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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 14, 2025 has been entered.
Response to Amendment
The response filed on July 14, 2025, has been entered. Claims 2 – 8, 10, 12, 13, 15, 16, 18 – 24, 26, 28 – 31, and 34 – 40 have been cancelled. Claims 1, 9, 27, 56, and 57 have been amended and no claims have been added. Claims 1, 9, 11, 14, 17, 25, 27, 32, 33, 41, 56, and 57 are pending. Claims 27, 32, 33, and 41 are withdrawn from consideration as being drawn to a nonelected invention.
The cancellation of claims 7, 8, 37, 39, and 55 renders moot the rejection to those claims set forth in the previous Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 9, 11, 14, 17, 25, 56, and 57 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. As set forth previously, the disclosure fails to teach one skilled in the art how to make a carpet composition with a test rating of a 3 or 4. The applicant argues that a working example exists in the disclosure and different carpet constructions and compositions are well known in the art, that one with ordinary skill in the art would only need to preform limited experimentation which would be undue to produce the claimed invention (response, page 7). However, the applicant does not specifically responds to any of the reasons set forth in the previous Office Action.
To receive a patent, particularly one based on an improvement to how an item functions, it is required that the applicant provide sufficient teaching to make clear to one with ordinary skill in the art how to produce the claimed property. In Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), a case which defined the subject matter by its function, the Supreme Court, found that the specification does not always need to "describe with particularity how to make and use every single embodiment within a claimed class." Id. at 610-11. However, "[i]f a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class….The more one claims, the more one must enable." Id.
And while [t]he specification may require a reasonable amount of experimentation to make and use the invention and what is reasonable will depend on the nature of the invention and the underlying art. For example, "it may suffice to give an example (or a few examples) if the specification also discloses some general quality . . . running through the class that gives it a peculiar fitness for the particular purpose" and "disclosing that general quality may reliably enable a person skilled in the art to make and use all of what is claimed, not merely a subset." Id. at 611 (internal quotations omitted). However, the Supreme Court found that Amgen failed to enable all that it claimed, even if allowing for a reasonable degree of experimentation. Thus, the disclosure needs to give some direction and guidance that shows one of ordinary skill in the art to choose components or combine components together result in the function, even if some experimentation may be needed. In the present disclosure, the applicant has provided no discussion explicitly about how to choose adhesives so that the carpet structure would be more likely to have a VELCRO rating of 3 or 4 instead of 1 or 2, even though the results show a lot of the test subjects have a VELCRO rating of 1 or 2 and only has a 3 and one has a 4. The disclosure does not addressed why some samples were better than others.
Further, the applicant’s example does not provide sufficient disclosure with regards to specific pile structure being tested. The VELCRO testing is placed on the pile surface and directly interacts with the pile surface, but the examples only recite a general description of the pile structure, i.e., 100% PET, 100% PET loop, commercial, or WD cutpile, without any disclosure as to how each pile is made. It is not specifically clear that one 100% PET pile is exactly the same as the other. In fact, the carpet construction in samples 1 – 3 weighs 31.99 opsy while the carpet of sample 4 is 34.24 opsy and the carpet of sample 5 is 33.46 opsy without the adhesive weight. Further, the disclosure does not discuss or teach any preferences or details required in the pile structure to produce an improved VELCRO rating. Additionally, the examples include inconsistencies that make it uncertain what materials are present in the different samples. For instance, Table 1 describes the hotmelt adhesive, with the EVA based adhesives being Reynolds 54-235A, Reynolds 54-2350, Reynolds 54-235, Ateva 1880A, Ateva 2842A, and Ateva2850A. However, in Table 2 sample 5 uses Reynolds 54-235A2 and sample 9 and 10 Reynolds 54-235C adhesive. Which adhesives in Table 1 do these correspond to? Or are these different adhesive altogether? Further, Table 5 does not even provide the VELCRO Rating results for all the samples. And sample 4 is listed as having a hot melt application weight of 5.6. This was the weight for sample 5 in Table 2 not sample 4. And sample 4 which is within the claimed range is not listed in Table 5. Does this mean it didn’t pass the test?
And in addition to all the inconsistencies, the results provided by the applicant in the disclosure shows that one particular combination provides a VELCRO Rating or 4, with an adhesive weight of 5.6, and one VELCRO Rating of 3, with an adhesive weight of 5.8. Would the Reynolds 54-235, Reynolds 54-235A, and Reynolds 54-235A adhesives get VELCRO ratings of 3 or 4 for any carpet construction when applied at any weight between 4.0 and 6.0 opsy? This is not addressed in the disclosure? And do none of the Ateva adhesives produce the claimed rating at all is it all weight dependent?
In light of the above discussion does the working example cited by the applicant provide clarity to one in ordinary skill in the art how to make the invention with a VELCRO rating of 3 or 4 for EVA adhesives. While one of ordinary skill in the art could possibly use the general carpet construction features to reproduce example 4, 5, or 11, there is no discussion of what properties are useful in the EVA adhesive to improve the likelihood of getting an improved rating. Further, the adhesives are recited by Tradenames which are not required to always reference the same composition. Thus, it is necessary for the applicant to disclose which features of the adhesive are more likely to improve the final property so one of ordinary skill in the art can choose other compositions should the formula change.
Even the small sampling of results provided by the applicant show that changes in materials, carpet construction and weights can provide a wide range of VELCRO ratings. Thus, the property is not easily predictable, and is a result of various components working together to prevent fuzz from forming on the surface of the carpet. If it was just the adhesive being applied at a minimum level than samples with Reynolds 54-235 adhesive of greater than 6.0opsy would have the improved rating. However, other factors influence the test and make the results unpredictable. Therefore, the lack of teaching about choosing materials and the inconsistencies in the examples and the small amount of samples that meet the claimed limitation show the property is complex and enough information has not been provided by the inventor to teach one of ordinary skill in the art how to choose a combination of components so that one would be more likely to produce a VECRO Rating of 3 or 4 instead of 1 or 2.
Additionally, the prior art teaches VELCRO testing on various carpet samples as shown in Coon (2018/0355553) or Bieser et al. (2005/0266206). These disclosures suggest that it is more than just adhesive weights added to a carpet that would impact the rating. Bieser et al. discloses that in general there is not a direct relationship between the weight of an adhesive coatings and the VELCRO rating (see Tables 6 – 8 and 14 – 17). Bieser et al. teaches that the carpet layer can be pretreated as well to influence the VELCRO rating of the end product. Thus, while the rating is known in the art, it is more than just the adhesive layer that will impact the ratings. The disclosure does not directly address what carpet constructions or carpet treatments should be used to improve the VELCRO rating of the finished product. Therefore, the disclosure provides no specific direction for how to choose the carpet structure used in the end product and the working examples fail to specifically address the carpet structure such that one of ordinary skill in the art would be able to make an identical sample. Therefore, the disclosure does not provide sufficient direction so that one of ordinary skill in the art could produce the claimed product.
Further, as suggested by the variation in the results of the prior art such as Bieser et al., the features such as backing adhesive weight or tuft bind strength are not by themselves enough to indicate the VELCRO rating of a sample. For instance, the samples in Table 15 have various resin coating weights and a range of VELCRO ratings, but VELCRO rating does not improve as the resin coating decreases. Nor, is the VELCRO rating proportional to the tuft bind strength. Thus, other features such as the type of pile or carpet construction and pre-treatments will also impact the VELCRO rating. One of ordinary skill in the art would need to experiment with various combinations of pile yarns, carpet constructions, backing structure and pre-treatment in the claimed invention to determine which carpet structures would produce the claimed rating with only between 4.0 to 6.0 opsy adhesive. Therefore, getting a good VELCRO rating can be somewhat unpredictable since multiple factors can impact the final rating, the disclosure has not provided sufficient teaching for one of ordinary skill in the art to specifically make a product commensurate in scope with the claimed invention, i.e., a carpet with a hot melt adhesive in an amount of between 4.0 to 6.0 opsy and a VELCRO rating of 3 or 4. Further, as discussed above, while the presence of examples show that the combination claimed is possible to produce, the lack of direction in the examples make it impossible to reproduce the examples. Thus, the claimed invention would require undue experimentation to make samples have the claimed structure recited in claim 1. Therefore, claims 1, 9, 11, 14, 17, 25, and 56 – 57, do not comply with the enablement requirement that requires the disclosure to teach those of ordinary skill in the art how to make the full scope of the claimed invention.
Claim Rejections - 35 USC § 103
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(s) 1, 9, 11, 14, 17, 25, 56, and 57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Irwin, Sr. (5,612,113) in view of Coon (2018/0355553) or Bieser et al. (2005/0266206).
Irwin discloses a carpet comprising pile yarn tufted into a primary backing, a secondary backing bonded thereto, and a liquid impervious thermoplastic film bonded to the backside of the secondary backing or bonded between the tufted primary backing and the secondary backing (abstract). The film is laminated directly to either the primary or secondary backing by a hot melt thermoplastic adhesive or other non-aqueous adhesive (abstract, col. 2, lines 14-19, col. 3, lines 21-24 and line 59-65, and Figure 3). When the film is laminated between the primary and secondary backings, the tufted primary backing is coated with the hot melt adhesive, wherein the hot melt acts as precoat to secure tufts to the primary backing and also serves to bond the film to said primary backing (abstract and col. 2, lines 9-19). The film may comprise polyethylene, polypropylene, polyurethane, polyester, polyvinyl chloride, or combinations thereof (col. 2, lines 46-50). Said film has a thickness of 1-5 mils (0.001 – 0.005 inch) (col. 2, lines 53-56). The hot melt adhesive may be polyethylene, ethylene vinyl acetate (EVA) copolymer, polyamide, polyester, or polypropylene (col. 3, lines 8-11).
Irwin teaches the hot melt adhesive precoat is heated to maintain said hot melt adhesive in liquid form, said hot melt is coated onto the back of the carpet, the barrier film is fed with the adhesive coated carpet to a pair of nip rollers to laminate said film to said carpet, and the laminated carpet is cooled to solidify (col. 3, lines 44-49).
Specifically, in one embodiment, the thermoplastic film is laminated to the primary backing via the hot melt adhesive, which acts as a precoat agent for the tufted primary backing as well as the adhesive for lamination of the thermoplastic film (col. 3, lines 21-24 and 63-65). A secondary backing may be applied over the film via another layer of hot melt adhesive (col. 3, lines 65-67) to provide a carpet composition comprising, in order, a tufted primary backing, a first hot melt adhesive layer, a liquid impervious (i.e., fluid barrier) film, a second hot melt adhesive layer, and a secondary backing. It is noted that the secondary backing may be added and is not required. Thus, the carpet can be made with only the not melt adhesive and film layer on the back side of the carpet.
While the Irwin reference teaches adding an adhesive to the backing layer Irwin fails to teach that the hot melt layer having an adhesive amount between 4.0 and 6.0 opsy. As set forth above, Irwin teaches the hot melt adhesive acts as a precoat adhesive in the embodiment wherein the film is laminated to the primary backing. Coon is drawn to carpet constructions having adhesive coating. Coon discloses that the precoat composition can be applied in an amount from greater than about 4 opsy to less than 30 opsy (paragraph 109). Further, the examples teach that the precoat is added in amounts of 6 opsy to 10.5 opsy with high VELCRO ratings. Additionally, Bieser et al. is drawn to carpet construction. Bieser et al. discloses that the extrusion coating (which is considered to be equivalent to a hot melt adhesive layer) is added in an amount between 4 and 30 opsy (paragraph 120). The examples include hot melt coating as low as 3.9 opsy and 5.5 opsy (Tables 4 – 17). Thus, it would be within the level of ordinary skill in the art to apply the hot melt layer is a level of between 4 to 6 opsy to create a backing with good delamination and tuft bind properties as shown in the examples of Bieser et al. or Coon.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the hot melt adhesive of Irwin in an amount of about 4-6 ounces per square yard, as disclosed in Coon or Bieser et al., to ensure the hot melt adhesive layer functions properly as a precoat (i.e., wets out and partially encapsulates the back stitches). Such a modification would have yielded predictable results to the skilled artisan (i.e., provide sufficient tuft lock and sufficient bonding of tufted back stitches to the laminated film.
Although the limitations of a VELCRO rating of 3 – 4 with an adhesive of 4 to 6 opsy and tuft bind strength are not explicitly taught by Irwin, Sr., Coon, or Bieser et al, it is reasonable to presume that said limitations would be met by the combination of the two references. Support for said presumption is found in the use of similar materials (i.e., layers, a carpet with pile yarn coating with a hot melt coating and a film layer) and in the similar production steps (i.e., coating the back of the primary backing and the fibers and laminating the laminate to the film layer) used to produce the carpet structure. The burden is upon the Applicant to prove otherwise. Thus, claims 1, 9, 11, 14, 17, 25, 56, and 57.
Claims 1, 9, 11, 14, 17, 55, and 56 are rejected under 35 U.S.C. 103 as being unpatentable by Clark et al. (US 2005/0147786) in view of Coon (2018/0355553) or Bieser et al. (2005/0266206).
Clark discloses a carpet comprising a pile yarns tufted into a primary backing, an adhesive layer, and an impermeable hydrophobic barrier bonded to the primary backing via said adhesive layer (sections [0015]-[0019]). Suitable face yarns may be made of polyolefins, polyamides, and polyesters, preferably polypropylene, polyester, and nylon (section [0020]). Suitable adhesives may be hot melt adhesives and include EVA, polyester, and polyolefins (sections [0023] and [0025]). The barrier is laminated directly via the adhesive layer to either the rear of the primary backing or the rear of the secondary backing to provide a fluid barrier to liquid spills (sections [0024] and [0025]). Note such film lamination processes necessarily include application of heat and pressure. In a preferred embodiment, the barrier to laminated to the rear of the primary backing via a first adhesive layer that acts as a precoat and then a secondary backing is adhered to the rear of the barrier via another adhesive layer (sections [0024], [0025], and [0028]). The barrier may comprise a film of polyethylene, polypropylene, polyester, polyurethane, polyvinyl chloride, or combinations thereof (section [0026]). The barrier may be an unsupported film or may be a composite structure formed of a film and woven or nonwoven fibers (section [0026]). The film may have a thickness of 1-5 mils (section [0026]). Clark teaches practice of the invention includes all known face yarns, backing materials, and adhesive binders, “none of which constitute a limitation to the practice” (section [0023]).
While the Clark reference teaches adding an adhesive to the backing layer Clark et al. fails to teach that the hot melt layer having an adhesive amount between 4.0 and 6.0 opsy. As set forth above, Clark et al. teaches the hot melt adhesive acts as a precoat adhesive in the embodiment wherein the film is laminated to the primary backing. Coon is drawn to carpet constructions having adhesive coating. Coon discloses that the precoat composition can be applied in an amount from greater than about 4 opsy to less than 30 opsy (paragraph 109). Further, the examples teach that the precoat is added in amounts of 6 opsy to 10.5 opsy with high VELCRO ratings. Additionally, Bieser et al. is drawn to carpet construction. Bieser et al. discloses that the extrusion coating (which is considered to be equivalent to a hot melt adhesive layer) is added in an amount between 4 and 30 opsy (paragraph 120). The examples include hot melt coating as low as 3.9 opsy and 5.5 opsy (Tables 4 – 17). Thus, it would be within the level of ordinary skill in the art to apply the hot melt layer is a level of between 4 to 6 opsy to create a backing with good delamination and tuft bind properties as shown in the examples of Bieser et al. or Coon.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the hot melt adhesive of Clark et al. in an amount of about 4-6 ounces per square yard, as disclosed in Coon or Bieser et al., to ensure the hot melt adhesive layer functions properly as a precoat (i.e., wets out and partially encapsulates the back stitches). Such a modification would have yielded predictable results to the skilled artisan (i.e., provide sufficient tuft lock and sufficient bonding of tufted back stitches to the laminated film.
Although the limitations of a VELCRO rating of 3 – 4 with an adhesive of 4 to 6 opsy and tuft bind strength are not explicitly taught by Clark et al., Sr., Coon, or Bieser et al, it is reasonable to presume that said limitations would be met by the combination of the two references. Support for said presumption is found in the use of similar materials (i.e., layers, a carpet with pile yarn coating with a hot melt coating and a film layer) and in the similar production steps (i.e., coating the back of the primary backing and the fibers and laminating the laminate to the film layer) used to produce the carpet structure. The burden is upon the Applicant to prove otherwise. Thus, claims 1, 9, 11, 14, 17, 25, 56, and 57.
Response to Arguments
Applicant's arguments filed July 14, 2025 have been fully considered but they are not persuasive. The applicant argues that the prior art fails to teach having a VELCRO rating of 3 or 4. While the prior art does not teach the claimed VELCRO rating, it is held that as long as there is evidence of record establishing inherency, failure of those skilled in the art to contemporaneously recognize an inherent property, function or ingredient of a prior art reference does not preclude a finding of anticipation. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999). As set forth above, The combination of references teach using adhesive added in ranges of 4.0 to 6.0 opsy which result in good properties in the end products. And while Bieser and Coon disclose examples with excellent VELCRO ratings, the samples were tested on a scale of 1 – 10 and cannot be directly correlated to the applicant’s scale. However, the samples provided in the prior art had ratings of 8 and 9 suggesting that the combination would produce VELCRO ratings of 3 or 4 when using the applicant’s rating scale. Therefore, the rejection provided sufficient reasoning for indicating that the property would be present in the combination of the references set forth above. The applicant has not provided evidence to show why the combination of the references as set forth in the rejection wouldn’t have the claimed properties.
The applicant argues that the evidence provided in Table 5 of the disclosure is sufficient to show that the claimed rating would be unexpected. However, as set forth above these samples have inconsistencies that make it unclear to know what samples are being tested. And while the applicant’s evidence shows that Sample 4 and 11 have improved ratings it is not sufficient to show that the improved ratings are directly related to the adhesive composition and adhesive structure in the carpet, as recited in the claim, or if other factors might be impacting the Velcro ratings since various combinations of carpet samples and adhesive materials are being used. If other carpet or adhesive type features were changed in the other samples with adhesive weights outside of the claimed range, would these samples also have the improved VELCRO rating? If the samples with the improved rating were made with adhesive weights outside of the claimed range would the VELCRO ratings fall below 3? The evidence changes multiple variables in each sample and does not clearly establish that the specific weight range of EVA adhesives in the backing structure produces the improved result.
Further, the two samples with the claimed rating list that the adhesive is applied in a weight of 5.6 and 5.6. The evidence is not commensurate in scope with the entire claimed range. What would happen to samples with an adhesive weight of 5.0, 4.5, 4.0, or 6.0? Therefore, the data provided by the applicant is not sufficient to show the unexpected results are for the entire range. Further, the evidence is not sufficient to show that the improvement is for all EVA adhesives since it only shows the improved result two types of Reynolds adhesives and not any other adhesive. Therefore, the argument of unexpected results is not sufficient.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jenna Johnson whose telephone number is (571)272-1472. The examiner can normally be reached Monday, Wednesday, and Thursday, 10am - 4pm.
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jlj
September 6, 2025
/JENNA L JOHNSON/Primary Examiner, Art Unit 1789