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 .
Claim Objections
Claim 26 is objected to because of the following informalities:
Claim 26 recites “hard degradable polymeric particles formed from which”. It should be “hard degradable polymeric particles which”.
Appropriate correction is required.
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.
Claim 1-11, 15-18, 21, and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over US 2008/0020179 (Graab) in view of US 2013/0115399 (Roberts).
In regards to Claims 1-3, 18 and 26, Graab teaches a floor covering having high slip resistance, comprising a base material made of an elastomeric material which has a slip-resistant surface containing granular particles (Abstract). Graab also teaches that the granular particles may be made of a polymeric material having a hardness greater than that of the elastomeric material (Para. 7), and that the polymeric materials can be mixed into the base material in the form of particles, such that some particles may sink into the base material during production (Paras. 8-9), wherein the particles may be sprinkled on the surface of the base material and/or mixed into the base material (Claim 2) – corresponding to the limitations of a synthetic slip-resistant floor-covering material comprising a layer of synthetic material which contains one or more degradable polymeric particles wherein the one or more degradable polymeric particles comprise: (a) one or more hard degradable polymeric particles which have a hardness which is greater than the hardness of the layer of synthetic material; and wherein the one or more hard degradable polymeric particles comprise one or more exposed hard degradable polymeric particles which are exposed at an upper surface of the synthetic floor- covering material to provide slip-resistance (instant Claim 1), wherein a layer of one or more hard degradable polymeric particles which are partially embedded in an upper surface of the floor-covering material (instant Claim 2), wherein the one or more hard degradable polymeric particles comprise one or more degradable polymeric particles which are entirely embedded in a layer of synthetic material (instant Claim 3). . Additionally, as Graab teaches that the particles may both be sprinkled on the surface and/or mixed into the base material (Paras. 8-9, Claim 2) and embedded (Para. 17), one of ordinary skill in the art would recognize that the hard degradable particles would be exposed at an upper surface of the synthetic-floor covering material to provide slip-resistance as claimed.
Graab does not disclose the hard particles formed from polylactic acid.
Roberts discloses floor support (0050, 0052) comprising a core comprising at least one of expanded polylactic acid particles, i.e. hard particles, and acrylic acid copolymer particles, i.e. soft particles, to obtain increased stiffness (0038, 0051).
It would have been obvious to one of ordinary skill in the art to use the specific polylactic acid particles of Roberts in the layer of Graab to obtain increased stiffness. Given that Graab in view of Roberts discloses the same particles as claimed in present claim, it is clear that the particles of Graab in view of Roberts would have the same properties as present claims.
In regards to Claims 4 and 16-17, Graab in view of Roberts teaches that the hard polymeric material is polylactic acid particles. Although Graab in view of Roberts does not explicitly teach that the one or more degradable particles are transparent or partially opaque (instant Claim 4), one of ordinary skill in the art would recognize that given Graab in view of Roberts teaches polylactic particles, it is well-known in the art that such polymers, modified or otherwise, would possess such characteristics of being transparent or partially opaque, as claimed. In a similar vein, one of ordinary skill in the art would expect, as Graab teaches that suitable base materials can include any elastomers suitable for use as a floor covering, such as SBR, EPDM, EVA, CSM, amongst others, one of ordinary skill in the art would recognize given the material composition that the elastomeric base material of Graab would correspond to the limitations of the layer of synthetic material being pigmented or substantially transparent (instant Claim 16). Furthermore, as the layer is comprised of elastomeric material and capable of wear, one of ordinary skill in the art would recognize that it would be capable of being utilized as a wear layer (instant Claim 17). It is well-settled that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Additionally, it is well-settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114).
In regards to Claims 6-8, as the limitations of Claim 1 recite that the inclusion of one or more soft degradable polymeric particles is optional within the floor covering material as claimed, the product of Graab meets the limitations as claimed of instant Claims 6-8.
In regards to Claim 9, Graab teaches that for floor-covering thicknesses of 2-5 mm, the best slip-resistant properties are achieved when the average size of the particles is between 100-800 microns (Para. 21). For the 800 micron average particle size of Graab for thicknesses of 2-5 mm, this would constitute an equivalent dimension of 800/2000 to 800/5000, or 16-40% of the total thickness of the elastomer base layer, which overlaps with the claimed range of 15-90% of the thickness of the layer of synthetic material (instant Claim 9). It is well-settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. 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). MPEP 2144.05.
Furthermore, as Graab teaches the ideal average particle size as discussed above and also that the quantity of sprinkled-on granular particles should be between 30-360 cm3/m2 for improved mechanical and fire properties (Para. 22), one of ordinary skill in the art would have found it obvious to have optimized the coverage and amount of hard particles, in terms of average particle size and quantity, as taught by Graab, to optimize material properties, and thus arrived at the claimed limitations of a principal dimension of from 15-90% of the thickness of the layer of synthetic material (instant Claim 9). It is well-settled that determination of optimum values of cause effective variables such as these process parameters is within the skill of one practicing in the art. In re Boesch, 205 USPQ 21 5 (CCPA 1980). See MPEP 2144.05, Sec. II.
In regards to Claim 11, Graab teaches that the melting temperature for the thermoplastic polymer of the granular particles should be preferably greater than 130 degrees Celsius (Para. 20), which overlaps with the claimed range of the degradable polymeric particles having a melting point greater than 120 degrees Celsius (instant Claim 11). It is well-settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. 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). MPEP 2144.05.
In regards Claims 10 and 21, regarding the limitations of the layer of synthetic material and the one or more degradable particles being pigmented (instant Claim 10), and that the pigment of the polymeric particles is the same as the pigment for the layer of synthetic material (instant Claim 21), it is well-settled that matters relating to ornamentation and aesthetic design changes only which have no mechanical function cannot be relied upon to patentably distinguish a claimed invention from prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). MPEP 2144.04.I.
Therefore, given that the product and material composition and structure of the product of Graab is substantially similar to as claimed, and the aforementioned claim limitations above relate to ornamentation, one of ordinary skill in the art would recognize that the product of Graab meets said limitations of Claims 10 and 21.
In regards to Claim 15, Graab teaches that additional components such as mineral fillers amongst others can be added to the base material (Para. 26), and that the thermoplastic polymers for the granular hard particles can include various pure homopolymers or copolymers, or those modified by grafting agents (Para. 15), such that one of ordinary skill in the art would recognize that such modified polymers or copolymers may be capable of being partially degraded, as set forth in instant Claim 15, due to their additional chemical structure that Graab teaches can be used to improve embedding of particles into the matrix (Para. 15). It is well-settled that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Additionally, it is well-settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114).
In regards to Claim 23, Graab teaches that it is known in the art that granular particles the including mineral particles can have the disadvantage of being difficult to cut (Para. 4), and that the floor covering of Graab can be cut very easily, and can form edges that are more rounded than sharp compared to those in the art (Para. 7), such that one of ordinary skill in the art would expect the product of Graab, in being cut during production, to have a smooth cut edge as claimed in instant Claim 23, due to the lack of mineral/corundum hard particles, which would provide a sharp cut surface as opposed to smooth.
In regards to Claims 24 and 25, given that Graab discloses the same hard degradable polymeric particles as claimed in present claims, it is clear that the hard degradable polymeric particles of Graab would intrinsically possess the same properties as claim in present claims.
Response to Arguments
Applicant's arguments filed 02/18/2026 have been fully considered but they are not persuasive.
Applicant argues that Graab does not disclose claim 1 as presently amended. Examiner agrees and which is why the rejection is now modified as explained above.
Applicant argues that Graab does not recognize or address the problems associated with microplastic solutions and there is no suggestion in Graab to use chemically degradable polymers. 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).
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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787