosure to establish that the product derived from the product-by-process limitations (i.e., pulverization method and the source of the TPU material) are patentably distinct from prior art powders. However, the examples in Applicant’s original disclosure are produced using a specific pulverization processes and different source TPU materials having different original properties. Therefore, it is not readily apparent that all TPU powders encompassed by the scope of the claims (i.e., produced from a generic pulverization process and generically sourced expanded TPU pellets/molding part thereof/leftover expanded TPU/recycled TPU) would necessarily have the different properties of the examples. In other words, the evidence upon which Applicant relies to show patentable distinction between the prior art TPU powders and those of the claims is not commensurate in scope with the claimed invention. Therefore, since the prior art references meet the limitations of an expanded TPU powder having the claimed particle size range, those products of the prior art are not patentably distinct from the claimed invention.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP §716.02(d).
In the instant case, Applicant’s allegation of unexpected results supported by the examples of the original disclosure is not persuasive because said examples are much narrower in scope than the claims, and it is not readily apparent that the alleged unexpected results would be present in every embodiment encompassed by the claims.
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.
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/TAM/Examiner, Art Unit 1788 08/13/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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