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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/19/2026 has been entered.
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the connectivity of second layer to a wall must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-2, 4, 7-8, 11, 15-16, 18, 20, and 36-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Re claim 1, that a “second layer is operative to contact” is void of any steps of being operative to contact a wall. For purposes of examination, the claim will be interpreted as intended use.
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 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). That the second layer is operative to contact a wall is directed to intended use. 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 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 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. That the second layer is operative to contact a wall is directed to intended use. 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 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 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 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 found persuasive. The arguments are moot in view of the new grounds of rejection above. Previous references are used as set forth above. Applicant’s amendment is directed to intended use. Applicant’s attention is directed to the following if a process is deemed necessary for functionality of claim 1: MPEP 2173.05(q) “Use” Claims [R-11.2013]
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Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: “[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon” was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parteErlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
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Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In rePrater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.
And therefore, Applicant’s pointing to use of adhesive tapes does not teach away from Lakatosh combination as presented above.
Further to applicant’s amendments of the second layer to wall limitation, Applicant argues the teaching of Aniket having an internal and external layer; however, a first and second layer when viewed upside down is still applicant’s invention. Applicant argues the binder; however, the binders only require the capability of being crosslinked. Applicant argues a pigment is not suggested in the PSA. However, motivation can come from supplemental references as set forth above. It is well known pigments are used for colorant and not novel.
Applicant argues there is not a planar/1st layer/2nd PVA layer. However, this is not convincing because Examples 3-5 clearly teach the combination as set forth above by Lakotosh (i.e. one example teaches a veener sheet / first PSA layer/ 2nd PVA coated paper). Applicant argues the first layer can prevent penetration and points to the specification for support; however, first, limitations from the specification are not read into the claims and secondly, the penetration is not claimed. Makinen was not used to teach the structure claimed as argued but Lakotosh.
Applicant argues the Examples 2-5 and piecemeals the argument; however, examples are merely to show materials and different embodiments. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”). See MPEP 2123. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant’s argument that there is no barrier layer between PVA and paper is therefore not convincing because the claims don’t require this limitation, as the claims state “the first layer is interposed between the second layer and the substrate and forms a barrier layer…”; thus the layer combination is the same structure and material and would function the same as the first layer is in the middle.
Applicant argues the hot melt adhesive limitation, note again, Lakatosh is relied upon for the essential structure; while it is agreed, Lakatosh fails to disclose hot melt adhesive, Aniket is further relied upon. 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.
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
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