RESPONSE TO AMENDMENT
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 .
WITHDRAWN REJECTIONS
The 35 U.S.C. §112 rejection of the claims made of record in the office action mailed on 07/16/2025 have been withdrawn due to Applicant’s amendment in the response filed 11/17/2025.
The 35 U.S.C. §103 rejections of the claims made of record in the office action mailed on 07/16/2025 have been withdrawn due to Applicant’s amendment/argument in the response filed 11/17/20025.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 already claims an allergen level of less than 10 ppm. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 10-14 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Daluise et al. (U.S. App. Pub. No. 2010/0055461) in view of Brunet et al. (U.S. App. Pub. No. 2015/0024087) and Harte et al. (U.S. App. Pub. No. 2010/0291265).
The method of forming 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. MPEP 2113. In the present claims, Applicant is claiming a particulate infill that is treated by a particular process to remove tree nut allergens therefrom. Since there is no evidence to suggest that the treatment process imparts clear structural features to the claimed particulate infill, the process steps are not being given patentable weight.
Regarding claim 10, Daluise et al. teaches an artificial turf system containing particulate infill made of anti-microbial treated walnut shell particles. (par. [0012], Fig. 1 and par. [0030]).
Daluise et al. does not teach that the walnut shells are treated to remove tree nut allergies.
Brunet et al. teaches that tree nut allergies are widely prevalent and have high seriousness and that the cases of allergies are rising over the years. (par. [0002]-[0003]). Brunet teaches treating these high allergen containing materials to substantially remove allergens therefrom. (par. [0010]-[0012] and [0014]).
It would have been obvious to one of ordinary skill in the art to treat the walnut shell-based infill material disclosed in Daluise to remove the allergens therefrom.
One of ordinary skill in the art would have found it obvious to remove the allergens from the walnut shell-based infill material in order to prevent unwanted allergic reactions from those coming into contact with the walnut shell-based materials during processing and manufacture of the artificial turf system or during the regular course of use of the infill
Although Daluise in view of Brunet et al. does not disclose process as presently claimed, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Daluise in view of Brunet et al. does not disclose that subsequent to treatment the infill material containing walnut shell particles should have an allergen level of less than 10 ppm attributable to the walnut shell particles.
Harte et al. teaches a baking composition that is substantially free of all allergens, including nut allergens. (Abstract). Harte et al. defines “free” as a composition containing less than 2ppm or the allergens. (par. [0002] and [0008]-[0009]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art to treat the walnut shell infill material according to the combination of Daluise and Brunet et al. such that the allergen is level is 2 ppm or less as taught in Harte et al.
One of ordinary skill in the art would have found it obvious to reduce the allergen level to 2 ppm or less to minimize the risk of allergic reaction of someone coming into contact with the infill material such that they could be described as “allergen free”.
Regarding claims 11-13, the claims further limit process parameters for the method of making the claimed product of claim 10 and are therefore rejected for substantially the same reasons as claim 10, above. Since the limitations do not impart structural features to the claimed product, they are not being given patentable weight.
Regarding claim 14, Daluise et al. teaches that the walnut shell infill material is treated with an anti-microbial coating (par. [0030]) which would therefore improve the durability thereof.
Regarding claims 16-17, the claims are rejected for substantially the same reasons as claim 1, above. With respect to the limitations directed to additional processing steps, the method of forming 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. MPEP 2113. In the present claims, Applicant is claiming a particulate infill that is treated by a particular process to remove tree nut allergens therefrom. Since there is no evidence to suggest that the treatment process imparts clear structural features to the claimed particulate infill, the process steps are not being given patentable weight.
Regarding claim 18, the claim further limits process parameters for the method of making the claimed product of claim 17 and are therefore rejected for substantially the same reasons as claim 10, above. Since the limitations do not impart structural features to the claimed product, they are not being given patentable weight.
Regarding claim 19, Daluise et al. teaches drying the walnut shell infill material using a fluid-bed drier. (par. [0031]). Though Daluise et al. does not explicitly disclose the moisture levels of the infill material, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II). One of ordinary skill in the art would have found it obvious to minimize the water content in the walnut shell -based infill material since organic materials containing water would be prone to microbial or fungal growth.
Claims 10-18 are rejected under 35 U.S.C. 103 as being unpatentable over Shimp et al. (U.S. Pat. No. 3,481,257) in view of Brunet et al. (U.S. App. Pub. No. 2015/0024087) and Harte et al. (U.S. App. Pub. No. 2010/0291265).
Regarding claim 10, Shimp et al. teaches an epoxy-resin walnut shell aggregate for wear resistant floor toppings. (Abstract). The nut shell aggregate is made from ground-up walnut shells having a particle size distribution of 0.125 inches to 0.0017 inch in diameter.
The limitation “for an infilled artificial turf” is merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the 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. The walnut shell aggregate as disclosed in Shimp et al. would meet the limitation of “a particulate infill material” as presently claimed.
Shimp et al. does not disclose that the walnut shell aggregate is treated to substantially eliminate tree nut allergen.
Brunet et al. teaches that tree nut allergies are widely prevalent and have high seriousness and that the cases of allergies are rising over the years. (par. [0002]-[0003]). Brunet teaches treating these high allergen containing materials to substantially remove allergens therefrom. (par. [0010]-[0012] and [0014]).
It would have been obvious to one of ordinary skill in the art to treat the walnut shell-based particles disclosed in Shimp et al. to remove the allergens therefrom.
One of ordinary skill in the art would have found it obvious to remove the allergens from the walnut shell-based infill material in order to prevent unwanted allergic reactions from those coming into contact with the walnut shell-based materials during processing and manufacture of the artificial turf system or during the regular course of use of the infill.
Although Shimp in view of Brunet et al. does not disclose process as presently claimed, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Shimp et al. does not disclose the allergen level being 10 ppm or less having an allergen level of less than 10 ppm.
Harte et al. teaches a baking composition that is substantially free of all allergens, including nut allergens. (Abstract). Harte et al. defines “free” as a composition containing less than 2ppm or the allergens. (par. [0002] and [0008]-[0009]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art to treat the walnut shell infill material according to the combination of Shimp and Brunet et al. such that the allergen is level is 2 ppm or less as taught in Harte et al.
One of ordinary skill in the art would have found it obvious to reduce the allergen level to 2 ppm or less to minimize the risk of allergic reaction of someone coming into contact with the infill material such that they could be described as “allergen free”.
Regarding claims 11-13, the claims further limit process parameters for the method of making the claimed product of claim 10 and are therefore rejected for substantially the same reasons as claim 10, above. Since the limitations do not impart structural features to the claimed product, they are not being given patentable weight.
Regarding claim 14, the agglomerate disclosed in Shimp et al. includes an epoxy resin and coloring agent which would affect at least the color, durability and resistance to rotting of the walnut shell particles. (col. 3, lines 24-40).
Regarding claim 15, Shimp et al. discloses providing both English walnut shells and black walnut shells. (col. 3, lines 1-10). It would therefore have been obvious to one of ordinary skill in the art to use a combination of both English and black walnut shells since it its prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose in order to form a third composition for the very same purpose. MPEP 2144.06.
With respect to the morphology of individual walnut shell particles, Shimp et al. discloses that the particles are “ground-up” which implies a “generally rounded in shape” morphology as presently claimed. Furthermore, the shells are “restricted in size profile” by being limited to a size of 0.125 inch to 0.0017 inch in diameter. In view of the broad range of upper and lower ends of the particle size distribution, it would have been obvious for at least some of the English walnut shell particles to be larger than the Black walnut shells throughout the population of ground-up shell particles. Therefore, the population of English walnut shell particles larger than the Black walnut shell particles would be “more elongated” due to the larger size of the population on the top end of the distribution compared to the population on the lower end of the ranges.
With respect to the limitation “to enable a mixture […] and shaped infill particles”, the limitation refers to an intended use of the mixture of Black walnut shell particles and English walnut shell particles. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the 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.
Regarding claims 16-17, the claims are rejected for substantially the same reasons as claim 1, above. With respect to the limitations directed to additional processing steps, the method of forming 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. MPEP 2113. In the present claims, Applicant is claiming a particulate infill that is treated by a particular process to remove tree nut allergens therefrom. Since there is no evidence to suggest that the treatment process imparts clear structural features to the claimed particulate infill, the process steps are not being given patentable weight.
Regarding claim 18, the claim further limits process parameters for the method of making the claimed product of claim 17 and are therefore rejected for substantially the same reasons as claim 10, above. Since the limitations do not impart structural features to the claimed product, they are not being given patentable weight.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Shimp et al. (U.S. Pat. No. 3,481,257) in view of Brunet et al. (U.S. App. Pub. No. 2015/0024087) and Harte et al. (U.S. App. Pub. No. 2010/0291265), further in view of Ho (KR 101083329)
Citations to Ho, below refer to the machine translation document provided with this office action.
Shimp in view of Brunet and Harte et al. are relied upon as described in the rejection of claim 10, above.
Shimp et al. does not disclose a moisture content of below 10% for the walnut shell particles. It should be noted that the process limitation “heat treating causes smoother particles and a moisture content below 10%” do not impart any clear structural features to the claimed particulate infill as claimed and therefore do not confer patentable weight to the claims beyond a moisture content of below 10%.
Ho teaches an artificial lumber material for use in pedestrian LED lamps (Abstract) which includes ground walnut shell particles (page 4, 4th paragraph). Ho teaches that the walnut shell particles should have a moisture level of 6% or less to improve the binding property between the resin and wood powder. (page 4, 2nd to last paragraph).
It would have been obvious to one of ordinary skill in the art to dry the walnut shell particles of Shimp et al. to less than 6% moisture level overlapping with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have found it obvious to have a moisture level of 6% in Shimp et al. to provide improve binding property/adhesion to the epoxy resin material used in the agglomerate material disclosed therein.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 11/17/2025 regarding the prior art rejections made of record in the office action mailed on 07/16/2025 have been carefully considered but are deemed unpersuasive.
Applicant argues that improper hindsight is used to combine the teachings of 3 unrelated references. The Examiner disagrees.
The primary references all concern the use of walnut shell particles which are known in the art, as disclosed in Brunet and Harte et al., to have allergens therein. Since removal of allergens to safe levels would improve the ability of one of ordinary skill in the art to use, make and sell products containing the walnut shell particles, one of ordinary skill in the art would have considered the teachings of the secondary references of removal of allergens of the walnut shells, including to what levels would be considered “safe”, as taught in Harte et al.
The claims are therefore rejected in view of the teachings of Daluise, Brunet and Harte et al.
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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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 01/21/2026