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 .
Status of the application
Receipt of Applicant’s request for continued examination filed on March 30, 2026 is acknowledged.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 30, 2026 has been entered.
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 1, 3-4, and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al (WO 2020/135964).
With regards to claim 1, Sun teaches a UV curable paste into the joints and curing the UV curable paste with UV light (abstract). Sun teaches the UV curable paste to include acrylate or epoxy acrylate resins (0009) and for the paste to be used for floor covering installation (title) and to be used for sealing the joints (0001).
Sun does not teach the seam strength of the cured composition.
However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are used, the claimed physical properties relating to the seam strength are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
With regards to claim 3, Sun teaches the flooring to include PVC (0049).
With regards to claim 4, Sun teaches the flooring to include alternatives to PVC (0049).
With regards to claim 6, Sun teaches the acrylate resin to include a polyester acrylate resin or an epoxy acrylate resin (0009).
With regards to claim 7, Sun teaches the addition of additives that includes stabilizers, antioxidants, plasticizers, or pigments (0009).
With regards to claim 8, Sun teaches the radiation to include UV light (abstract).
Claims 1, 3-4, and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ehrmann et al (US 2009/0022984).
With regards to claim 1, Ehrmann teaches a sealant that is radiation curable that involves the process of applying the sealant and irradiating the layer to cure (abstract) wherein the sealant includes (meth)acrylate compounds (0031). Ehrmann further teaches the sealant to be used on flooring (0076).
Ehrmann teaches the composition to seal a portion of the article surface (abstract) but does not teach the composition to be used specifically on the seal between adjacent sheet flooring.
However, Ehrmann does teach the process of applying the composition as a sealant to seal the surfaces of the article to seal the surfaces. Therefore, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention to use the sealant composition on the seam between adjacent sheet flooring in order to waterproof that portion of the coating.
Ehrmann does not teach the seam strength of the cured composition.
However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are used, the claimed physical properties relating to the seam strength are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
With regards to claim 3, Ehrmann teaches the flooring to include veneers (0076) reading on PVC.
With regards to claim 4, Ehrmann teaches the flooring to include wood-block flooring (0076).
With regards to claim 6, Ehrmann teaches the UV curable compound to include epoxy acrylates, polyether, or polyester acrylates (0055).
With regards to claim 7, Ehrmann teaches the composition to include additives such as stabilizers or plasticizers (0032).
With regards to claim 8, Ehrmann teaches the radiation to include UV irradiation (0016).
Response to Arguments
Applicant's arguments filed March 30, 2026 have been fully considered but they are not persuasive.
Argument - Applicant argues that Sun teaches either a cold or hot weld, both of which require a long cure time.
Response - Sun does reference the hot and cold weld but only when referring to prior inventions. The invention of Sun is for a UV curable composition, which is known in the art to be a fast cure time. Therefore, this is not persuasive.
Argument - Applicant argues that Sun does not teach the seam strength of the composition.
Response - Although this is true, because the art uses the same process and further the same components to the composition, the seam strength would be inherent to the process. Absent a showing to the contrary, the argument is not persuasive.
Argument - Applicant argues that the art of Ehrmann is for a coating composition and not for a seam on the floor.
Response - The art of Ehrmann, as stated above, teaches the composition to be used to coat a portion of the article but does not specify which portion is coated. Therefore, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention would know to apply the composition to the portions wherein waterproofing is required.
Further, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See MPEP 2111.02. Therefore, the addition of such statement adds no patentable weight.
Therefore, the argument is not persuasive.
Argument - Applicant argues that Ehrmann does not teach the seam strength to be as claimed.
Response - Although this is true, because the art uses the same process and further the same components to the composition, the seam strength would be inherent to the process. Absent a showing to the contrary, the argument is not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763