Detailed Office Action
Applicant's amendments and arguments filed on 12/18/2025 have been entered and fully considered. Claims 1-2 are amended. Claims 7 and 22 are cancelled. Claims 3 and 13-14 are withdrawn from examination. Claims 1-6 and 8-21 remain pending.
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 .
Response to Amendments and Arguments
Applicant’s amendment to claim 1 has overcome the objection previously set forth in the non-final office action of 10/2/2025. This objection is withdrawn.
Applicant argument regarding the amended limitation of claim 1(previous claim 22, now cancelled) is not persuasive and the Examiner maintains the rejection.
Applicant states that this rejection is not based on any evidence of record. There is no indication in the present record that an ordinarily skilled artisan would have applied adhesive in four corners and few spots in the case of a light and thin underlay element. In view thereof, the Office's remarks are merely conclusory. In other words, no evidence has been presented indicating that adhesive in four corners and few spots in the middle would in fact be appropriate in the context of an underlay element to a weight-reduced board element comprising at least one groove, as claimed. Instead, it appears that, to arrive at the claimed subject matter, the Examiner has impermissibly used the claimed invention as an instruction manual or 'template' to selectively piece together the teachings of the prior art.
The Examiner never relied on that example to reject previous claim 22. That was a hypothetical example intended to show that determining the amount of adhesive applied between the two pieces (board element and underlay element) is well within the skill of one of ordinary skill in the art. In the non-final office action of 10/2/2025 and for rejections of claims 16, 18, and 22 (now cancelled) that recite various amounts of adhesive applied between the two elements, the Examiner correctly argued that an artisan, when gluing two pieces together, can obviously determine, through routine experimentation, the amount of glue required based on the size and weight of the elements. Determining the amount of glue needed is not innovative or requiring extraordinary skills. One of ordinary skill in the art does not need to refer to prior art to determine the required amount of glue, since the specific dimension and weight of the two elements are unique to the two elements at hand and as discussed before can be easily determined based on few routine tries or experimentation. The Examiner submits that no evidence or prior record is needed for such determination.
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, 8-12, 15-16, 18, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over PERVAN (WO-2014007738-A1), hereinafter PERVAN, in view of IMADA (JP-09144276-A and its English translation), hereinafter IMADA. Note that the italicized text below are the instant claims.
Regarding claims 1, 9-10, and 12, PERVAN discloses A method for attaching an underlay element, to a weight-reduced board element comprising at least one groove, the board element being a panel per se or the board element being dividable into at least one panel, wherein the at least one panel is a floor panel or a wall panel {[abstract], [P2, L3-5], [P5, L1-2] note cutting or dividing panel into several floor panels, [FIG. 6c] 3/4 is the weight-reduce board element with the grooves 19 and 23 is the underlay element that is attached to it}, the method comprising:
providing the board element, wherein a rear side of the board element comprises a groove portion and a remaining portion {[FIG. 6c] 4 is the rear side that has groove portion 19 and the remaining portion is 4},
said groove portion comprising said at least one groove and said remaining portion being provided in a horizontal plane (HP) extending along the rear side of the board element {[FIG. 6c] note that 19/4 extend in a horizontal plane into the page},
wherein said remaining portion is located on a periphery of the groove portion {[FIG. 2c] note the groove portions 19a/b are surrounded by remaining portion of 4},
each of said at least one groove being a recess formed from an essentially planar surface on the rear side of the board element {[FIG. 5b] note recesses 19a-c are formed from an essentially planar surface of the numeral 3},
providing the underlay element, the underlay element being a foam or a cork sheet, and arranging the underlay element on the rear side of the board element, {[FIG. 6c] 23 is provided under 4/3, [P14, L4] note underlay element 23 is foam or cork and as shown above is in the form of a sheet},
wherein the board element comprises at least one layer, said at least one layer comprising a thermoplastic material, and wherein the at least one groove at least partly penetrates the at least one layer {[P9, L10-11] note the core and layer being thermoplastic, [FIG. 6c] note groove 19 penetrates 3}.
wherein the upper side of the underlay element comprises a cover portion and the corresponding residual portion, which are configured to face and to be aligned with the groove portion and the remaining portion, respectively, when the underlay element is attached to the rear side {[FIG. 6c] note part of the underlay element that corresponds to grooves 19 is the cover portion since it faces the groove portion and the rest of underlay element that contacts 4 is the corresponding residual portion that faces the remaining portion of the board 3/4},
wherein the groove portion is separated from and fully circumscribed by a peripheral portion of the rear side of the board element and/or the cover portion is separated from and fully circumscribed by a peripheral portion of the upper side of the underlay element {[FIG. 2c] note the groove portions 19a/b are separated and surrounded by remaining portion of 4 that are located in the peripheral portion of the board}.
PERVAN, however, is silent on the method of attachment of the underlay element to the board element by selectively applying adhesive. The general silence of PERVAN on how the underlay element is attached to the board element prompts one of ordinary skill in the art to look to prior art to determine an appropriate method for this attachment.
In the same filed of endeavor that is related to method for making flooring materials, IMADA discloses applying an adhesive on at least a portion of said remaining portion and/or on at least a portion of a corresponding residual portion of the underlay element, and arranging the underlay element on the rear side of the board element, such that the adhesive contacts the underlay element and the rear side, including between the remaining portion and the corresponding residual portion of the underlay element, and such that the at least one groove is essentially free of adhesive (claim 1) {[0001], [FIG. 1b] note that adhesive 4 is selectively applied to the corresponding residual portion of the underlay element 1 or the remaining portion or the concave part of board element of 6 or 6b, note 4 is between 6 and residual portion of 1, note grooves areas d are free of adhesive},
wherein the adhesive is applied at least on a peripheral portion of the rear side of the board element and/or on a peripheral portion of an upper side of the underlay element (claim 1) {[FIG. 1b] note that the strips 6b at both ends of the edges are considered the peripheral portion}.
wherein the adhesive is applied in a pattern arrangement (claim 9) {[FIG. 1b] note that the strips 6b form a pattern}.
wherein at least two grooves have been discontinuously formed, and wherein said applying of the adhesive comprises: applying the adhesive between the discontinuous grooves, and/or applying the adhesive between corresponding cover portions of the underlay element (claim 10) {[FIG. 1b] note that the strips 6b are the discontinuous groove and the adhesive is applied between the discontinuous grooves, the Examiner note that as disclosed above, PERVAN discloses the plurality of discontinuous grooves 19 in [FIG. 6c]}
further comprising the applying of the adhesive such that no, or substantially no, adhesive is applied on a rear-side portion of the board element and/or an upper-side portion of the underlay element configured to be further processed (portion of claim 12) {[FIG. 1b] note that adhesive 4 is either on 6b or 1}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of IMADA in the method of PERVAN and have attached the underlay element to the board element by selectively applying adhesive to the remaining portion of the grooves.
As discussed above, since PERVAN is silent on the attachment of these two elements, an artisan would have been highly motivated to look to prior art to determine an appropriate method for such attachment. This prior art is IMADA.
Furthermore, such selective application will result in applying only necessary amounts of the adhesive in the remaining portion of the board as illustrated by IMADA {[FIG. 1b] note the limited and only necessary amount of adhesive 4 applied}.
Regarding the last limitation of claim 1 reciting “wherein the applying of the adhesive is performed on at most 95% of said remaining portion and/or of the corresponding residual portion of the underlay element” as shown above, the combination of PERVAN and IMADA teaches application of adhesive to the remaining portion. However, this combination is silent on the extent of such application to be at most 95%.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have fully applied the adhesive so that it meets the remainder limitations of claims 16 and 18, or applied up to 95% of the remaining portion.
The Examiner submits that it is well within the skill of an artisan as how much adhesive needs to be applied to the remaining portions. This can be determined by routine experimentation. For example, if the underlay element 23 of PERVAN {[FIG. 6c]} is light and thin, adhesive in four corners and few spots in the middle may suffice as verified by an experiment. However, if the underlay is heavy, bulky, and thick, application of adhesive on at most 95% of the area may be needed thus meeting this limitation. This is quite obvious to one of ordinary skill in the art as determined by routine experimentation as to the extent of application of adhesive.
Regarding claims 8 and 11, PERVAN discloses wherein the peripheral portion of the rear side of the board element comprises a peripheral portion of the at least one floor or wall panel, into which the board element is configured to be divided and/or wherein the peripheral portion of the upper side of the underlay element comprises a peripheral portion of at least one underlay unit, into which the underlay element is configured to be cut (claim 8), further comprising: cutting said underlay element into at least one underlay unit along at least one cutting portion, and/or dividing said board element into the at least one floor or wall panel, along at least one dividing portion (claim 11) {[P5, L1-2] note cutting and dividing the board that has peripheral portions, [P8, L14], [P9, L29]}.
Regarding claim 15, PERVAN discloses further comprising separating material elements, removed from the underlay element and the board element during or after processing of the board element and the underlay element {[P9, L3-4] note removal of residual material}.
Regarding claims 16 and 18, PERVAN discloses wherein the at least one groove includes at least two grooves (part of claim 16) {[FIG. 6b] note multiple grooves}.
Regarding the remainder limitation of claim 16 “and wherein the adhesive fully circumscribes the groove portion”, and claim 18 “and wherein the adhesive substantially covers an entire extent of the rear side of the board element between the at least two grooves”, as shown under claim 1, the combination of PERVAN and IMADA teaches application of adhesive to the remaining portion. However, this combination is silent on the extent of such application as fully encompassing the groove portion (claim 16) or substantially in-between the at least two grooves (claim 18).
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have fully applied the adhesive so that it meets the remainder limitations of claims 16 and 18.
The Examiner submits that it is well within the skill of an artisan as how much adhesive needs to be applied to the remaining portions. This can be determined by routine experimentation. For example, if the underlay element 23 of PERVAN {[FIG. 6c]} is light and thin, adhesive in four corners and few spots in the middle may suffice as verified by an experiment. However, if the underlay is heavy, bulky, and thick, application of adhesive in the entire remaining area may be needed thus meeting the limitations of claim 16 and 18. This is quite obvious to one of ordinary skill in the art as determined by routine experimentation as to the extent of application of adhesive.
Regarding claim 21, PERVAN discloses wherein the peripheral portion of the rear side comprises the essentially planar surface {[FIG. 2c] note peripheral of 4 are flat and planar}.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over PERVAN and IMADA as applied to claim 1 above and as evidenced by CONNELL (US-2024/0001415), hereinafter CONNELL.
Regarding claim 19, combination of PERVAN and IMADA discloses all the limitations of claim 1 as discussed above. On the limitation of claim 19 reciting “wherein the essentially planar surface on the rear side of the board element includes a surface roughness”, PERVAN discloses that the essentially planar surface on the rear side of the board element has a surface {[FIG. 6c] 4 is the surface and is planar}. As evidenced by CONNELL, any surface, even a smooth surface, has roughness {[0065]}, thus surface of PERVAN board has a roughness.
Claims 2, 4-6, 12, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over PERVAN and IMADA as applied to claim 1 above and further in view of ROTHEN (DE-102006007555-A1 and its English translation), hereinafter ROTHEN. Note that the italicized text below are the instant claims.
Regarding claims 4-6, 12, and 17, combination of PERVAN and IMADA discloses all the limitations of claim 1 as discussed above. Combination of PERVAN and IMADA is, however, silent on how the application of adhesive is made and the control of application of the adhesive.
In the same field of endeavor that is related to adhesive application systems, ROTHEN discloses wherein the method further comprises controlling said applying of the adhesive based on a characteristic of the at least one groove (claims 4-5), wherein said controlling is based on data about the characteristic of the at least one groove (claim 4), further comprising retrieving data about the characteristics of the at least one groove for controlling said applying of the adhesive (claim 5), wherein said data is obtained by scanning the rear side by a scanner (claim 6), controlling the applying of the adhesive (remainder of claim 12), wherein a position of the adhesive applied during the applying is based on the retrieved data (claim 17) {note the selective application of adhesive based on the characteristic of the groove (size of the remaining portion), as discussed above, is disclosed by the combination of PERVA and IMADA, [0001], [0025] note controlling the nozzle of the adhesive system based on width that can be considered a characteristic of the groove, [0012] note the stored information is the data, note CCD camera is the scanner, note detection of targeted glue area}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of ROTHEN in the method of combination of PERVAN/IMADA and have applied the adhesive in a controlled manner and based on data that is retrieved and obtained by a scanner.
As discussed above, since combination of PERVAN and IMADA is silent on how to apply the adhesive in a controlled manner, an artisan would have been highly motivated to look to prior art to determine an appropriate method of application/control. This prior art is ROTHEN.
Furthermore, and as disclosed by ROTHEN, such controlled application of adhesive has the advantage of elimination of errors and quick processing of many substrates automatically one after the other {[0010]}.
Regarding claim 2, PERVAN discloses wherein the characteristic is a shape of the at least one groove and/or an extension of the at least one groove in a first (X) and/or a second (Y) horizontal direction of the board element {[FIG. 6c] note the characteristic of grooves 19 that extend in the direction that goes into the page}.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over PERVAN and IMADA as applied to claim 1 above and further in view of UEMURA (US-2020/0039182), hereinafter UEMURA.
Regarding claim 20, combination of PERVAN and IMADA discloses all the limitations of claim 1 as discussed above. Combination of PERVAN and IMADA is, however, silent on the essentially planar surface on the rear side of the board element being smooth.
In the same filed of endeavor that is related to laminated body, UEMURA discloses wherein the essentially planar surface on the rear side of the board element is smooth {[0038]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of UEMURA in the method of combination of PERVAN/IMADA and have used smooth surface on the rear side of the board of PERVAN.
As disclosed by UEMURA, the advantage of this smooth surface is that the adhesion between the layers is improved and they cannot be separated easily {[0038]}.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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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.
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/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748