DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
NEW REJECTIONS: NECESSITATED BY AMENDMENT
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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-4, 7-8, 11, and 36-40 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015/029049 (Aniket) in view of US 20170107670 A1 (Benton et al.) further in view of US20030134108A1 (Lakatosh et al.).
Re claims 1-4, 7-8, 11, and 36-40, Aniket discloses sheeting article comprising substrate 12, pressure sensitive adhesive layer 18 (Applicants first layer hot melt), and water-soluble protective layer 30 (page 1, lines 31-34 and Fig 1). The water-soluble protective film (Applicant’s 2nd layer) includes polymer additive and polyvinyl alcohol (page 2, lines 23-24 and page 3, line 10) where the polyvinyl alcohol includes 80% partially hydrolyzed polyvinyl alcohol (page 15, lines 31-32) and acrylic and styrene block copolymers (page 9, line 34).
Further re claim 1, Aniket doesn’t disclose kaolin plate-like clay as the filler or that the second layer is in contact to a wall as claimed.
Benton teaches all the limitations of claim 1 using kaolin plate-like clay as required in [0046] for modifying flow and barrier properties and teaches [0039] the planar substrate, which forms the outer layer of the product, is a standard wall cover (sheet) of the kind that may absorb water.
It would have obvious to have modified the filler and second layer as required and suggested by Benton for barrier flow properties and water absorption, respectively, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
The polymer additive would necessarily affect the viscosity of the water-soluble protective layer, i.e. function as a viscosity modifying agent (claim 40). To adhesives compositions including styrene and acrylic variations see entire pages 9-11. To the pigment option, see page 12, line 34 (claim 40). The pressure sensitive adhesive includes hot melt adhesive (page 13, lines 23-24). The water-soluble protective layer has a coating weight of 20 g/m2 or less (page 8, lines 13-14). Given that the water-soluble protective layer has a coating weight of 20 g/m2 or less and includes up to 10 wt.% polymer additive (page 17-20) as well as additional additives (page 7, lines 32-33), it is clear the amount of polyvinyl alcohol, would overlap that presently claimed. The sheeting article can be applied to a building (page 9, line 27 and page 15, line 9), i.e. sheeting article is a wall covering. Further re claim 1, that the adhesive layer provides properties when activated with water is not germane since it is a condition that may or may not happen and is not a positive limitation. It does not constitute a limitation in any patentable sense. In re Hutchinson, 69 USPQ 138. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. Given that Aniket discloses polyvinyl alcohol as claimed, the polyvinyl alcohol would necessarily be cold-water soluble and capable of providing adhesive properties when activated with water.
The sheeting is not of paper. However, Lakatosh teaches a substrate of paper is conventional see [67].
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the substrate of the primary with the paper of Lakatosh for reasons set forth above.
Further re claims 1 and 8 to the first layer barrier functionality, when viewing the inverted Figure, and thee teaching of Aniket discloses first PSA layer is cured (pg. 13, forth paragraph), it is reasonable to expect a barrier against a degree of water penetration.
In light of the overlap between the wall covering and the article disclosed by Aniket, it would have been obvious to one of ordinary skill in the art to use an article that is both disclosed by Benton, Aniket and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claims 37-38, given the same materials are used, the properties naturally flow therefrom.
Claims 1-3, 7-8, 11, 14, 20, and 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over US20030134108A1 (Lakatosh et al.) in view of US 20170107670 A1 (Benton et al.) and further in view of US 2006/0231226 (Makinen).
Re claims 1-3, and 14, Lakatosh teaches a laminate in this order: a veneer face, water activated partially hydrolyzed polyvinyl alcohol (PVA) adhesive wherein [78-79] more than one adhesive layer may be used (e.g. adhesive layer including separate polymer PVA polymer layer inherently cold water soluble (serving as a second PVA layer of claim 5 or a first layer barrier of claim 8, see [66-67], and crosslinkable (only requires the capability to be crosslinked) polymer cured [25-26] of styrene and acrylic copolymer [28-30] barrier providing a degree of water protection) and core of paper or particle board (e.g. claims 1 and 14 planar substrate of paper [67]) with [67-70] backing substrate of adhesive or a transfer adhesive layer (first layer and glue layer per claims 1 and 11, respectively). See further Examples 2-5.
Further re claim 1, Lakatosh doesn’t disclose kaolin plate-like clay as the filler or that the second layer is in contact to a wall as claimed.
Benton teaches all the limitations of claim 1 using kaolin plate-like clay as required in [0046] for modifying flow and barrier properties and teaches [0039] In one embodiment, the planar substrate, which forms the outer layer of the product, is a standard wall cover of the kind that may absorb water.
It would have obvious to have modified the filler and second layer as required and suggested by Benton for barrier flow properties and water absorption, respectively, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Further re claim 3, optional limitations are not required. Further re claim 1, that the adhesive layer provides properties when activated with water is not germane since it is a condition that may or may not happen and is not a positive limitation. It does not constitute a limitation in any patentable sense. In re Hutchinson, 69 USPQ 138. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. Given that Aniket discloses polyvinyl alcohol as claimed, the polyvinyl alcohol would necessarily be cold-water soluble and capable of providing adhesive properties when activated with water.
Further re claims 1 and 8 to the first layer barrier functionality, when viewing the inverted Figure, and thee teaching of Aniket discloses first PSA layer is cured (pg. 13, forth paragraph), it is reasonable to expect a barrier against a degree of water penetration.
Further Re claims 1 and 8, Lakotosh is silent to the amount of PVA applied. However, Makinen teaches a coated paper [15-16, 20], Makinen PVA 0.5-3 g/m2 overlapping applicants’ range of 0.1 to 5 g/m2. See also Example 1 (1 g/m2). Resulting in forming impermeability base without holes on similar substates [10, 4, 15]. 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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have substituted the PVA coating weight with that taught by Lakatosh to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness for benefits set forth above namely quality. MPEP 2144.05.
Re claim 7, see [16], Lakatosh. See further [0043] to additives such as processing aids, emulsifiers, thickening assistants, or water.
Re claim 11, Lakotosh already teaches PVA and a glue layer as a backing [67] but not a backing of PVA.
However, as PVA is already taught in Examples 4-5 as an adhesive and the backing is also of adhesive in the polymer films of [67], It would have been obvious at the time of the effective filing date to have modified the adhesive polyvinyl polymer backing materials in general for the specific PVA adhesive backing for interchangeable suitable adhesive layers for form the laminate.
Re claim 16, Lakotosh teaches 1 mil thickness of adhesive in [24] (25 microns, overlapping applicant’s range 1 to 150 microns) [72] reducing telescoping. 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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness for benefits set forth above namely reducing telescoping. MPEP 2144.05.
Re claim 20, that the wall cover is prepasted is not germane to patentability as the prior state imports process limitations in a product claim. 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. Both Applicant's and prior art reference's product are the same.
Claims 4 is rejected under 35 U.S.C. 103(a) as being unpatentable over US20030134108A1 (Lakatosh et al.) in view of US 20170107670 A1 (Benton et al.) in view of US 20060231226 (Makinen) and further in view of US 20160289512 A1 to Bauers et al.
Lakotosh is relied upon above.
Re claim 4, Lakotosh teaches hydrolyzation but not the degree of 50% to 90% as claimed.
Teaches hydrolyzation degrees within overlapping degrees: [0041] Examples of polyvinyl alcohols are partially hydrolyzed polyvinyl alcohols having a degree of hydrolysis of 80 to 95 mol % (overlapping applicant’s ranges of upward than 30%). [0044] The floor covering adhesion composition is suitable for adhesively bonding woodblock flooring, laminate, plastic floor coverings, carpets, floor coverings made from natural materials such as cork, sisal, linoleum, on substrates such as concrete, screed, wood fiberboard. [0045] An advantageous aspect of the floor covering adhesive composition according to the invention is that zero or extremely small amounts of alcohols such as butanol can be released by hydrolysis from the dispersion on alkaline substrates, and at the same time the performance properties, especially wet bonding time and tensile shear strength, of acrylate-based polymer dispersions are attained.
[0046] In contrast, floor covering adhesive compositions with vinyl acetate-ethylene copolymers of comparable Tg exhibit poorer workability, low storage time, and a substantially poorer quality of the adhesive bond. 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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have substituted the PVA hydrolysis degree with that taught by Bauers to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness for benefits set forth above namely workability and quality. MPEP 2144.05.
Claims 15, and 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over US20030134108A1 (Lakatosh et al.) in view of US 20170107670 A1 (Benton et al.) in view of US 20060231226 (Makinen) and further in view of US 20230250648 A1 to Baert et al.
Lakatosh is relied upon above.
Re claim 18, Lakatosh fails to teach a visually marking.
Baert teaches a [19-22] color layer decorative pattern with the substrate between 60 g/m2 close to 3 g/m2 to 50 g/m2.
It is apparent, however, that the instantly claimed Baert range are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the Baert range and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that a visual marking pattern disclosed in the present claims is but an obvious variant of the amount disclosed in Baert and thereby one of ordinary skill in the art would have arrived at the claimed invention adjacent to the substrate, the décor layer adding a pattern.
Re claim 15, Lakatosh fails to teach the substrate or fibers as claimed with basis
weight.
Baert teaches overlapping ranges of the paper weight 20% upward in Examples 2-4 (overlapping 20% to 100% as claimed) and [18] of the one or more kraft paper (e.g. cellulose pulp) layers used is situated in between 50 and 150 g/m2 (overlapping applicant’s range of 50 g/m2 to 300 g/m2). 0% fibers is not required. 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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the Baert reference because overlapping ranges have been held to establish prima facie obviousness for benefits of suitable weights for substrates. MPEP 2144.05.
Re claim 18, given that the same materials are used, the properties are inherently present. Further what can be is suggestive language. Similar rationale above applies here.
Claims 36-38 and are rejected under 35 U.S.C. 103(a) as being unpatentable over US20030134108A1 (Lakatosh et al.) in view of US 20170107670 A1 (Benton et al.) in view of US 20060231226 (Makinen) in view of US 20230250648 A1 to Baert et al. and further in view of WO 2015/029049 (Aniket).
Lakatosh is relied upon above.
Re claim 36-38, Lakatosh fails to disclose hot melt adhesive.
Aniket teaches hot melt adhesive in the pressure sensitive adhesive for including hot melt adhesive benefits of producing a solventless process at elevated temperatures (page 13, lines 21-24).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have substituted the PSA of Lakatosh for a hot melt PSA of Aniket for benefits of providing a solventless end product.
Given that the combination with Aniket discloses the same materials in the first layer as claimed, the layer would necessarily have the inherent properties.
Response to Arguments
Applicant’s arguments are acknowledged and not found persuasive. The arguments are moot in view of the new grounds of rejection above. Previous references are used as set forth above.
A prima facie case has been established, and therefore the burden shifts to the Applicant to submit additional objective evidence of nonobviousness, such as comparative test data showing that the claimed invention possesses improved properties not expected by the prior art. Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135,139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699,705, 222 USPQ 191, 196 (Fed. Cir. 1984). Until the Applicant has convincingly argued or has provided evidence to the contrary, the rejections are maintained.
References of Interest
The remaining references listed on form(s) 892 and/or 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
WO 2019082201 A2 Patel teaches a self adhesive wall paper with hot melt adhesive (pg. 8).
US 20160326400 A1 teaches [122-124, 0133] a method for forming the layer of PVA adhesive with a desired gluing force or desired aspects of products and is, for example, in a range of 3 g/m.sup.2 to 100 g/m.sup.2 and more preferably in a range of 10 g/m.sup.2 to 60 g/m.sup.2.
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 TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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