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 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.
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 1-2, 4-6, 9 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Doehring (US 2016/0200092) in view of Chen et al. (US 8,006,460) and Pankoke et al. (EP 3725519).
Regarding claim 1, Doehring teaches a wall or floor panel with an improved surface coating (“a decorative panel”) (Paragraph [0001]). The panels include a support plate having a front side and a decorative layer applied to the front side (“at least one substrate comprising an upper surface and a bottom surface, wherein the at least one substrate comprises: at least one core layer; and at least one decorative layer”) (Paragraphs [0014]; [0027]). A layer system is then provided on the support plate where the decorative layer is between the support plate and the layer system (“at least one coating layer, wherein the at least one coating layer is provided upon the upper surface of the at least one substrate”) (Paragraphs [0014]; [0027]). The layer system includes a first elastic layer and a second layer wherein the first elastic layer has a thickness from 20 to 600 microns (0.02 to 0.6 mm) and the second layer has a thickness of 10 to 180 microns (0.01 to 0.18 mm) resulting in a total thickness of 0.03 to 0.78 mm, overlapping with the claimed range (Paragraph [0026]).
Doehring is silent with respect to the panels further including a texture wherein the texture has a depth in the range of 0.05 to 0.4 mm.
Chen teaches surface coverings including floor coverings (Col. 1, Lines 11-12). The coverings can include an upper surface which can have a texture that is in register with the print design in order to mimic the natural texture of the design, such as wood textures, and which is created by embossing methods known in the art (Col. 6, Lines 33-59). The texture has recesses with depths of between 0.5 mil and 15 mil (0.0127 to 0.381 mm).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the panels with the layer system of Doehring such that the upper surface is provided with a texture having depths of 0.127 to 0.381 mm in order to mimic the design of the decorative layer such as when a wood texture is present.
Doehring is silent with respect to the layer system being excimer cured to produce a high-density portion at the top surface wherein the high-density portion has a thickness of 1 to 5 microns and a density greater than the remaining portions of the layer system.
Doehring teaches the layer system being formed via UV curing methods (Paragraph [0021]).
Pankoke teaches plate shaped workpieces with decorative surfaces (Paragraph [0001]). The workpieces include a second crosslinkable layer which is first subjected to an excimer crosslinking followed by a second more full crosslinking step (Paragraph [0018]). The resulting second crosslinkable layer has a surface profile which has improved scratch and wear resistance through a microstructure having a thickness of less than 10 microns which is formed from excimer crosslinking (Paragraph [0012]; [0018]; [0032]). The excimer crosslinking allows for surface hardening and the second crosslinking allows for deep hardening (Paragraph [0032]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the layer system, which is UV curable, such that the curing includes a first step of an excimer curing in order to produce a microstructure layer, with a thickness of less than 10 microns and with improved surface hardness as well as scratch and wear resistance before deep curing the layer as taught by Pankoke. One of ordinary skill in the art would recognize that this microstructure is directed to a high-density portion at a top surface with an overlapping thickness range and a density greater than the remaining layers which are only deep cured and not subjected to both crosslinking methods.
Furthermore, the formation of this high-density portion at a top surface with a thickness of 1 to 5 microns and a density greater than the remaining portions of the coating layer appears to be dependent on the method of excimer curing the coating layer (Instant Specificaiton, PGPUB, Paragraph [0036]). This method is taught by the combination of Doehring and Pankoke as discussed above. Therefore, one of ordinary skill in the art would have found it obvious that the identical methods would result in claimed high density portion. MPEP 2112.01: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Regarding claim 2, Doehring teaches the panels as discussed above with respect to claim 1. As discussed above, the upper surface/layer system of the panels are provided with a texture which one of ordinary skill in the art would appreciate as resulting in having a larger total surface area than the support plate.
Regarding claim 4, Doehring teaches the panels as discussed above with respect to claim 1. As discussed above, the thickness of the layer system is in the range of 0.03 to 0.78 mm, overlapping with the claimed range.
Regarding claim 5, Doehring teaches the panels as discussed above with respect to claim 1. As discussed above, the layer system includes at least two layers.
Regarding claim 6, Doehring teaches the panels as discussed above with respect to claim 1. As discussed above, the thickness of the layer system is in the range of 0.03 to 0.78 mm, overlapping with the claimed range.
Regarding claim 9, Doehring teaches the panels as discussed above with respect to claim 1. The first and second layers are formed from acrylate polymers and photoinitiators (Paragraphs [0019]-[0022]).
Regarding claim 12, Doehring teaches the panels as discussed above with respect to claim 1. The layer system may further include matting agents (Paragraph [0022]).
Regarding claim 13, Doehring teaches the panels as discussed above with respect to claim 1. As discussed above, the layer system is provided with the high-density portion at the upper surface which is considered a crust layer.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Doehring (US 2016/0200092) in view of Chen et al. (US 8,006,460) and Pankoke et al. (EP 3725519) as applied to claim 1 above, and further in view of Flooring Technologies (DE 10-2008-046749).
Regarding claim 3, Doehring teaches the panels as discussed above with respect to claim 1.
Doehring is silent with respect to the top coat being applied in a weight of at least 50 g/m2.
Flooring Technologies teaches the production of wood-based flooring panels (Paragraph [0001]; [0010]). The panels include an abrasion-resistant layer which is applied in a content of 60 to 120 g/m2 (Paragraph [0018]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the layer system of Doehring in a content range of 60 to 120 g/m2 as taught by Flooring Technologies which also teaches a decorative panel with an abrasion resistant layer.
Claims 7 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Doehring (US 2016/0200092) in view of Chen et al. (US 8,006,460) and Pankoke et al. (EP 3725519) as applied to claim 1 above, and further in view of Zhang (US 2018/0171644).
Regarding claim 7, Doehring teaches the panels as discussed above with respect to claim 1.
Doehring is silent with respect to the support plate having a shore D hardness of at least 80.
Zhang teaches building materials including PVC flooring tiles (Paragraph [0001]). The tiles include a protective layer, a decorative layer, a support layer and a balance layer (Paragraph [0009]; Fig. 1). The support layer preferably has a hardness of at least 70 which contributes to the tiles having excellent hardness and dimensional shrinkage (Paragraph [0009]; [0014]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the support plate of Doehring to have a shore D hardness of at least 70 which is taught to contribute to dimensional stability and rigidity of the tiles as taught by Zhang.
Regarding claim 21, Doehring teaches the panels as discussed above with respect to claim 7. Doehring teaches the use of the layer system and does not mention the use of a wear layer and, therefore, teaches a wear layer being omitted as required by the claim.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Doehring (US 2016/0200092) in view of Chen et al. (US 8,006,460) and Pankoke et al. (EP 3725519) as applied to claim 1 above, and further in view of Tian et al. (US 2016/0289980).
Regarding claims 10-11, Doehring teaches the panels as discussed above with respect to claim 1.
Doehring is silent with respect to the layer system comprising a plurality of abrasion resistant particles and those particles being present in a range of 0.5 to 5 wt%.
Tian teaches flooring tiles and panels comprising a coating layer formed from a coating matrix and diamond particles (Paragraph [0003]). The diamond particles are present in a range of 1.5 to 5.5 wt% in order to provide scratch resistance properties and gloss retention properties (Paragraph [0046]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the layer system of Doehring to further include diamond particles in a range of 1.5 to 5.5 wt% in order to provide scratch resistance properties and gloss retention properties as taught by Zhang.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Doehring (US 2016/0200092) in view of Chen et al. (US 8,006,460) and Pankoke et al. (EP 3725519) as applied to claim 1 above, and further in view of Silva et al. (US 2002/0156229).
Regarding claim 14, Doehring teaches the panels as discussed above with respect to claim 1.
Doehring is silent with respect to the layer system including at least one UV additive being titanium dioxide, zirconium dioxide and/or silicon dioxide.
Silva teaches thermally stable polymers (Paragraph [0016]). The polymers may include a UV screening compound such as titanium dioxide (Paragraphs [0118]-[0121]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the layer system of Doehring to further include a UV screener such as titanium dioxide which one of ordinary skill would appreciate as being included to screen UV light in order to prevent degradation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7, 9-14 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 8-12, 14 and 16 of U.S. Patent No. 11,946,251 in view of Pankoke et al. (EP 3725519) and Chen et al. (US 8,006,460).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US Patent ‘251 teaches a decorative panel comprising a substrate comprising at least one core layer and at least one decorative layer wherein a coating layer is provided on an upper surface of the substrate and claim 14 further teaches a roughness of the coating layer being at least 3 microns (“textured”).
Claim 1 of U.S. Patent ‘251 is silent with respect to a texture wherein the texture has a depth in the range of 0.05 to 0.4 mm.
Chen teaches surface coverings including floor coverings (Col. 1, Lines 11-12). The coverings can include an upper surface which can have a texture that is in register with the print design in order to mimic the natural texture of the design, such as wood textures, and which is created by embossing methods known in the art (Col. 6, Lines 33-59). The texture has recesses with depths of between 0.5 mil and 15 mil (0.0127 to 0.381 mm).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the panels of U.S. Patent ‘251 such that the upper surface is provided with a texture having depths of 0.127 to 0.381 mm in order to mimic the design of the decorative layer such as when a wood texture is present.
Claim 1 of U.S. Patent ‘251 is silent with respect to the coating layer being an excimer cured coating layer having a high-density portion at a top surface of the coating layer, said high density portion having a thickness in the range of 1 to 5 microns and a density greater than the remaining portions of the coating layer.
Pankoke teaches plate shaped workpieces with decorative surfaces (Paragraph [0001]). The workpieces include a second crosslinkable layer which is first subjected to an excimer crosslinking followed by a second more full crosslinking step (Paragraph [0018]). The resulting second crosslinkable layer has a surface profile which has improved scratch and wear resistance through a microstructure having a thickness of less than 10 microns which is formed from excimer crosslinking (Paragraph [0012]; [0018]; [0032]). The excimer crosslinking allows for surface hardening and the second crosslinking allows for deep hardening (Paragraph [0032]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the coating layer of U.S. Patent ‘251, such that the curing includes a first step of an excimer curing in order to produce a microstructure layer, with a thickness of less than 10 microns and with improved surface hardness as well as scratch and wear resistance before deep curing the layer as taught by Pankoke. One of ordinary skill in the art would recognize that this microstructure is directed to a high-density portion at a top surface with an overlapping thickness range and a density greater than the remaining layers which are only deep cured and not subjected to both crosslinking methods.
Furthermore, the formation of this high-density portion at a top surface with a thickness of 1 to 5 microns and a density greater than the remaining portions of the coating layer appears to be dependent on the method of excimer curing the coating layer (Instant Specificaiton, PGPUB, Paragraph [0036]). This method is taught by the combination of U.S. Patent ‘251 and Pankoke. Therefore, one of ordinary skill in the art would have found it obvious that the identical methods would result in claimed high density portion. MPEP 2112.01: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Additionally, claims 2-7, 9-14 and 21 are taught by claims 1-3, 5, 8-12, 14 and 16 of U.S. Patent No. 11,946,251 or by the cited references discussed above with respect to the 35 U.S.C 103 rejections of claims 1-7, 9-14 and 21.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive.
On pages 6-15, applicant argues that the combination of Doehring, Chen, and Pankoke is improper and fails to teach each of the limitations of claim 1. Specifically, one of ordinary skill in the art would not apply the embossing methods taught by Chen to the layer system of Doehring such that Chen teaches specific embossing methods in order to form the textures and the application of these methods to the systems of Doehring would result in a weakened layer system or said system would have cracks. Applicant additionally argues that one of ordinary skill would not look to the teachings of Pankoke in order to teach the high-density portion required by the claim. Additionally, the methods taught by Pankoke do not necessarily result in the claimed high-density portion such that the resultant top being “more cured” or “surface hardened” does not teach the density differential required by the claim.
The examiner is unpersuaded by applicant’s arguments and notes that the instant claims are considered obvious in view of the combination of Doehring, Chen, and Pankoke.
Concerning applicant’s arguments regarding the embossing methods of Chen, it appears as though the section which applicant is citing from refers to a specific preferred embodiment for the embossing methods (Col. 16). However, these methods are not being applied to the panels or the layer systems of Doehring as indicated in the rejection above. Instead, it appears as though Chen appreciates any known technique to provide embossments. “The texture can be created by mechanical embossing or other embossing techniques known to those skilled in the art” (Col. 6, Lines 33-59). Therefore, the embodiments argued by applicant are preferred embodiments which do not take away from the general teachings of Chen. MPEP 2123: Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Regarding these general teachings, as noted in the rejection above, providing a panel with these embossments in order to mimic the natural texture of the designs of the floor panels (i.e. having a wooded texture with a wooded print pattern). Additionally, the depths of the patterns are 0.0127 to 0.381 mm, overlapping with the claimed ranges (Col. 6, Lines 33-59). Therefore, Chen provides general teachings which overlap with the instant claims.
As such, the examiner contends that one of ordinary skill in the art is not limited to the embossing methods cited by the applicant so long as the layer systems of Doehring are provided with the textures of Chen in order to mimic the designs provided by the panels.
Concerning applicant’s arguments regarding Pankoke’s teaching of the excimer curing failing to teach a high-density portion, the examiner notes that the curing methods of Pankoke provide the systems of Doehring with improved scratch and wear resistance. The curing methods of Pankoke refer to a two-step curing process including excimer curing followed by a full curing step (Paragraphs [0012]; [0018]; [0032]). Therefore, the combination relies on forming the layer systems of Doehring via the two-step curing process, including excimer curing, in order to increase the wear and scratch resistance of the systems.
While Pankoke does not teach this curing process resulting in the claimed high-density portion, these methods are identical to that of applicant’s invention. The instant specification (PGPUB, Paragraph [0036]) indicates that this portion is formed via an excimer curing method. The applicant has not argued or indicated how the curing process of Pankoke is different from that of the instant invention and how those differences result in a different final product.
Therefore, the examiner contends that one of ordinary skill in the art would recognize that the formation of the high-density portion is a result of the excimer curing process and Pankoke teaches an identical process.
Ultimately, the examiner contends that the combination of Doehring, Chen, and Pankoke is proper and teaches each of the limitations of claim 1.
The current rejection is made FINAL.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783