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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on May 26, 2026 is acknowledged.
Claim 18 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 26, 2026.
Double Patenting
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1-16 of copending Application No. 18/622399 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because App. 18/622399 teaches all the instant limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: means of the embossing unit in Claims 11-12 which is being interpreted as an embossing unit and means of a cooling roller in Claim 12 which is being interpreted as a cooling roller.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-16 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, Line 7 recites “a non-woven fabric” and Claim 16, Line 3 recite “a non-woven fabric sheet”. It is unclear whether these refer to the same or different non-woven fabrics. For examination purposes, it will be assumed these refer to different non-woven fabrics.
Claim 2, Line 2 recites “the material of the heated film”. There is insufficient antecedent basis for this limitation as the film being heated was not previously recited and the material of the film itself was not previously recited. Examiner notes the transferring heat step appears to be applied to the carrier material and thus, it is unclear if and when the film is heated. For examination purposes, the limitation in Claim 2 will be interpreted as the film is heated during the step of transferring heat and fusing.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: how the film and non-woven fabric can be fed as a film or non-woven fabric composite. For examination purposes, it will be assumed the limitation should read “the film and non-woven fabric can be fed as a composite”.
Regarding Claims 7, 10, 13, and 15, the phrases "preferably", “more preferably”, and “even more preferably” render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 13 and 15 recite the limitations “the thermoplastic elastomers” (plural) and “the thermoplastic olefins” (plural). There is insufficient antecedent basis for these limitations in the claim as the limitations were previously recited as “a thermoplastic elastomer” (singular) and “a thermoplastic olefin” (singular). For examination purposes, the limitations will be interpreted as “the thermoplastic elastomer” (singular) and “the thermoplastic olefin” (singular).
The remaining claims are also rejected by virtue of their dependency on Claim 1.
Claim Rejections - 35 USC § 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 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 1-11 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Coon et al (PGPub 2019/0352845) in view of Kim et al (PGPub 2013/0101756, referred to hereinafter as Kim ‘756).
Regarding Claim 1, Coon teaches a method for producing an artificial turf (Abstract; [0002]), the method comprising the steps of:
providing a carrier material having a top and a bottom (Fig. 2- primary backing 204; Fig. 6- primary backing 604);
providing a plurality of fibers (Fig. 2- face fibers 202; Fig. 6- turf yarn 602), wherein each fiber comprises two ends extending from the top of the carrier material ([0136]- discussing cut pile turf), and comprises a connected region arranged in a loop-like manner at the bottom of the carrier material (Fig. 2- loop of face fibers 202 under primary backing 204);
providing a film (Fig. 6- polymer film 606);
providing a non-woven fabric ([0090]- non-woven secondary backing);
feeding the carrier material with the fibers to a heated rotating calender roller (Fig. 6- lamination rolls 608);
wherein the film and the non-woven fabric are fed between the bottom of the carrier material with the connected regions of the fibers and the heated rotating calender roller ([0086]- the secondary back is present between the primary backing and the film prior to lamination; Fig. 6);
guiding the carrier material with the fibers over at least one sub-region of the surface of the heated rotating calender roller (Fig. 6- lamination rolls 608), wherein the connected regions of the fibers and the bottom of the carrier material face the calender roller (Fig. 6- bottom lamination roll 608);
during the guiding of the carrier material with the fibers over the at least one sub-region of the surface of the heated rotating calender roller: transferring heat from the heated rotating calender roller to the carrier material with the fibers [0143],
wherein the method further comprises: embossing a bottom of the artificial turf (Fig. 6- embossing tool 612), wherein the embossing forms a recessed region of the bottom of the artificial turf ([0147]- embossing forms a recessed region); and
removing and cooling the artificial turf (Fig. 6- previously heated and finished turf is necessarily cooled and removed).
Coon teaches laminating a film onto the backstitched primary backing [0143] but does not specify fusing the connected regions of the fibers with the bottom of the carrier material, to form the artificial turf.
Kim ‘756 teaches an alternative method of forming artificial turf (Abstract) wherein the connected regions of the fibers with the bottom of the carrier material are fused to form the artificial turf [0029] to solidly fix and stabilize the backstitches [0013] and increase tensile strength and durability of the pile yarns [0080].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Coon to include fusing the backstitches as taught by Kim with reasonable expectation of success to solidly fix and stabilize the backstitches [0013] and increase tensile strength and durability of the pile yarns [0080].
Regarding Claim 2, Coon further teaches the secondary backing (non-woven fabric) can be inserted in between the primary backing and the film prior to lamination [0086] thus meeting the instant limitation of in the step of transferring heat and fusing, the material of the heated film diffuses into the non-woven fabric, whereby a form-fitting connection is established.
Regarding Claim 3, Coon further teaches the secondary backing can be applied to the exposed underside of the laminated film (and thus are supplied separately) [0086] thus meeting the instant limitation of the film and the non-woven fabric are fed as two separate sheets.
Regarding Claim 4, Coon further teaches the secondary backing can be applied to the exposed underside of the laminated film [0086] thus meeting the instant limitation of the non-woven fabric is fed after feeding the film.
Regarding Claim 5, Coon further teaches the secondary backing (non-woven fabric) can be inserted in between the primary backing and the film prior to lamination [0086] thus meeting the instant limitation of the film is coated with the non- woven fabric prior to the step of feeding the carrier material or wherein the non-woven fabric is laminated onto the film prior to the step of feeding the carrier material.
Regarding Claim 6, Coon further teaches the secondary backing (non-woven fabric) can be inserted in between the primary backing and the film prior to lamination [0086] thus meeting the instant limitation of the film and the non-woven fabric are fed as a composite.
Regarding Claim 7, Coon further teaches the bottom of the artificial turf has a main plane (Fig. 2- bottom plane of primary backing); wherein the main plane is a plane that contains one or more surface regions of the bottom of the artificial turf (Fig. 2- bottom plane of primary backing);
Coon further teaches forming a desired embossing pattern with an embossing tool [0147] thus meeting the instant limitation of the one or more surface regions which are contained in the main plane have a total surface area which is at least 30% of the total surface area of the bottom of the artificial turf; and the recessed region is preferably recessed relative to the main plane of the bottom of the artificial turf, or wherein the recessed region is preferably recessed relative to the main plane of the bottom surface of the turf.
Regarding Claim 8, Coon further teaches the structure of the primary backing can have any structure and be any thickness to provide the desired results [0066] thus meeting the instant limitation of the artificial turf contains a raised region on its bottom; wherein the raised region has a height from a plane, downwards, wherein the plane contains one or more surface regions of the bottom of the artificial turf; wherein the raised region extends in a length along a direction on the bottom of the artificial turf; wherein the length is greater than the average distance between two adjacent fibers.
Coon further teaches forming a desired embossing pattern with an embossing tool [0147] thus meeting the instant limitation of the embossing reduces the height of the raised region from the plane in portions and/or interrupts the raised region in portions.
Regarding Claim 9, Coon further teaches forming a desired embossing pattern with an embossing tool [0147] thus meeting the instant limitation of the embossing forms a plurality of recessed regions of the bottom of the artificial turf, and wherein the recessed regions are at an average distance from one another of at most 0.5 cm, at most 1 cm, at most 2 cm, or at most 5 cm.
Regarding Claim 10, Coon further teaches the structure of the primary backing can have any structure and be any thickness to provide the desired results [0066] thus meeting the instant limitation of a maximum height of shifts of the carrier material of the artificial turf on the top of the artificial turf at a predetermined temperature of the artificial turf is less than 2 cm, preferably less than 1 cm, more preferably less than 0.5 cm, even more preferably less than 0.1 cm; wherein the height is a height of a flat surface region of the top of the carrier material of the artificial turf; and wherein shifts include surface regions of the top of the carrier material of the artificial turf which are raised relative to a flat surface region of the top of the carrier material.
Coon further teaches preheating the intermediate structure between 100-200°F [0143] thus meeting the instant limitation of the predetermined temperature is at least 35°C, preferably at least 40°C, more preferably at least 50°C, even more preferably at least 60°C, even more preferably at least 70°C.
Regarding Claim 11, Coon further teaches the calender roller contains an embossing unit (Fig. 6- embossing tool 612), and wherein the bottom of the artificial turf is embossed by means of the embossing unit of the calender roller ([0147]- discussing formation of the embossed pattern).
Regarding Claim 13, Coon further teaches the material of the film comprises at least one of: a thermoplastic elastomer, or a thermoplastic olefin [0068] wherein a mass fraction of the thermoplastic elastomers, and the thermoplastic olefins makes up, in total, at least 50% of a mass of the film, preferably at least 60%, 70% or 80%, more preferably at least 90% [0068].
Regarding Claim 14, Coon further teaches the film may comprise a plurality of layers [0077] thus meeting the instant limitation of the film comprises a first layer, a second layer and a third layer.
Coon further teaches the carrier material and the first layer and the third layer are formed from substantially the same type of material [0084]; and the composition may comprise recycled material [0054] thus meeting the instant limitation of the second layer comprises recycled artificial turf scrap.
Regarding Claim 15, Coon further teaches the material of the film layers comprises at least one of: a thermoplastic elastomer, or a thermoplastic olefin [0068] wherein a mass fraction of the thermoplastic elastomers, and the thermoplastic olefins makes up, in total, at least 50% of a mass of the film, preferably at least 60%, 70% or 80%, more preferably at least 90% [0068].
Regarding Claim 16, Coon further teaches producing a first and a second artificial turf sheet (Fig. 2- produced turf); providing a non-woven fabric sheet ([0090]- non-woven secondary backing; [0117]); applying a liquid adhesive to the non-woven fabric sheet ([0086]- applied with a separate adhesive as known in the art); and connecting the first and second artificial turf sheet to a non-woven fabric in such a way that the first and second artificial turf sheet rest on the non-woven fabric and are flush with one another [0086].
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Coon et al (PGPub 2019/0352845) in view of Kim et al (PGPub 2013/0101756, referred to hereinafter as Kim ‘756) in view of Kim et al (2020/0354888, referred to hereinafter as Kim ‘888).
Regarding Claim 12, Coon further teaches feeding the artificial turf to an embossing roller which comprises an embossing unit, wherein the bottom of the artificial turf is embossed by means of the embossing unit of the embossing roller, and wherein heat is transferred to the artificial turf prior to the embossing, or wherein the bottom of the artificial turf is embossed prior to removal and cooling of the artificial turf (Fig. 6- the embossing necessarily occurs before finishing cooling/removal).
Coon and Kim ‘756 do not specify the artificial turf is cooled by means of a cooling roller; wherein the artificial turf is fed to the cooling roller; and wherein the cooling roller contains an embossing unit, and the bottom of the artificial turf is embossed by means of the embossing unit of the cooling roller.
Kim ‘888 teaches an alternative method of embossing a substrate (Abstract) wherein the substrate is cooled by means of a cooling roller; wherein the substrate is fed to the cooling roller; and wherein the cooling roller contains an embossing unit, and the bottom of the substrate is embossed by means of the embossing unit of the cooling roller [0012] in order to maintain an appropriate temperature to effectively perform the embossing [0012].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Coon and Kim ‘756 to include a cooling embosser as taught by Kim ‘888 with reasonable expectation of success to maintain an appropriate temperature to effectively perform the embossing [0012].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrianna Konves whose telephone number is (571)272-3958. The examiner can normally be reached Monday-Friday 8:00-4:00 MST (Arizona).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.K./Examiner, Art Unit 1748 6/9/26
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
Prosecution Insights