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 .
Response to Arguments
Applicant's arguments filed 7/16/2025 have been fully considered but they are not entirely persuasive.
Applicant argues that the cited references do not describe “an integrated heat-pressed and cured film layer.” Examiner disagrees. Lee page 3 lines 30-36 describe a first step of which results in thermosetting resin being uniformly distributed in the bamboo which would meet the claimed “integrated” layer. Lee page 3 lines 36-44 describes an additional heat pressing step to meet the claimed “integrated heat-pressed and cured film layer.”
Applicant further argues that one would not be motivated to perform heat-pressing on the bamboo fibers directly when Li describes an impregnated paper coating. Examiner disagrees. Since the claim is an apparatus claim, the method of heat-pressing itself does not matter so much as the fact that the final product has a heat-pressed layer. Lee describes a heat-pressing step on fibers having a resin. Li also describes a heat pressing step on bamboo fibers having a resin. It does not matter what the heat-pressing method is so long as the final result is a heat-pressed and texturized layer. Li describes motivation as to why someone would want a texturized layer on their bamboo board which meets the broadest reasonable interpretation of claim 1.
Applicant argues that the claimed thickness range of the layer is critical over the prior art range because too thin and too thick layers can result in poor resistance and less glue in the fibers, respectively. Examiner does not find this argument persuasive. Applicant cites MPEP §2144.05(III)(A), which while not the exact section cited in the reference, is still partially relevant. This section describes “Applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” Applicant does not argue that the poor resistance or less glue are necessarily unexpected results of the layer thickness, but regardless the Su reference does teach a thickness which overlaps the claimed range and would likely experience the same results, at least within that range, as Applicant alleges.
Applicant argues that they have identified a previously unknown problem and have proposed a solution that a person of ordinary skill in the art would not have without knowing the problem. Applicant argues the problem is that reconstituted bamboo lacks diverse texture and that adding the integrated and heat-pressed film layer/carbonization step solves the problem. Examiner disagrees. Lee describes “cracking or crushing” the wood at page 3 line 21. Crushed wood would certainly not have a diverse texture and thus this problem is not necessarily unknown. Additionally, Li [0016] describes bamboo particle board which would also not be expected to naturally have a diverse texture. Li adds a heat-pressing step with a textured mold specifically to impart a texture onto the bamboo, in this case for anti-slip purposes. Also, it should be noted that claim 1 is an apparatus claim. The step of heat-pressing itself is not necessarily patently distinct from the prior art so long as the prior art teaches a heat-pressed film.
With respect to claim 7, Applicant argues that the proposed medication changes the principle of operation. Applicant specifically alleges that heat-pressing a phenolic paper as described in Li modifies the principle of operation of Lee because Lee applies a thermosetting resin to the bamboo wood and this would require substantial reconstruction to include a phenolic paper as described in Li. Examiner disagrees. First, Examiner notes that the combination does not actually require the phenolic paper at all. Li is merely cited as describing an embossing step where a glue fills the embossed mold. Additionally, the combination does not require getting rid of or modifying the step of applying the thermosetting resin in Lee in any way. The only thing being modified is the texture on the press in Lee such that the heat-pressing becomes a texturizing or embossing step as disclosed in Li. This does not require substantial reconfiguration at all as it is a simple replacement of one known element for another.
Applicant argues the use of impermissible hindsight because a person of skill would not have considered the integrated and heat-pressed embossed layer. Applicant argues that the inventor’s addition of directly embossing the texture decoration was not previously contemplated. Applicant notes that both Li and Lee describe multiple steps as opposed to a single-step hot pressing as claimed. Again, Examiner notes that claim 1 is an apparatus claim. The number of steps in the heat pressing method are not relevant as long as the final product is heat-pressed. Additionally, although Applicant argues that the references do not contemplate the same reasoning for including the embossed texture, motivation to combine does not have to be the same reason as articulated by the Applicant. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Claim Interpretation
For claims which are directed to product claims, such as claims 1 and 4-6, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Likewise, limitations directed to the method of forming the bamboo board, for example, “heat-pressing and curing a glue,” or similar limitations, are being examined only for the structure which they impart, a cured glue layer and a molded bamboo board, rather than the method of curing it.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR100927170B1, made of record on the IDS dated 1/18/2023, see English translation provided on 7/30/2024) as modified by Li (CN106346567A, see English translation provided on 7/20/2024) and Su (CN102011475A, made of record on the IDS dated 1/18/2023, see English translation provided on 7/30/2024.)
Regarding claim 1, Lee meets the claimed, A reconstituted bamboo board integrating a decoration and protective functions, (Lee page 3 lines 6-10 describe a wood board, such as bamboo, with high strength thermosetting resin, page 3 line 49 describes painting) comprising a reconstituted bamboo layer, wherein the reconstituted bamboo layer comprises rolled bamboo fibers processed by hydrothermal carbonization (Lee page 3 lines 21-28 describe carbonization of the bamboo fibers) and an integrated heat-pressed and cured film layer (Lee page 3 lines 6-10 and 30-44 describe a wood board, such as bamboo (see page 2 line 32), is impregnated with thermosetting resin that has been heat-pressed) wherein the heat-pressed and cured film layer is formed by heat-pressing and curing a glue in glued bamboo fibers forming the reconstituted bamboo layer, (Lee page 3 lines 37-44 describes the heat-pressing of the thermosetting glue in the wood).
Lee does not disclose a textured mold or an embossed texture decoration and does not meet the claimed, with an embossed texture decoration located on a surface of the reconstituted bamboo layer and the embossed texture decoration is formed by heat-pressing and curing the glue in the glued bamboo fibers.
Analogous in the field of bamboo board pressing, Li meets the claimed, with an embossed texture decoration located on a surface of the reconstituted bamboo layer and the embossed texture decoration is formed by heat-pressing and curing the glue in the glued bamboo fibers (Li [0017] describes using a backing plate during heat-pressing to press and cure a non-slip grain pattern into a resin layer on the bamboo.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the bamboo board of Lee with the bamboo board having an embossed design as described in Li in order to impart an anti-slip texture onto the surface of the planks for use in flooring, see Li [0017].
Lee does not have an embossed texture and Li does not describe the height of the wood grain texture and does not meet the claimed, and a thickness of the heat-pressed and cured film layer is between 0.05 mm and 1mm (Su [0021]-[0023] describe a height difference of 0.01 mm – 0.2 mm between an upper surface 5 and the texture 6 on a molded wood flooring plank.)
Although the reference does not explicitly describe the claimed range, the 0.01 mm – 0.2 mm range of the texture height disclosed in Su overlaps the claimed range of 0.05 mm – 1 mm. For ranges which “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. See MPEP 2144.05 (I). It would have been obvious to a person of ordinary skill in the art before the filing date to modify the heights of the grain disclosed in Lee as modified by Li to be within the claimed range in order to better mimic the visual aesthetic of real wood grain, see Su [0023].
Regarding claim 4, Lee does not disclose a wood grain texture and Li does not describe the height of the wood grain texture and does not meet the claimed, The reconstituted bamboo board integrating an embossed texture decoration and protective functions according to claim 3, wherein the thickness of the heat-pressed and cured film layer is between 0.1 mm and 0.5 mm
Su meets the claimed, The reconstituted bamboo board integrating an embossed texture decoration and protective functions according to claim 3, wherein the thickness of the heat-pressed and cured film layer is between 0.1 mm and 0.5 mm (Su [0021]-[0023] describe a height difference of 0.01 mm – 0.2 mm between an upper surface 5 and the texture 6 on a molded wood flooring plank.)
The 0.01 mm – 0.2 mm range of the texture height disclosed in Su overlaps the claimed range of 0.1 mm – 0.5 mm. It would have been obvious to a person of ordinary skill in the art before the filing date to modify the heights of the grain disclosed in Lee as modified by Li to be within the claimed range in order to better mimic the visual aesthetic of real wood grain, see Su [0023].
Regarding claim 5, Lee does not describe a phenolic coating and does not meet the claimed, The reconstituted bamboo board integrating an embossed texture decoration and protective functions according to claim 1, wherein the heat-pressed and cured film layer is a phenolic resin layer.
Li meets the claimed, The reconstituted bamboo board integrating an embossed texture decoration and protective functions according to claim 1, wherein the heat-pressed and cured film layer is a phenolic resin layer (Li [0013] describes a phenolic coating.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the resin described in Lee for the phenolic resin described in Li in order to impart a protective coating on the wood board, see Li [0007].
Regarding claim 6, Lee meets the claimed, The reconstituted bamboo board integrating an embossed texture decoration and protective functions according to claim 1, wherein the heat-pressed and cured film layer is a polyurethane layer (Lee page 10 lines 18-25 describe using a polyurethane resin adhesive on a bamboo board.)
Regarding claim 7, Lee meets the claimed, A manufacturing method of the reconstituted bamboo board integrating an embossed texture decoration and protection functions according to claim 1, comprising the following steps: S1, processing a bamboo into bamboo fibers, (Lee page 3 lines 21-22 describe dividing and breaking bamboo down) carrying out hydrothermal carbonization on the bamboo fibers, (Lee page 3 lines 22-28 describe carbonizing the bamboo bundles) and then gluing and drying the carbonized bamboo fibers to obtain glued bamboo fibers; (Lee page 3 lines 30-32 describe adding a thermosetting adhesive to the carbonized fibers) S2, laying the glued bamboo fibers obtained in step Si up to form a module, placing on a mold between a heat plate of a press machine and the glued bamboo fibers before heat-pressing to obtain to-be-pressed glued bamboo fibers laid up into the module; (Lee page 3 lines 36-44 describe laying the wood material into a mold followed by heating and pressing) and S3, carrying out heat-pressing and curing on the to-be-pressed glued bamboo fibers laid up into the module in step S2, (Lee page 3 line40-49 describe heating and pressing the bamboo and glue fibers.)
Lee does not describe that the mold is embossed or textured and does not meet the claimed, placing an embossed texture mold, wherein a glue flows and fills grain of the embossed texture mold during heat pressing, and then the reconstituted bamboo board integrating an embossed texture decoration and protection functions is obtained.
Li meets the claimed, placing an embossed texture mold, wherein a glue flows and fills grain of the embossed texture mold during heat pressing, and then the reconstituted bamboo board integrating an embossed texture decoration and protection functions is obtained (Li [0017] describes using a backing plate during heat-pressing to press and cure a non-slip grain pattern into a resin layer on the bamboo.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the heat pressing Lee with the heat-pressing and embossing step as described in Li in order to impart an anti-slip texture onto the surface of the planks for use in flooring, see Li [0017].
Regarding claim 8, Lee meets the claimed, The manufacturing method according to claim 7, wherein in step S1, the glue used for gluing the bamboo fibers is phenolic resin or polyurethane (Lee page 4 lines 5 describes polyurethane.)
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over modified Lee as applied to claim 7 above, and further in view of Su (CN102011475A, made of record on the IDS dated 1/18/2023, see English translation provided) and Jacobsson (CA 2663493C, see copy provided.)
Regarding claim 10, modified Lee does not meet the claimed, The manufacturing method according to claim 7, and a depth of the grain is between 0.1 mm and 0.5 mm.
Su meets the claimed, The manufacturing method according to claim 7, and a depth of the grain is between 0.1 mm and 0.5 mm (Su [0021]-[0023] describe a height difference of 0.01 mm – 0.2 mm between an upper surface 5 and the texture 6 on a molded wood flooring plank.)
The 0.01 mm – 0.2 mm range of the texture height disclosed in Su overlaps the claimed range of 0.05 mm – 1 mm. It would have been obvious to a person of ordinary skill in the art before the filing date to modify the heights of the grain disclosed in Lee as modified by Li to be within the claimed range in order to better mimic the visual aesthetic of real wood grain, see Su [0023].
None of Li, Lee, nor Su describe a hardened steel and do not meet the claimed, wherein in step S2, the embossed texture mold is made of hardened steel.
Analogous in the field of pressing methods, Jacobsson also describes pressing a panel using a press machine and meets the claimed, wherein in step S2, the embossed texture mold is made of hardened steel (Jacobsson page 8 lines 19-25 describe using a hardened or tempered steel as the surface of the press tool.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the stainless steel press plate described in modified Lee with the hardened steel plate described in Jacobsson in order to reduce friction, see Jacobsson page 8 lines 19-25.
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.
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/V.B./Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744