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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 has been entered.
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.
Claims 1, 3, 7, 10-11, 14, 18, 22, 34, 36, 38, 40, 42-43, and 54 - are rejected under 35 U.S.C. 103 as being unpatentable over Pervan (9,482,015) in view of Courney (10,233,656) and Pervan (2016/0153200).
1. Pervan, figs. 1-6, teaches a decorative floor panel, comprising:
- a core (PVC (which is a thermoplastic) core 3) provided with an upper (top) side and a lower (bottom) side,
- a decorative top structure (“top layer 2a of wood powder or a decorative paper and overlay”, col. 7, lines 23-36, fig. 4b) indirectly affixed on said upper side of the core (top layer 2a is indirectly affixed on the core upper side because “sub layer 2b.” is below top layer 2a, col. 7, lines 23-36),
- a first panel edge 1a comprising a first coupling profile, and a second panel edge 1b comprising a second coupling profile being designed to engage interlockingly with said first coupling profile of an adjacent panel, both in horizontal direction and in vertical direction,
- a third panel edge 1c comprising a third coupling profile, and a fourth panel edge 1d comprising a fourth coupling profile being designed to engage interlockingly with said third coupling profile of an adjacent panel, both in horizontal direction and in vertical direction (col. 4, lines 1-4, and col. 11, lines 51-54),
wherein each panel edge defines at least one vertical plane (VP1 and VP2, see annotated fig. 5b below) perpendicular to a horizontal plane (HP), which horizontal plane (HP) is parallel to the core (col. 6, lines 52-56, col. 8, lines 3-13, and col. 10, lines 40-63),
wherein the core is provided with at least two vertically extending core grooves 19 having a groove opening connected to the lower side of the core, wherein the entire part of the core grooves is arranged inside the vertical planes (VP) respectively defined by all panel edges, such the core grooves do not intersect any coupling profile of the first coupling profile, the second coupling profile, the third coupling profile, and the fourth coupling profile (col. 6, lines 51-56),
wherein each core groove is defined by at least one groove wall (as shown in figs. 2c and 2d, the groove wall is the wall of the groove formed in the core, seen from the top (fig. 2c) and side (fig. 2d)),
The limitation, “wherein the core is an extruded core, and wherein the core grooves are extruded core grooves” 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, the end product in both the prior art and the product-by-process claim are the same (plastic, col. 6, lines 43-45, decorative floor panels with interlocking edges and grooves on the bottom core surface). The patentability of the panel is based on the panel itself, not the process steps used to make it or its parts (core and core grooves). When assessing the patentability of a product-by-process claim, the structure implied by the process steps should be considered, and in this case, the core and core groove structure implied by these elements being extruded is herein considered. While the Pervan ‘015 plastic core with the milled core grooves may have a surface finish (the plastic core finish and the milled groove finish) less smooth than a surface finish of an extruded core with extruded core grooves, the Pervan ‘015 core finish depends on factors such as the surface roughness of the mold used to form the composite core and the core groove finish depends on factors such as the sharpness, rpm, and feed rate of the groove cutting tool. As such, the process used to make both the core and core grooves could result in a relatively smooth core and core groove surface finishes.
As to the limitation reciting the core and grooves having a surface finish without spines or protrusions, Pervan ‘015 does not expressly teach that the core and grooves have a surface finish without spines or protrusions. Courney teaches a core has a substantially smooth surface texture, “the core layer 30 may have a smooth texture”, col. 9, lines 40-42, Applicant at page 4 disclosing that texture and finish are the same, and Pervan ‘200 teaches floor panel groove walls of core grooves 22 formed by a carving tool 45, para. 110 (just like the milled Pervan ‘015 grooves are formed by a carving tool 20, col. 7, lines 58-60), have a substantially smooth surface finish (“the walls are smooth”), para. 52. A smooth finish can mean an even or seamless texture. Importantly, spines or protrusions would clearly make the finish uneven.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the core to have a substantially smooth surface finish (without spines or protrusions as indicated) so the decorative layer lays smooth, and for the core grooves to have a substantially smooth surface finish (without spines or protrusions as indicated) for grooves that have a more finished final appearance than rough cut grooves, and to reduce to some degree, stress risers on the groove wall surface (such localized higher stress areas located in the valleys of a rough textured wall) that weaken the panel.
Finally, Pervan ‘015 in view of Courney and Pervan ‘200 further teach the lower side and/or upper side of the core and the groove walls of the core grooves have a substantially smooth surface texture at least because Applicant discloses texture and finish are the same (“Surface texture, also known as surface finish…is the nature of a surface as typically defined by the three characteristics of lay, surface roughness, and waviness”, page 4).
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Annotated fig. 5b and 5c
3. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan ‘015 further teaching the core groove depth (GD) of at least one core groove is at least 0.3 times a panel thickness (T), fig. 5a, col. 7, lines 49-54.
7. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan ‘015 further teaching the width of the groove opening of at least one core groove is larger than the width of an inner part of said core groove (fig. 5a shows the groove mouth wider than the groove base, col. 4, lines 60-61).
10. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan ‘015 further teaching the core groove is a discontinuous core groove, figs. 3c and 3d.
11. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan ‘015 further teaching at least two core grooves have mutually different shapes (different widths, fig. 3b).
14. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan ‘015 further teaching the panel comprising a backing layer 4 directly affixed to the lower side of the core, figs. 6b, 6c, 6d.
18. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan ‘015 further teaching the panel comprises at least one reinforcement layer 2b, which extends in only one coupling profile of the first and second coupling profile, and in only one coupling profile of the third and fourth coupling profile (see fig. 2a showing “area of the surface layer A’” that extends up and to the right into only these two profiles).
22. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan ‘015 further teaching the core is at least partially made of a thermoplastic polymer, col. 5, lines 37-39.
34. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan ‘015 further teaching at least one panel edge is at least partially formed by at least one core edge (as seen in fig. 5c, the leftmost panel edge is at least partially formed by the corresponding core edge at this location).
36. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan ‘015 further teaching the core comprises a centre portion and a peripheral portion enclosing said centre portion, wherein the panel edges and coupling profiles make part of said peripheral portion, and wherein said peripheral portion is free of core grooves (figs. 3b-3d show the core comprises a centre portion (the rectangular part in the center) and a peripheral portion (rectangular part framing the center part) enclosing said centre portion, wherein the panel edges and coupling profiles make part of said peripheral portion (the panel edges and coupling profiles coincide as shown), and wherein said peripheral portion is free of core grooves (figs. 3b-3d).
38. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan ‘015 further teaching at least one panel is configured to define a plurality of vertical planes (VP1 and VP2, see annotated fig. 5b), wherein one vertical plane (VP1) coincides with the outer part of a panel edge and at least one other vertical plane (VP2) coincides with a part of a coupling profile of said edge, positioned closest to a centre portion of the core of the panel.
40. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan ‘015 further teaching the core grooves are positioned at a distance from each vertical plane (as seen in annotated figs. 5b and 5c, the grooves are positioned at a distance inward from each vertical plane).
42. Pervan ‘015 in view of Courney and Pervan ‘200 teaches a decorative floor covering comprising a plurality of mutually coupled decorative panels according to claim 1, col. 1, lines 20-50.
54. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan ‘015 in view of Courney and Pervan ‘200 further teaching the lower side and/or upper side of the core and the groove walls of the core grooves have substantially the same (smooth) surface texture at least because Applicant discloses texture and finish are the same (“Surface texture, also known as surface finish…is the nature of a surface as typically defined by the three characteristics of lay, surface roughness, and waviness”, page 4).
43. Pervan, figs. 1-6, teaches a core (PVC (which is a thermoplastic) core 3) for use in a panel, wherein said core comprises:
an upper (top) side and a lower (bottom) side,
a first core edge comprising a first coupling profile, and a second core edge comprising a second coupling profile being designed to engage interlockingly with said first coupling profile of an adjacent panel, both in horizontal direction and in vertical direction,
a third core edge comprising a third coupling profile, and a fourth core edge comprising a fourth coupling profile being designed to engage interlockingly with said third coupling profile of an adjacent panel, both in horizontal direction and in vertical direction (figs. 5a-5e show that the panel edges are essentially the core edges), also see col. 3, lines 4-10,
wherein each core edge defines a vertical plane (VP) perpendicular to a horizontal plane (HP), which horizontal plane (HP) is parallel to the core,
wherein the core is provided with at least two vertically extending core grooves 19 having a groove opening connected to the lower side of the core, wherein the entire part of the core grooves is arranged inside the vertical planes (VP) respectively defined by all panel edges, such the core grooves do not intersect any coupling profile of the first coupling profile, the second coupling profile, the third coupling profile, and the fourth coupling profile (col. 6, lines 52-56, col. 8, lines 3-13, and col. 10, lines 40-63),
wherein each core groove is defined by at least one groove wall (the side walls).
Pervan does not teach the core is an extruded core having a surface finish without spines or protrusions, wherein the core grooves are extruded core grooves having a surface finish without spines or protrusions, and wherein the lower side and/or upper side of the core and the groove walls of the core grooves have substantially the same surface finish.
The limitation, “the core is an extruded core…core grooves are extruded core grooves” 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, the end product in both the prior art and the product-by-process claim are the same (plastic, col. 6, lines 43-45, decorative floor panels with interlocking edges and grooves on the bottom core surface). The patentability of the panel is based on the panel itself, not the process steps used to make it or its parts (core and core grooves). When assessing the patentability of a product-by-process claim, the structure implied by the process steps should be considered, and in this case, the core and core groove structure implied by these elements being extruded is herein considered. While the Pervan ‘015 plastic/wood fiber composite core with the milled core grooves may have a surface finish (the plastic/wood fiber core texture and the milled groove finish) less smooth than a surface finish of an extruded core with extruded core grooves, the Pervan ‘015 core finish depends on factors such as the surface roughness of the mold used to form the composite core and the core groove finish depends on factors such as the sharpness, rpm, and feed rate of the groove cutting tool. As such, the process used to make both the core and core grooves could result in a number of finishes, such as relatively smooth core and core groove surface finishes.
Courney teaches a core has a substantially smooth surface texture, “the core layer 30 may have a smooth texture”, col. 9, lines 40-42, Applicant at page 4 disclosing that texture and finish are the same, and Pervan ‘200 teaches floor panel groove walls of core grooves 22 formed by a carving tool 45, para. 110 (just like the milled Pervan ‘015 grooves are formed by a carving tool 20, col. 7, lines 58-60), have a substantially smooth surface finish (“the walls are smooth”), para. 52. A smooth finish can mean an even or seamless texture. Importantly, spines or protrusions would clearly make the texture uneven, the lower side and/or upper side of the core and the groove walls of the core grooves have substantially the same (“smooth”) surface finish.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the core to have a surface finish without spines or protrusions, wherein the core grooves have a surface finish without spines or protrusions, and wherein the lower side and/or upper side of the core and the groove walls of the core grooves have substantially the same surface finish to have a substantially smooth surface finish so the decorative layer lays smooth, and for the groove walls to have a substantially smooth surface finish for grooves that have a more finished final appearance than rough cut grooves, and to reduce to some degree, stress risers on the groove wall surface (such localized higher stress areas located in the valleys of a rough textured wall) that weaken the panel.
Finally, Pervan ‘015 in view of Courney and Pervan ‘200 further teach the lower side and/or upper side of the core and the groove walls of the core grooves have a substantially smooth surface texture at least because Applicant discloses texture and finish are the same (“Surface texture, also known as surface finish…is the nature of a surface as typically defined by the three characteristics of lay, surface roughness, and waviness”, page 4).
Claim 26 – is rejected under 35 U.S.C. 103 as being unpatentable over Pervan ‘015 in view of Courney and Pervan ‘200 and in further view of Vos (2010/0021718).
26. Pervan ‘015 does not expressly teach the areal density of the core is less than 9000 g/m2. Vos teaches the areal density of a core is less than 9000 g/m2 (“the areal density of the thermoplastic core material is in the range of about 1000 to about 3000 gsm”, para. 25). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the areal density of the core to be less than 9000 g/m2 (1000 to about 3000 gsm) for a combination of strength and lightness of weight.
Claim 27 – is rejected under 35 U.S.C. 103 as being unpatentable over Pervan ‘015 in view of Courney and Pervan ‘200 and in further view of Naeyaert (2020/0353722).
27. Pervan ‘015 in view of Courney and Pervan ‘200 teaches the panel according to claim 1, Pervan further teaching the decorative top structure comprises at least one decorative layer (“decorative paper 2b”, col. 1, lines 51-52, FIG. 4B) and at least one transparent wear layer covering said decorative layer (“wear resistant transparent overlay paper 2a”, col. 1, lines 51-52, fig. 4b). Pervan does not expressly teach that the decorative paper is digitally printed (Pervan teaches a separate embodiment in which the whole panel is formed from wood obtained from other panels, such panels digitally printed, but Pervan does not teach substituting digitally printing for decorative paper 2b in the panel embodiment having decorative layer 2a and 2b). Naeyaert teaches decorative paper printed (“The paper sheet preferably is…provided with a print”, para. 64). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the decorative paper to be printed to simulate a wood-grain look.
The limitation, “digitally” printed 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, the end product in both the prior art and the product-by-process claim are the same (printed decorative sub layers of a floor panel).
Claim 33 – is rejected under 35 U.S.C. 103 as being unpatentable over Pervan ‘015 in view of Courney and Pervan ‘200 and in further view of DeZen (2011/0045250).
33. Pervan ‘015 does not expressly teach the total surface area of the groove openings covers at least 20% of the total surface area of the lower side of the core. DeZen teaches a total surface area of groove openings covers at least 20% of the total surface area of a lower side of a floor panel (DeZen, figs. 1-3, teaches “Alternating ribs 14 and recesses 16 produced longitudinally in the strip during extrusion typically are about 0.5 inch wide”, para. 60. As such, the recesses (and therefore the groove openings) cover about 50% of the total surface area of a lower side of the floor panel, 50% coverage being significantly greater than the claimed at least 20% of the total surface area of a lower side of a floor panel). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the total surface area of the groove openings to cover at least 20% of the total surface area of the lower side of the core to maximize material cost savings.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
“Milling inherently leaves directional tool marks, waviness, burrs, and fractured fibers or filler tear-out”
The action of a rotary cutting tool does create microscopic peaks and valleys (mill marks) as the cutting edge moves through the MDF. This is a common phenomenon in most machined materials, not just MDF. Importantly however, and as indicated in at least one previous Official action, tool marks can be significantly minimized through best practices such as using a shallow depth finish cut (Pervan ‘015 uses the very shallow depth of .3mm, col. 9, line 53), optimizing tool feed and speed by synchronizing tool rotation speed with panel displacement (Pervan ‘200, para 110) and using solid carbide bits. These practices are done especially in an MDF milling application like interlocking flooring where dimensional tolerances are very small.
“milling process inevitably leads to micro-fractures and tearing at the groove surfaces, which not only increases waste during production but can also cause splintering and breakage during installation. That poses an additional risk for installers and even end-users who handle the panels, exposing them to sharp fibers, chips, or dust”
The exceedingly shallow cut depth of Pervan minimizes any “micro-fractures and tearing at the groove surfaces” that might be more common in a less sensitive/precise MDF milling operation wherein panel feed speed are cutting depth are maximized at the expense of micro-fractures and tearing at the cutting surface. The arguments as to disadvantageous dust generation and possible handling difficulties is not relevant to the claimed panel.
“amended independent claims 1 and 43 define a panel with a thermoplastic extruded core in which the grooves are integrally formed during extrusion”
A person skilled in the art would recognize that the claimed extruded panel and the Pervan ‘015 panel are the essentially identical, regardless of the process used to make the panel.
“Even if Pervan mentions thermoplastic materials such as LVT or WPC, they are taught in the context of pressed boards followed by milling”
Indeed, both the Pervan ‘015 and Pervan ‘200 panel can be a structural plastic core with relatively thin laminated top and bottom layers, the grooves being milled. This Pervan board material embodiment appears to make moot Applicants arguments about how milled MDF produces spines and protrusions.
“There is no disclosure or suggestion of co-extruded grooves with die-replicated smooth finishes”
There is no disclosure or suggestion of co-extruded grooves with die-replicated smooth finishes because the Pervan smooth finish is produced by milling as described herein.
“the presently-claimed product overcomes the safety and quality problems of Pervan's process: no tool marks, no fractured fibers, no additional waste during installation, and no risk to installers or consumers from sharp or unstable edges”
Other than “no tool marks”, all these consequences of extrusion are unrelated to whether the claimed panel reads on the panel of the combination. As indicated above, a rotary cutting tool creates microscopic peaks and valleys (mill marks) as the cutting edge moves through either plastic of MDF. One significant cause of mill marks, whether milling MDF or the PVC of an LVL panel, is tool sharpness. As such, extruded panel surface imperfections would necessarily similarly depend on the degree of machining precision (and therefore imperfections) in the extrusion die. Extrusion die tools are periodically reworked due to in-use wear just as milling tools, even carbide, eventually wear.
“The invention therefore provides a structurally and functionally distinct product with clear advantages in manufacturing efficiency, product reliability, and user safety”
The claimed invention does not provide a structurally distinct product as indicated in the rejection above and while the invention may in some way provide a functionally distinct product with certain advantages, such advantages do not apparently translate to patentable structural differences.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J KENNY whose telephone number is (571)272-9951. The examiner can normally be reached Monday-Friday 8am-5pm.
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/DANIEL J KENNY/ Examiner, Art Unit 3633
/BRIAN E GLESSNER/ Supervisory Patent Examiner, Art Unit 3633