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
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/17/24 has been entered.
Response to Amendment
2. Applicant’s amendments and accompanying remarks filed 9/23/24 have been fully considered and entered. Claim 15 has been amended, claim 18 has been canceled and new claims 21-23 have been added as requested. Applicant’s amendments are not found patentably distinguishable over the prior art of record and Applicant’s arguments are not found persuasive of patentability for reasons set forth below.
Response to Arguments
3. Claim(s) 15,16 and 19-20 stand rejected and new claims 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Rus, US 2018/0347215.
With regard to claim 15, Applicants argue that the cited prior art of Rus does not teach the limitation of “wherein one end portion of each of the first material and the second material comprises a first geometric shape corresponding to a shape of the cured molding agent and an opposing end of each of the first material and the second material that comprises a different geometric shape than the first geometric shape.” These arguments are not found persuasive.
With regard to the limitations pertaining to the shape and orientation of the “molded curing agent”, Rus clearly teach that front and back pieces can be permanently (cured) joined via adhesive. According to Applicants specification the “molded curing agent” can comprise glue, latexes, epoxies, thermosetting or thermoplastic materials. Said “molded curing agent” can be molded under force/pressure to a desired geometric shape and cured to permanently maintain that desired shape. Rus teach two separate material pieces (figure 1, e.g., 104 and 106). As such, the Examiner considers the limitation of a first material and a second material having first and second surfaces respectively met. For example, the Examiner considers material 104 sufficient to meet the limitation of a first material with a first surface and material 106 sufficient to meet the limitation of a second material with a second surface. To that end, the Examiner maintains that when the adhesive is applied between the “end portions” of the first and second material pieces (104 and 106) of Rus, a permanent seam/join and geometric shape would be produced either by pressing the and/or heating the pieces together. Applicants have also not limited the “molded curing agent” to a specific material and/or molding process conditions (e.g., hot melt, lest costly, heat, pressuring, amount, time etc). As such, Applicant’s arguments are not considered commensurate in scope with the claimed subject matter. "Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906, 69 USPQ2d 1801, 1807 (Fed. Cir. 2004).
With regard to the claimed “one end portion of the first and second material comprising a first geometric shape corresponding to a shape of the cured molding agent”, the Examiner is of the position that once the adhesive is pressed/forced with or without heat between the “end portions” of separate material pieces (figure 12b, 104 and 106), the adhesive material would take the shape (e.g., correspond) of the “end portion” of each of the first and second material pieces (104 and 106). The Examiner interprets the limitation of “corresponding” to mean similar. Rus does not teach or illustrate a continuous layer of adhesive that extends fully between the first and second material pieces (104 and 106) or that any adhesive material extends beyond the outer “end portions” of the first and second material pieces (104 and 106). It is also noted that Applicants have not limited the “molded curing agent” to covering a certain percentage of area between the pieces or applying the “molded curing agent” and/or limited how the adhesive is applied (e.g., continuously, discontinuously) between the pieces (104 and 106). Applicants also have not set forth what amount/percentage of area constitutes an “end portion”. It appears that the “molded curing agent” is applied between “end portions” of the first material and the second material (104 and 106) and pressed (molded) to form a desired shape. “[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). Figures 1 and 12a of Rus appear to illustrate that end portions of first and second material pieces (104 and 106) are joined by adhesive. As such, the Examiner is of the position that the adhesive applied between those “end portions” of the first and second material pieces (104 and 106) would have a first geometric shape “corresponding” to the shape of the “end portions” of first and second material pieces (104 and 106).
With regard to the limitations pertaining to the difference in geometric shapes at the opposing ends of first and second materials (104 and 106), Rus teach two separate material pieces (figure 1, e.g., 104 and 106). As set forth above, the Examiner considers material 104 sufficient to meet the limitation of a first material with a first surface and material 106 sufficient to meet the limitation of a second material with a second surface. It is also clear from figures 1, 12a and 12b that the opposing ends of each first and second material layers (104 and 106) have different geometric shapes from the opposite ends comprising the adhesive material. A difference in geometric shape can include a difference in the length of sides and/or angles. Further, Applicants have not limited the claimed “end portions” to having any particular geometry and/or dimensions. As shown in figure 1,12 and 12b, the side denoted by reference numbers (112a) on first material (106) appears much longer/” different” than the side denoted by reference number (110) on second material (104). The Examiner is of the position that absent limitations directed to a specific geometric shape and/or dimensions, the opposing “end portions” shown in figure 12a (e.g., 110 and 112a) on the first material (104) appear to have differing lengths and from the opposing “end portions” (108 and 112b) on second material 106. As such, the Examiner considers these limitations met. For these reasons, the Examiner maintains that the cited prior art renders the rejected claims obvious.
With regard to claim 23, Rus teach a stair tread covering comprising first and second layers joined together with adhesive or via melted seam (title, abstract, section 0034, 0059, 0085, figures 1-8).
With regard to the length “dimensions” and “perimeters” and relative orientation of such dimensions as recited in claims 21-22, the Examiner is of the position that stair tread covering of Rus teach two separate material layers that have length, width, height, angles and perimeters that are not limiting (0085). It is also noted that Rus teach that material pieces 104 and 106 can be different materials having different perimeters (paragraphs 0087). Absent specific length, width, perimeter dimensions etc, the Examiner is of the position that depending on the size and shape of the stair tread covering desired and person of ordinary skill in the art would recognize that any of these dimensions can be varied. It has been held that the determination of the optimum or workable ranges of said variable that might be characterized as routine experimentation is not patentable. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.)
Claim Rejections - 35 USC § 103
4. 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.
5. Claim(s) 15,16 and 9-20 stand rejected and new claims 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Rus, US 2018/0347215.
Applicant’s arguments have been addressed as set forth above.
The published application issued to Rus teach a stair tread covering comprising first and second layers joined together with adhesive or via melted seam (title, abstract, section 0034, 0059, 0085, figures 1-8). Rus does not specifically teach the claimed cured molding agent; however, the Examiner is of the position that most adhesive resins used to join the first and second layers together can be molded and cured. Rus illustrates a rectangular shape (see figures). The Examiner is of the position that a person of ordinary skill in the art would recognize that the shape of the stair tread could be square or circular depending on desired functionality and/or aesthetics. With regard to the claimed visible seam, Rus illustrates a visible seam (see figure 11). With regard to the claimed molded end or edges having different shapes, Rus illustrates such an embodiment (figure 9).
With regard to claim 23, Rus teach a stair tread covering comprising first and second layers joined together with adhesive or via melted seam (title, abstract, section 0034, 0059, 0085, figures 1-8).
With regard to the length “dimensions” and “perimeters” and relative orientation of such dimensions as recited in claims 21-22, the Examiner is of the position that stair tread covering of Rus teach two separate material layers that have length, width, height, angles and perimeters that are not limiting (0085). It is also noted that Rus teach that material pieces 104 and 106 can be different materials having different perimeters (paragraphs 0087). Absent specific length, width, perimeter dimensions etc, the Examiner is of the position that depending on the size and shape of the stair tread covering desired and person of ordinary skill in the art would recognize that any of these dimensions can be varied. It has been held that the determination of the optimum or workable ranges of said variable that might be characterized as routine experimentation is not patentable. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.)
6. Claim(s) 17 stands rejected under 35 U.S.C. 103 as being unpatentable over
Rus, US 2018/0347215 as applied to claim 15 and further in view of Naka, US 4321294.
The prior art of Rus is maintained as set forth above. Applicants have not presented any new arguments for which to consider.
Rus does not teach the claimed carpet pile attached to the first layer.
The patent issued to Naka teach a stair tread cover comprising a carpet pile surface layer (title, abstract, column 2, 55-65 and figures 1 and 2). It would be obvious to a person of ordinary skill in the art at the time the invention was made to either attach a carpet pile to the first material sheet of Rus or use a carpet pile fabric as the first material cover layer. Motivation to use a carpet pile as the first material is found in the desire to provide a cushion stair tread, a softer stair tread and/or to provide a non-slip stair tread.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached M-F.
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, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789
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