DETAILED ACTION
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 Objections
Claims 2 and 6 are objected to because of the following informalities:
Claim 2, line 1, “The footwear item” should be “The single-material footwear item”.
Claim 6, line 2, “additive” should be “the additive”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim(s) 1-15 is/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 1 recites “PEBAs” without defining the acronym. This renders the claim indefinite because it is not clear exactly which material is required. The examiner suggests amending the claim to recite “polyether block amides (PEBAs)” to clarify the claim. The claim has been interpreted to refer to this material (see, e.g., lines 10-12 of page 2 of the specification).
Claim 1 recites “0 to 15% by weight of additives.” The claim is indefinite because it is unclear if the item requires more than one additive (i.e., “additives” plural) when the amount is greater than 0% by weight.
Claim 2 recites several terms/phrases with incorrect antecedent basis identifiers, which render the claim indefinite because it is not clear if the phrases refer to pre-established features or represent newly recited features.
In line 2, “one or more thermoplastic polymers” should be “the one or more thermoplastic polymers”.
In line 4, “one or more thermoplastic elastomers” should be “the one or more thermoplastic elastomers”.
In line 6, “additives” should be “the additives”.
Claim 3 recites “a polyamide or copolyamide”. The claim is indefinite because it is not clear if this is the same as or different than the polyamide or copolyamide described in claim 1. For proper antecedent basis, the phrase should begin with “the polyamide”.
Claim 4 recites “a PEBA”. The claim is indefinite because it is not clear if this is the same as or different than the PEBA described in claim 1. For proper antecedent basis, “a PEBA” should be “the PEBA”.
Claim 4 recites “PTMG” and “PEG” without defining the acronyms. This renders the claim indefinite because it is not clear exactly which materials are required. The examiner suggests amending the claim to recite “wherein PTMG is polytetramethylene glycol and PEG is polyethylene glycol” to clarify the claim. The claim has been interpreted to refer to these materials (see, e.g., lines 18-24 of page 2 of the specification).
Claim 6 recites the footwear item of claim 1 “comprising, as additive, 0 to 10% by weight of adhesive.” The lack of an antecedent basis identifier renders the claim indefinite because it is not clear if the phrase refers to pre-established features or represent newly recited features. Additionally, the description of singular “additive” rather than “additives” as in claim 1 makes it further unclear whether claim 6 requires additional additives.
Claim 8 recites several terms/phrases with incorrect antecedent basis identifiers, which render the claim indefinite because it is not clear if the phrases refer to pre-established features or represent newly recited features.
In line 1, “a single-material footwear item” should be “the single-material footwear item”.
In lines 3-4, each of “one or more polyamides or copolyamides,” and “one or more PEBAs” should begin with “the” (e.g., “the one or more polyamides or copolyamides”).
In lines 6-7, the phase “the respective thermoplastic material” lacks proper antecedent basis.
In line 10, “the materials” lacks antecedent basis because the claim earlier recites “a material” (i.e., singular rather than plural). The phrase “the materials” also conflicts with the claim requirement of “a single-material” and so renders the claim indefinite because it is unclear if there are multiple materials or a single material in the claim.
In lines 11-13, each of “one or more thermoplastic polymers chosen from polyamides and copolyamides;” and “one or more thermoplastic elastomers chosen from PEBAs” should begin with “the” as with lines 3-4 above. Additionally, however, the phrase “thermoplastic polymers” should first appear in line 3 of the claim for proper antecedent basis of the term in line 11.
Claim 8 recites in step (I) “a material comprising one or more polyamides or copolyamides, one or more PEBAs and/or one or more additives” and subsequently recites “the materials used are chosen such that the finished footwear item comprises […] one or more thermoplastic polymers chosen from polyamides and copolyamides; […] one or more thermoplastic elastomers chosen from PEBAs; and […] additives”. The phrase “and/or” in step (I) renders the claim indefinite because the claim appears to first state the polyamide, the PEBA, and the additives are separately optional components (i.e., “or”) of the material, but the subsequent recitation appears to require all three (i.e., “and”), with the exception that the additives can be not present (0% by weight).
Claim 9 recites “the materials”. As with claim 8, the scope of the claim is indefinite because this conflicts with the requirements of “a single-material footwear item”. It is unclear if there are multiple materials or a single material in the claim.
In claim 9, each of “one or more thermoplastic polymers chosen from polyamides and copolyamides;” and “one or more thermoplastic elastomers chosen from PEBAs” should begin with “the” for proper antecedent basis.
Claim 10 recites several terms/phrases with incorrect antecedent basis identifiers:
In line 3, “the used footwear item” lacks antecedent basis.
In line 4, “the clean footwear item” lacks antecedent basis.
Claim 13 recites “PEBAs” without defining the acronym. This renders the claim indefinite because it is not clear exactly which material is required. The examiner suggests amending the claim to recite “polyether block amides (PEBAs)” to clarify the claim. The claim has been interpreted to refer to this material (see, e.g., lines 10-12 of page 2 of the specification).
Claim 13 recites “0 to 15% by weight of additives” in the pelletized material and “0 to 50% by weight of additives” in the overall composition. The claim is indefinite because it is unclear if either of the pelletized material or the overall composition requires more than one additive (i.e., “additives” plural) when the amount is greater than 0% by weight.
Claims that depend from the claims noted above are rejected for the same reasons as the parent claims.
Claims 8-9 are 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. 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 8 fails to further limit parent claim 1. Parent claim 1 recites “A single-material footwear item consisting of: (i) 15 to 65% by weight of one or more thermoplastic polymers chosen from polyamides and copolyamides; (ii) 35 to 85% by weight of one or more thermoplastic elastomers chosen from PEBAs; and (iii) 0 to 15% by weight of additives.” Claim 8 recites “A process for manufacturing a single-material footwear item as claimed in claim 1, comprising the steps of: I. providing a material comprising one or more polyamides or copolyamides, one or more PEBAs and/or one or more additives suitable for each component of the footwear item […] in which the materials used are chosen such that the finished footwear item comprises 15 to 65% by weight of one or more thermoplastic polymers chosen from polyamides and copolyamides; 35 to 85% by weight of one or more thermoplastic elastomers chosen from PEBAs; and 0 to 15% by weight of additives.” Claim 8 fails to further limit claim 1 because claim 8 uses inclusive language to describe the materials (“comprising the steps”; “providing a material comprising”; “the finished footwear item comprises”) whereas parent claim 1 uses exclusive language (“footwear item consisting of”). Additionally, as described in the rejection under 35 USC 112(b) above, the phrase “and/or” in claim 8 renders the claim indefinite, but also appears to fail to further limit claim 1 which uses “and” between the three components. Dependent claim 9 is rejected for the same reason.
Claim Rejections - 35 USC § 103
Claim(s) 1-9 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fernagut et al. (US 2018/0171140).
Regarding claims 1-2:
Fernagut discloses a composition comprising polyamide and PEBA for rigid parts, including a ski boot or part of a ski boot, or soles [abstract; 0001-0002; 0024]. The examiner considers a part of a boot as taught by Fernagut to be broadly a “footwear item” as presently claimed. Furthermore, the reference teaches the composition can be used to make a part of the boot with no indication that further materials are necessary for the part. Therefore, Fernagut’s disclosure meets the broad requirements of “A single-material footwear item”.
Regarding the composition, Fernagut teaches it comprises (A) 50-95% of a polyamide according to A/Z; (B) 5-50% of a copolyamide comprising amide units and polyether units (PEBA); and optional additional components (C), (D), and (E), which are broadly additives, each in amounts of 0-20% or 0-5% by weight [0026-0037; 0120-0124]. 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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of polyamide and PEBA and optionally additives, including over amounts falling within the presently claimed ranges, to provide a composition in accordance with Fernagut’s teaching, and thereby arrive at the presently claimed invention.
Regarding claim 3:
Fernagut discloses PA 11, PA 12, PA 612, PA 1010, etc. [0041; 0059; 0154; 0159].
Regarding claim 4:
Fernagut discloses the PEBA comprises (Ba1) an amide unit, which can comprise units that are the same as the polyamide (A) (i.e., PA 11, PA 12, etc.), and (Ba2) a polyether unit, which includes PEG and PTMG [0068-0069; 0116]. Additionally, Fernagut discloses PA 11/PTMG [0159].
Regarding claim 5:
Polyamides (A) noted above meet the claimed number of carbon atoms.
Regarding claims 6-7:
Although the present claim further limits the identity of the additive, the claim does not require its presence (i.e., 0% by weight). Therefore, Fernagut meets the claimed requirements.
Regarding claim 8:
Fernagut discloses providing the composition and subsequently molding (manufacturing) the part of a boot [0024-0025]. Given that the examiner considers the part of the boot to be the “single-material footwear item” as presently claimed, the formation of the part simultaneously assembles and forms “the finished footwear item”.
Regarding claim 9:
See the rejection of claim 1 for why it would have been obvious to one of ordinary skill in the art to vary the amounts of components used to make Fernagut’s part of a boot.
Regarding claim 12:
Although Fernagut does not disclose a process as claimed, note 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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Fernagut meets the requirements of the claimed composition, Fernagut clearly meet the requirements of present claim. Furthermore, the examiner notes the claim broadly requires the claimed composition to be able to be obtained (“obtainable”) from the claimed process.
Regarding claim 13:
Fernagut discloses granules (pellets) formed from the composition [0156]. Although the reference does not describe the granules as being “pelletized ground single-material footwear items”, the granules are considered to meet the claimed requirements because they are otherwise pellets consisting of the same materials as presently claimed (i.e., polyamide and PEBA).
Regarding claims 14-15:
Fernagut discloses the manufacture of part of a boot consisting of the claimed composition, which meets the requirements of a single-material footwear item as discussed above.
Claim(s) 8-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fernagut et al. (US 2018/0171140) in view of Sahanga et al. (WO 2020/201370).
Regarding claims 8-9:
Fernagut discloses a composition and a part of footwear made therefrom as previously explained.
Fernagut is silent with regard to footwear wherein all components of the footwear (e.g., an entire shoe) comprise a single material or a method of making such footwear. (This is an alternative interpretation of what the present claim encompasses, which has been provided in the interest of compact prosecution.)
Such footwear was known in the art to have utility and methods of making such footwear was also known in the art. For example, Sahanga discloses a method of recycling a shoe, wherein the shoe comprises various components made from the same material class (abstract; 1:5+; 2:14+). In particular, the material class comprises polyamide (4:11+). Further see where Sahanga describes various components of a shoe can be made from the polymer (5:1-7:23). The use of one class of material for all the components provides for improved recycling (2:30+).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use known polyamide compositions, including those of Fernagut which overlap in scope with the claimed compositions, to make the various components of a piece of footwear and further assemble those components together to form a finished footwear item having a single class of material to permit improved recycling of the footwear as taught by Sahanga.
Regarding claims 10-11:
Sahanga discloses a method of recycling the footwear by milling (grinding) the shoe to form particles, heating until the particles are melted, and then extruding into pellets (2:14+; 2:30+). The method further comprises adding new material (3:13+). The shoes are worn (used) (9:31+). The examiner submits the worn shoes are broadly “clean” given that the claim does not establish a standard of cleanliness, nor does the claim require a step of cleaning.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use known polyamide compositions, including those of Fernagut which overlap in scope with the claimed compositions, to provide a finished footwear item having a single class of material as taught by Sahanga and described above, and further use the recycling process described by Sahanga to provide the environmental and material benefits described by the reference.
Regarding claims 12-13:
The recycled polymer composition resulting from the combination of Fernagut and Sahanga described above meets the claimed limitations.
Regarding claims 14-15:
Sahanga further teaches forming a new shoe from the recycled material (2:30+).
Claim(s) 1-9, 12, and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US 2013/0172484).
Regarding claims 1-2:
Zhang discloses a thermoplastic elastomer composition comprising polyamide and PEBA for parts of shoes, including soles [abstract; 0006; 0014]. The examiner considers a part of a shoe as taught by Zhang to be broadly a “footwear item” as presently claimed. Furthermore, the reference teaches the composition can be used to make a part of the shoe with no indication that further materials are necessary for the part. Therefore, Zhang’s disclosure meets the broad requirements of “A single-material footwear item”.
Regarding the composition, Zhang teaches it comprises (a) 10-50% of an aliphatic polyamide, (b) 1-10% of at least one graft-modified ethylene-olefin elastomer, (c) 1-10% of at least one ethylene-propylene elastomer, and (d) 35-85% of at least one polyether-ester-amide block copolymer (PEBA), all percentages by weight [0006; claim 1]. Components (b) and (c) are broadly additives. Additional optional additives may be used in amounts of 0.0001-10% by weight. 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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of polyamide, PEBA, components (b) and (c), and optionally additional additives, including over amounts falling within the presently claimed ranges, to provide a composition in accordance with Zhang’s teaching, and thereby arrive at the presently claimed invention.
Regarding claim 3:
Zhang teaches PA 612, PA 613, PA 1010, PA 6, PA 11, PA 12, etc. [0011; 0017-0023].
Regarding claim 4:
Zhang teaches the PEBA has a structure formed from (i) a polyamide sequence made from a C4-14 lactam or from a C6-C12 dicarboxylic acid and a C6-C9 diamine, and (ii) a polyoxyalkylene sequence made from a polyoxyalkylene glycol [0012; 0030]. Commercially available materials include those sold under the names PEBAX and VESTAMID [0031]. The present application identifies the same commercially available materials as being suitable for the present invention (see, e.g., lines 21-23 of page 17 of the specification). The examiner therefore submits these commercially available materials meet the requirements of the present claims.
Alternatively, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the chain lengths of the polyamide sequence over the range taught by Zhang, including over those corresponding to PA 6, PA 11, PA 6/11, PA 6/12, etc., as well as vary the chain length of the polyoxyalkylene glycol, including PEG and PTMG, to provide a PEBA in accordance with Zhang’s teaching, and thereby arrive at the presently claimed invention.
Regarding claim 5:
Polyamides noted above meet the claimed number of carbon atoms.
Regarding claims 6-7:
Although the present claim further limits the identity of the additive, the claim does not require its presence (i.e., 0% by weight). Therefore, Zhang meets the claimed requirements.
Regarding claim 8:
Zhang discloses providing the composition and subsequently producing (manufacturing) the part of a shoe [0033; 0036]. Given that the examiner considers the part of the shoe to be the “single-material footwear item” as presently claimed, the formation of the part simultaneously assembles and forms “the finished footwear item”.
Regarding claim 9:
See the rejection of claim 1 for why it would have been obvious to one of ordinary skill in the art to vary the amounts of components used to make Zhang’s part of a shoe.
Regarding claim 12:
Although Zhang does not disclose a process as claimed, note 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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Zhang meets the requirements of the claimed composition, Zhang clearly meet the requirements of present claim. Furthermore, the examiner notes the claim broadly requires the claimed composition to be able to be obtained (“obtainable”) from the claimed process.
Regarding claims 14-15:
Zhang discloses the manufacture of part of a shoe consisting of the claimed composition, which meets the requirements of a single-material footwear item as discussed above.
Claim(s) 8-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US 2013/0172484) in view of Sahanga et al. (WO 2020/201370).
Regarding claims 8-9:
Zhang discloses a composition and a part of footwear made therefrom as previously explained.
Zhang is silent with regard to footwear wherein all components of the footwear (e.g., an entire shoe) comprise a single material or a method of making such footwear. (This is an alternative interpretation of what the present claim encompasses, which has been provided in the interest of compact prosecution.)
Such footwear was known in the art to have utility and methods of making such footwear was also known in the art. For example, Sahanga discloses a method of recycling a shoe, wherein the shoe comprises various components made from the same material class (abstract; 1:5+; 2:14+). In particular, the material class comprises polyamide (4:11+). Further see where Sahanga describes various components of a shoe can be made from the polymer (5:1-7:23). The use of one class of material for all the components provides for improved recycling (2:30+).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use known polyamide compositions, including those of Zhang which overlap in scope with the claimed compositions, to make the various components of a piece of footwear and further assemble those components together to form a finished footwear item having a single class of material to permit improved recycling of the footwear as taught by Sahanga.
Regarding claims 10-11:
Sahanga discloses a method of recycling the footwear by milling (grinding) the shoe to form particles, heating until the particles are melted, and then extruding into pellets (2:14+; 2:30+). The method further comprises adding new material (3:13+). The shoes are worn (used) (9:31+). The examiner submits the worn shoes are broadly “clean” given that the claim does not establish a standard of cleanliness, nor does the claim require a step of cleaning.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use known polyamide compositions, including those of Zhang which overlap in scope with the claimed compositions, to provide a finished footwear item having a single class of material as taught by Sahanga and described above, and further use the recycling process described by Sahanga to provide the environmental and material benefits described by the reference.
Regarding claims 12-13:
The recycled polymer composition resulting from the combination of Zhang and Sahanga described above meets the claimed limitations.
Regarding claims 14-15:
Sahanga further teaches forming a new shoe from the recycled material (2:30+).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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