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 .
Amendments to claims 66, 80, and 85, the cancellation of claim 75 and 81, and the addition of claim 86.
Claims 66, 68-70, 72-74, 80, and 82-86 are currently pending in the above identified application.
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 66, 68-70, and 72-74 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 66 recites the limitation “wherein the acrylate resin is at least obtained based on a multifunctional acrylate monomer and a multifunctional acrylate oligomer; wherein the mixture is arranged to be gelled by UV-radiation; wherein the mixture is cured by means of a thermally initiated radical crosslinking reaction; wherein the thermally initiated radical crosslinking reaction is arranged to be performed after the gelling by UV-radiation.” It is unclear which limitations are product-by-process limitations and limitation with regards to the intended use of the claimed invention. The limitation claims the mixture is cured by means of a thermally initiated radical crosslinking reaction but then claims the thermally initiated radical crosslinking reaction is arranged to be performed after the gelling by UV-radiation. It is unclear which stages in the process is being claimed – prior to any curing or crosslinking (i.e. before UV-radiation and thermally initiated radical crosslinking), after gelling by UV-radiation but before thermally initiated radical crosslinking reaction, or the finally formed product after the UV-radiation and thermally initiated radical crosslinking reaction. Previous iteration of the claimed were directed towards the fully formed and cured product.
The remaining claims are rejected based on their dependency on rejected claims.
Claim Rejections - 35 USC § 103
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.
Claims 66, 68-69, 73, and 76-78 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2003/0003257 to Kendall in view of US Pub. No. 2019/0211212 to Bongaerts.
Regarding claims 66, 68-69, 73, and 76-78, Kendall teaches a laminate (top layer) comprising a melamine resin impregnated decorative paper layer (décor layer, claim 73) and a curable coating layer (wear layer) bonded to a reinforcing support structure (substrate) (Kendall abstract, para 0015, 0019, 0022-0025, Fig. 2), the combined structure reading on a coated panel with at least a substrate and a top layer applied thereto. Kendall teaches the curable coating layer (wear layer) being a protective acrylic coating that may be cured during thermal and pressure processing of a laminate assembly that protects the laminate surface from fading and damage (Id., abstract), reading on the curable coating layer being a wear layer comprising a thermally cured acrylate resin. Kendall teaches the acrylic material comprising thermal initiator such as dicumyl peroxide (Id., para 0017), reading on the wear layer being obtained based on a mixture containing an acrylate resin and a thermoinitiator (claim 67) and the acrylate resin being cured by means of a thermally initiated radical crosslinking reaction. Kendall teaches the coating layer utilizing solid acrylic oligomers and monomers such as aliphatic urethane diacrylate oligomer (claim 76, multifunctional acrylate oligomer) diluted with 1,6-hexanediol diacrylate monomer (claim 75 multifunctional acrylate monomer; claim 76 difunctional acrylate monomer) and a thermal initiator such as dicumyl peroxide (organic peroxide, claim 68) (Id., para 0016-0017). Kendall teaches the decorative paper layer being provided with a printed pattern or decorative design such as wood (Id., para 0019). Kendall teaches the curable coating layer protecting the decorative paper layer from fading and damage (Id., para 0022) and teaches transparent acrylics being used in the art (Id., para 0003). In order to function as described by Kendall, the cured acrylate layer would necessarily be transparent or translucent or the décor layer would not be visible. Kendall teaches the laminate being bonded to a reinforcing support structure such as plywood hardboard or particle board (Id., para 0025). Kendall teaches the thermal initiator being dicumyl peroxide as well as other thermal initiators (Id., para 0017). Kendall teaches the use of 2-7% by weight dicumyl peroxide (Id., para 0018).
The limitations “wherein the wear layer is obtained from a mixture of an acrylate resin and at least two thermosinitiators; wherein the acrylate resin is at least obtained based on a multifunctional acrylate monomer and a multifunctional acrylate oligomer; wherein the mixture arranged to be gelled by UV-radiation; wherein the mixture is cured by means of a thermally initiated radical crosslinking reaction; wherein the thermally initiated radical crosslinking reaction is arranged to be performed after the gelling by UV-radiation” are interpreted as a product-by-process limitation. Absent a showing to the contrary, it is Examiner's position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even 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, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Kendall does not appear to explicitly teach at least two thermoinitiators, wherein a first thermosinitiator has a different self-accelerating decomposition temperature from a second thermoinitiator of the at least two thermoinitiators with a photoinitiator different from the at least two thermoiniators.
However, Bongaerts teaches a thermosetting coating comprising unsaturated resin comprising ethylenic unsaturation, such as polyester and acrylic resins, curing agents, initiators, and co-initiator suitable for use in flooring (Bongaerts, abstract, para 0018, 0297-0302, 0655). Bongaerts teaches the thermal radical initiator can be one or more thermal radical initiators including organic peroxides (claim 68), including dilauroyl peroxide as well as hydroperoxides, ketone peroxides, peroxyketals, perethers, peroxyesters (also known as peresters), monopercarbonates, peroxydicarbonates, peranhydrides (Id., para 0491, 0267). As the thermal radical initiators are different, there would necessarily have a different self-accelerating decomposition temperature. Bongaerts teaches the co-initiators including onium compounds, sulpho-compounds, and mixtures, such as bis(4-dodecylphenyl)iodonium hexafluorophosphate, bis(4-dodecylphenyl)iodonium chloride, bis(4-dodecylphenyl)iodonium iodide, bis(4-dodecylphenyl)iodonium p-toluene sulphate, bis(4-tert-butylphenyl)iodonium hexafluorophosphate, bis(4-tert-butylphenyl)iodonium chloride, bis(4-tert-butylphenyl)iodonium iodide, bis(4-tert-butylphenyl)iodonium p-toluene sulphate, (4-methylphenyl)(4-(2-methylpropyl)phenyl)iodonium hexafluorophosphate, (4-methylphenyl)(4-(2-methylpropyl)phenyl)iodonium chloride, (4-methylphenyl)(4-(2-methylpropyl)phenyl)iodonium iodide, (4-methylphenyl)(4-(2-methylpropyl)phenyl)iodonium p-toluene sulphate, diphenyliodonium chloride, diphenyliodonium hexafluorphosphate, diphenyliodonium iodide, diphenyliodonium p-toluene sulphate, N-benzylpyridinium hexafluorophosphate, N-ethoxy-2-methylpyridinium hexafluorophosphate, diethyl(2-oxo-2-phenylethyl)sulfonium hexafluorophosphate, diphenyl(p-tolyl)sulfonium 4-methylbenzenesulfinate, triphenylsulfonium trifluoromethanesulfonate, tri(4-((4-acetylphenyl)thio)phenyl)sulfonium, tetrakis(perfluorophnyl)borate, methyl(diphenyl)sulfonium tetrafluoroborate, triethylsulfonium tetrafluoroborate, 2-(((tert-butylsulfonyl)(diazo)methyl)sulfonyl)-2-methylpropane, tert-butyl 4-methylbenzenesulfonate, 2-isopropyl-5-methylcyclohexyl 4-methylbenzenesulfonate, 2-methyl-2-[(4-methylphenyl)sulfonyl]-1-[4-(methylthio)phenyl]-1-propanone, pentan-3-one O-tosyl oxime, (E)-3,4-dihydronaphthalen-1(2H)-one O-((4-chlorophenyl)sulfonyl) oxime and mixtures thereof (Id., para 0061-0063, 0498), which encompasses a photoinitiator. Bongaerts teaches the thermosetting material being cured via heat and/or radiation (Id., para 0613).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the laminate of Kendall, wherein the thermal initiator is two or more initiators with a co-initiator as taught by Bongaerts, motivate by the desire of using conventionally known thermal initiators predictably suitable for use in thermosetting materials such as acrylics used in flooring.
Regarding claim 69, the prior art combination teaches the acrylic material comprising a thermal initiator and being thermally cured (Kendall, abstract, para 0016-0017), which would read on the wear layer comprising traces of a peroxide.
Regarding claims 77-78, the prior art combination teaches the coating layer utilizing solid acrylic oligomers and monomers such as aliphatic urethane diacrylate oligomer (chemically modified acrylate) diluted with 1,6-hexanediol diacrylate monomer and a thermal initiator (Kendall, para 0016-0017), reading on the wear layer comprises a thermally cured acrylate resin and wherein the acrylate resin at least is obtained with a chemically modified acrylate (claim 77) as well as the acrylate resin being of the aliphatic type (claim 78) as best understood by Examiner.
Claim 70 is rejected under 35 U.S.C. 103 as being unpatentable over Kendall and Bongaerts, as applied to claims 66, 68-69, 73, and 76-78 above, further in view of WO 2017/051539 to Kanno.
NOTE: For prior art mapping, US Pub. No. 2019/0077134 is being used as an English translation.
Regarding claim 70, the prior art combination is silent with regards to the coating layer (wear layer) being cured uniformly or essentially uniformly over its entire thickness.
However, Kanno teaches a decorative film present as part of a laminate with a hard coat layer and base material layer (Kanno, abstract). Kanno teaches it is desirable for homogenous crosslinking of the cured film (cured uniformly or essentially uniformly over its entire thickness) and teaches a comparative example that cured inhomogenously and results in poor durability (Id., para 0179, 0243). Homogenously crosslinking of the cured film reads on the wear layer being cured uniformly or essentially uniformly over its entire thickness, as best understood by Examiner.
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the laminate of the prior art combination, wherein coating layer is homogeneously cured as taught by Kanno, motivated by the desire of curing a coat layer as conventionally known in the art predictably suitable for decorative layers in laminates and by the desire to ensure good durability.
Claim 74 is rejected under 35 U.S.C. 103 as being unpatentable over Kendall and Bongaerts, as applied to claims 66, 68-69, 73, and 75-78 above, in view of US Pub. No. 2016/0250835 to Pervan.
Regarding claim 74, the prior art combination teaches the decorative paper being a melamine impregnated paper layer (Kendall, para 0019).
Kendall does not explicitly teach the melamine resin being amino resins, urea formaldehyde, melamine urea formaldehyde, melamine formaldehyde, polyurethane, urethane-acrylic copolymer, melamine acrylate, melamine formaldehyde, acrylate, latex, or dispersions.
However, Pervan teaches a printed floor panel laminate comprising decorative wear resistant surface layer comprising a paper substrate impregnated with a resin, preferably melamine formaldehyde resin with a print layer covered by a wear layer (Pervan, para 0042-0043, 0159).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the laminate of the prior art combination, wherein the melamine is melamine formaldehyde as taught by Pervan, motivated by the desire of using conventionally known melamine resins predictably suitable for use in impregnated paper used in decorative laminate for flooring.
Claim 79 is rejected under 35 U.S.C. 103 as being unpatentable over Kendall and Bongaerts, as applied to claims 66, 68-69, 73, and 76-78 above, in view of US Pub. No. 2004/0086678 to Chen and EP 2376292 to Rehker.
NOTE: The English Machine translation of EP 2376292 is being used for prior art mapping.
Regarding claim 79, the prior art combination teaches the decorative paper layer being provided with a printed pattern or decorative design such as wood (Kendall, para 0019).
Kendall does not teach the laminate (coated panel) having relief on its surface, wherein the relief comprises gloss differences.
However, Chen teaches a surface covering comprising at least one support surface with at least one base coating located on the support surface with a printed pattern located on the base coating and at least one protective layer located on the printed pattern (Chen, abstract, Fig. 1, para 0048). Chen teaches the base layer or support layer being a wood-based substrate or a polymer core including thermoplastic or thermoset materials (Id., para 0021). Chen teaches the core being fiber board or a number of layers of synthetic resin impregnated kraft paper (Id., para 0021). Chen teaches the backing layer being fiberboard and a base coating being a polymeric coating (Id., para 0023-0025). Chen teaches the printed pattern being applied to the base coated directly onto the base coating (Id., para 0028). Chen teaches the printed pattern having the appearance of wood grain with a textured design in register with the printed pattern (Id., para 0028, 0038). Chen teaches the at least one protective layer or coating can be known as a wear layer and being a radiation cured or thermally cured topcoat such as acrylates or unsaturated polyester (Id., para 0030). Chen teaches the use a two layer system with different glosses to achieve a contrasting or dual gloss coating (Id., para 0046). Chen teaches the base coating being a polymeric coating, including thermoplastic or thermoset, preferably a polyester based acrylic coating (Id., para 0025).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the laminate of Kendall, wherein the laminate further comprises the printed pattern in register with the wood and having a different glosses as taught by Chen, motivated by the desire of forming conventionally known decorative laminate having a wood design predicably suitable for use with wood containing substrate and thermally cured acrylate coating and by the desire to achieve a contrasting gloss having the appearance of wood.
Claim 80, 82, 84, and 86 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2003/0003257 to Kendall in view of US Pub. No. 2019/0211212 to Bongaerts, US Pub. No. 2004/0086678 to Chen, EP 2376292 to Rehker, and US Pub. No. 2001/0006704 to Chen (“Chen ‘704” herewithin).
NOTE: The English Machine translation of EP 2376292 is being used for prior art mapping.
Regarding claims 80, 82, 84, and 86, Kendall teaches a laminate (top layer) comprising a melamine resin impregnated decorative paper layer (décor layer) and a curable coating layer (wear layer) bonded to a reinforcing support structure (substrate) (Kendall abstract, para 0015, 0019, 0022-0025, Fig. 2), the combined structure reading on a coated panel with at least a substrate and a top layer applied thereto. Kendall teaches the curable coating layer (wear layer) being a protective acrylic coating (acrylate) that may be cured during thermal and pressure processing of a laminate assembly that protects the laminate surface from fading and damage (Id., abstract). Kendall teaches the coating layer utilizing solid acrylic oligomers and monomers such as aliphatic urethane diacrylate oligomer (Id., para 0016-0017), reading the acrylate comprising covalent bonds formed by reaction of hydroxyl groups with isocyanate groups, which would form a urethane bond. Kendall teaches the decorative paper layer being provided with a printed pattern or decorative design such as wood (claim 82, 84) (Id., para 0019). Kendall teaches the curable coating layer protecting the decorative paper layer from fading and damage (Id., para 0022) and teaches transparent acrylics being used in the art (Id., para 0003). In order to function as described by Kendall, the cured acrylate layer would necessarily be transparent or translucent or the décor layer would not be visible.
Kendall does not teach wear layer comprising a relief, wherein the relief comprises gloss differences.
However, Chen teaches a surface covering comprising at least one support surface with at least one base coating located on the support surface with a printed pattern located on the base coating and at least one protective layer located on the printed pattern (Chen, abstract, Fig. 1, para 0048). Chen teaches the base layer or support layer being a wood-based substrate or a polymer core including thermoplastic or thermoset materials (Id., para 0021). Chen teaches the core being fiber board or a number of layers of synthetic resin impregnated kraft paper (Id., para 0021). Chen teaches the backing layer being fiberboard and a base coating being a polymeric coating (Id., para 0023-0025). Chen teaches the printed pattern being applied to the base coated directly onto the base coating (Id., para 0028). Chen teaches the printed pattern having the appearance of wood grain with a textured design in register with the printed pattern (Id., para 0028, 0038). Chen teaches the at least one protective layer or coating can be known as a wear layer and being a radiation cured or thermally cured topcoat such as acrylates or unsaturated polyester (Id., para 0030, Fig. 1 and 5), reading on the wear layer being applied in at least one layer and covering an entire surface of the coated panel as 5. Chen a gloss difference (Id., para 0046). Chen teaches the base coating being a polymeric coating, including thermoplastic or thermoset, preferably a polyester based acrylic coating (Id., para 0025). Additionally, Rehker teaches a wooden material having a printed decoration with different level of gloss resultant of a three-dimensional top coat structure (Rehker, p. 1-2), reading on the topcoat, or wear layer, having different gloss.
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the laminate of Kendall, wherein the laminate further comprises the printed pattern in register with the wood and having a different glosses as taught by Chen and achieved through a three-dimensional structure as taught by Rehker, motivated by the desire of forming conventionally known decorative laminate having a wood design predicably suitable for use with wood containing substrate and thermally cured acrylate coating and by the desire to achieve a contrasting gloss having the appearance of wood.
The prior art combination does not teach an adhesion promoter between the décor layer and the wear layer.
However, Chen ‘704 teaches a composition comprising a primer coating (adhesion promoter) applied on top of the surface of a compressible mat comprising fibers and/or particles and a resin binder, such as cellulose fibers or paper with melamine binder, that has a thermosetting top coat, such as acrylic, applied directly over the wet primer before heat-processing (Chen ‘704, abstract, para 0003, 0005, 0010-0011, 0021). Chen ‘704 teaches improvement to surface quality and release characteristics.
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the laminate of the prior art combination, wherein the laminate comprising a primer layer between the decorative paper layer and curable coating layer as taught by Chen ‘704, motivated by the desire of using conventionally known materials predictably suitable for use in laminates comprising paper and acrylic top layers and by the desire to improve surface quality and/or release characteristics.
Regarding claim 86, the prior art combination shows the protective coating covering the entire surface, including indents (Chen, Fig. 3), reading on lowered edge areas of the coated panels being included as part of the entire surface of the coated panel.
Claim 66 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2004/0086678 to Chen in view of US Pub. No. 2003/0003257 to Kendall and US Pub. No. 2019/0211212 to Bongaerts.
Regarding claims 66, Chen teaches a surface covering (coated panel) comprising at least one support surface (substrate) with at least one base coating located on the support surface with a printed pattern (décor layer) located on the base coating and at least one protective layer (wear layer) located on the printed pattern (Chen, abstract, Fig. 1, para 0048), the base coating, printed pattern and protective layer read on the top layer. Chen teaches the protective layer (wear layer) being a radiation cured or thermally cured topcoat, such as urethane acrylates, polyester acrylate, or unsaturated polyester (Id., para 0030), reading on the wear layer comprising a thermally cured acrylate resin or thermally cured unsaturated polyester resin and the acrylate resin or unsaturated resin being cured by means of a thermal initiated radical crosslinking reaction. Chen teaches the printed pattern having the appearance of wood grain with a textured design in register with the printed pattern (Id., para 0028, 0038). While Chen does not explicitly teach the protective coating being transparent or translucent, it would have been obvious to one of ordinary skill in the art before the effective filing date to form the surface covering of Chen, wherein the protective coating is transparent or translucent, motivated by the desire to ensure that the printed pattern located below the protective layer is visible and therefore serve as a decorative feature.
Chen does not explicitly teach the thermally cured topcoat comprising more than one thermoinitiator. However, Kendall teaches a laminate (top layer) comprising a melamine resin impregnated decorative paper layer (décor layer, claim 73) and a curable coating layer (wear layer) bonded to a reinforcing support structure (substrate) (Kendall abstract, para 0015, 0019, 0022-0025, Fig. 2). Kendall teaches the curable coating layer (wear layer) being a protective acrylic coating that may be cured during thermal and pressure processing of a laminate assembly that protects the laminate surface from fading and damage (Id., abstract). Kendall teaches the acrylic material comprising thermal initiator such as dicumyl peroxide (Id., para 0017). Kendall teaches the coating layer utilizing solid acrylic oligomers and monomers such as aliphatic urethane diacrylate oligomer (claim 75-76, multifunctional acrylate oligomer) diluted with 1,6-hexanediol diacrylate monomer (claim 75 multifunctional acrylate monomer; claim 76 difunctional acrylate monomer) and a thermal initiator such as dicumyl peroxide (organic peroxide, claim 68) (Id., para 0016-0017). Kendall teaches the thermal initiator being dicumyl peroxide as well as other thermal initiators (Id., para 0017). Kendall teaches the use of 2-7% by weight dicumyl peroxide (Id., para 0018), indicating multiple thermal initiator molecules are present and reading one more than one thermoinitiator. Additionally, Bongaerts teaches a thermosetting coating comprising unsaturated resin comprising ethylenic unsaturation, such as polyester and acrylic resins, curing agents, initiators, and co-initiator suitable for use in flooring (Bongaerts, abstract, para 0018, 0297-0302, 0655). Bongaerts teaches the thermal radical initiator can be one or more thermal radical initiators including organic peroxides (claim 68), including dilauroyl peroxide as well as hydroperoxides, ketone peroxides, peroxyketals, perethers, peroxyesters (also known as peresters), monopercarbonates, peroxydicarbonates, peranhydrides (Id., para 0491, 0267). As the thermal radical initiators are different, there would necessarily have a different self-accelerating decomposition temperature. Bongaerts teaches the co-initiators including onium compounds, sulpho-compounds, and mixtures, such as bis(4-dodecylphenyl)iodonium hexafluorophosphate, bis(4-dodecylphenyl)iodonium chloride, bis(4-dodecylphenyl)iodonium iodide, bis(4-dodecylphenyl)iodonium p-toluene sulphate, bis(4-tert-butylphenyl)iodonium hexafluorophosphate, bis(4-tert-butylphenyl)iodonium chloride, bis(4-tert-butylphenyl)iodonium iodide, bis(4-tert-butylphenyl)iodonium p-toluene sulphate, (4-methylphenyl)(4-(2-methylpropyl)phenyl)iodonium hexafluorophosphate, (4-methylphenyl)(4-(2-methylpropyl)phenyl)iodonium chloride, (4-methylphenyl)(4-(2-methylpropyl)phenyl)iodonium iodide, (4-methylphenyl)(4-(2-methylpropyl)phenyl)iodonium p-toluene sulphate, diphenyliodonium chloride, diphenyliodonium hexafluorphosphate, diphenyliodonium iodide, diphenyliodonium p-toluene sulphate, N-benzylpyridinium hexafluorophosphate, N-ethoxy-2-methylpyridinium hexafluorophosphate, diethyl(2-oxo-2-phenylethyl)sulfonium hexafluorophosphate, diphenyl(p-tolyl)sulfonium 4-methylbenzenesulfinate, triphenylsulfonium trifluoromethanesulfonate, tri(4-((4-acetylphenyl)thio)phenyl)sulfonium, tetrakis(perfluorophnyl)borate, methyl(diphenyl)sulfonium tetrafluoroborate, triethylsulfonium tetrafluoroborate, 2-(((tert-butylsulfonyl)(diazo)methyl)sulfonyl)-2-methylpropane, tert-butyl 4-methylbenzenesulfonate, 2-isopropyl-5-methylcyclohexyl 4-methylbenzenesulfonate, 2-methyl-2-[(4-methylphenyl)sulfonyl]-1-[4-(methylthio)phenyl]-1-propanone, pentan-3-one O-tosyl oxime, (E)-3,4-dihydronaphthalen-1(2H)-one O-((4-chlorophenyl)sulfonyl) oxime and mixtures thereof (Id., para 0061-0063, 0498), which encompasses a photoinitiator. Bongaerts teaches the thermosetting material being cured via heat and/or radiation (Id., para 0613).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the invention of Chen, wherein the thermally cured acrylate resin is formed from a mixture of the acrylate and with thermal initiators and co-initiators as taught by Kendall and Bongaerts, motivated by the desire of using conventionally known thermally cured acrylate predictably suitable for use in laminate serving as a protective coating and in flooring.
Claims 71-72 are rejected under 35 U.S.C. 103 as being unpatentable over Chen, Kendall, and Bongaerts, as applied to claims 66 above, in view of US Pub. No. 2011/0311807 to Jin.
Regarding claim 71-72, Chen teaches the protective layer (wear layer) being a radiation cured or thermally cured topcoat, such as urethane acrylates, polyester acrylate, or unsaturated polyester (Chen, para 0030). Chen teaches the surface covering being used in flooring (Id., para 0020).
Chen does not explicitly teach the protective layer (wear layer) comprising a photoinitiator and the amount.
However, Jin teaches a coating with dual cure mechanism using a free-radical curable component and a cationically curable component, which when used together reduces or eliminates polymerization shrinkage of the coating which leads to curling (Jin, abstract, para 0001). Jin teaches the coating being used in flooring and decorative tiles, fiberboard, and paneling (Id.). Jin teaches the dual cure system having excellent adhesion and improved wear-through resistance (Id., para 0005-0006). Jin teaches a radical curable component being acrylate and comprising about 35 to about 80% by weight of the coating formulation used in combination with a free-radical photoinitiator that can comprise initiators (two or more photoinitiations) in an amount from about 0.1 to about 5.0 percent by weight of the composition (Id., para 0009-0011, 0016) equating to a range of 0.13 to 14.3 parts of photoinitiator to 100 parts acrylate resin. Jin teaches the coating being used with embossed surface as a top coat or sealer coat (Id., para 0020-0021).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the surface covering of Chen, wherein the protective surface layer comprises the dual curing coating of Jin, motivated by the desire of using conventionally known coatings predictably suitable for use in flooring and by desire to reduce shrinkage cause by polymerization leading to curling while having excellent adhesion and improved wear-through resistance. While the reference does not specifically teach the claimed range of 0.1 to 5 parts, the disclosed range of the prior art combination overlaps with the instant claimed range. It should be noted that in the case where the claimed ranges 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date to adjust and vary the amount of the photoinitiator, and therefore the parts per acrylate resin, such as within the claimed range, motivated by the desire to successfully practice the invention of the prior art based on the totality of the teachings of the prior art.
Claim 85 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2004/0185231 to Dimmick in view of EP 2258780 to Goju and US Pub. No. 2010/0300030 to Pervan.
Regarding claims 85, Dimmick teaches a coated substrate (coated panel) comprising a printed sheet (top layer), including a paper sheet (décor layer comprising a printed sheet of paper), a polymer base coat or polymer primer layer that is cured and formed from acrylic (cured acrylate resin), and a substrate (Dimmick, abstract, para 0012-0019, 0024), reading one at least a substrate and a top layer applied thereto with the cured acrylate resin being between the décor layer and the substrate. Dimmick teaches the substrate being flooring including wood (Id., para 0012, 0024).
Dimmick does not explicitly teach the cured polymer base coat or polymer primer layer being obtained based on a mixture containing at least the acrylate resin and a thermo initiator.
However, Goju teaches an acrylic primer layer that is heat cured suitable for use in flooring that provide good adhesion between an acrylic resin and an inorganic substrate and teaches the use of thermal polymerization initiator to cure acrylics (Goju, abstract, para 0012, 0019, 0138). It would have been obvious to one of ordinary skill in the art before the effective filing date to form the coated substrate of Dimmick, wherein the heat cured acrylic is formed from mixture comprising the acrylic and a thermal initiator as taught by Goju, motivated by the desire of using conventionally known heat curable type acrylics predictably suitable for use in coat substrate including floor and inorganic material.
The prior art combination does not explicitly teach the substrate being wood fiberboard.
However, Pervan teaches panel with a decorative surface including a wear layer, including the use of wood fiber based board, that are used in flooring (Pervan, abstract, para 0081).
It would have been obvious to one of ordinary skill in the art before the effective filing date, wherein the wood substrate is the wood fiber based board as taught by Pervan, motivated by the desire of using conventionally known substrate predictably suitable for flooring containing wood.
Response to Arguments
Applicant's arguments filed October 30, 2025 have been fully considered but they are not persuasive with regards to the application of Kendall and Dimmick, Goju, and Pervan.
Applicant argues with regards to the application of Kendall, that Kendall specifies that its curable coating layer “does not require curing by UV exposure.” However, as best understood by Examiner, this limitation is a product-by-process limitation. Even 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, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). All the advantages discussed are not structural distinctions necessarily present in the finally formed product.
Applicant argues that gelling of the coating composition has the technical advantage of allowing a non-tacky intermediate product to be obtained. If Applicant intends to claim this intermediate product with the gelled coating composition that is intended to be further reacted, then that intermediate product would differentiate over Kendall.
Applicant argues, with regards to the modification of Kendall with Bongaerts, that the acrylic resin of Bongaerts is a thermosetting powder coating composition whereas Kendall is a thermoplastic to facilitate laminate construction and a personal of ordinary skill in the art would not regard Bongaerts as starting from the thermoplastic acrylic formulation, due to the fundamentally different natura of these coating compositions.
Applicant argues, with regards to the rejection of claim 85, that the substrate comprising wood fiberboard is now further amended to specify a wood chip plate and would not have been obvious based on the combined teachings of Dimmick, Goju, and Pervan. However, Applcaint’s argument in not commensurate in scope with the current claims limitation as a substrate of wood fiberboard OR a wood chop plate is claimed.
Applicant argues that Goju does not teach an acrylic primer as para 0012, 0019 mention a primer layer but do not provide details about its composition which is described in the abstract, in claim 1 and paragraph para 0014 as including a polythiol combined with a silane compound. The acrylic mentioned is the paint applied to the primer layer. Examiner respectfully disagrees. Dimmick already teaches a polymer primer layer that includes acrylics and is cured after application (Dimmick, para 0013). Dimmick does not explicitly teach a cured acrylate resin being obtained based on a mixture of acrylate resin and a thermoinitiator. Goju establishes it is known in the flooring art to use a thermoinitiator in cured acrylics based. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to form the cured acrylic layer of Dimmick, wherein the layer is formed from a mixture of acrylic with an initiator, such as a thermal (heat) initiator as taught by Goju and conventionally known and predictably suitable for use in the flooring art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPN 6,465,046 to Hansson taches a décor surface for a flooring comprising a wear layer of a UV-curing acrylic lacquer surface that has an intermediate that is partially cured.
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.
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/JENNIFER A GILLETT/Examiner, Art Unit 1789