DETAILED ACTION
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments and claim amendments submitted on June 30, 2026 are entered into the file. Currently claims 1 and 15 are amended and claims 29-40 are cancelled, resulting in claims 1-28 pending for examination.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
As described in the previous office actions, claims 1 and 13 use the phrase “mechanical locking device” which is being interpreted under 112(f) and is thus construed to cover the corresponding structure described in the specification and equivalents thereof. Starting on page 8, line 25 the instant specification describes the mechanical locking device as including connecting means, and goes on to explain the structure of these connecting means on pages 8-10 and Figs. 4a-9c and their respective descriptions.
Additionally, claims 13-14 and 27-28 use the phrases “connecting means” and “counter-connecting means” which are being interpreted under 112(f) and are thus construed to cover the corresponding structure described in the specification and equivalents thereof. Starting on pages 9-10, the instant specification describes the connecting means and counter-connecting means, and goes on to explain the structure of these connecting means in Figs. 4a-9c and their respective descriptions.
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.
Claim(s) 1-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over De Journo (CA 2032599)1 in view of Whispell (US 2014/0352248)1. Supporting evidence provided by Fink (US 5240530)1 and Corbin (US 5538776)1.
With respect to claims 1-6, 8, 15-20, and 22, De Journo teaches a recyclable carpet (building panel) comprising a primary backing (surface layer/carrier) formed from a first material, a pile (decorative carpet fibers) extending from at least the first surface of the primary backing (surface layer/carrier) and made from a material that is of substantially the same generic class as the first material, and a binder adhering to at least the second surface of the primary backing (surface layer/carrier) and made from a material that is of substantially the same generic class as the first material (page 2, line 22 – page 3, line 9). The primary backing (surface layer/carrier), pile (decorative carpet fibers), and binder may all be made from polypropylene (same base polymer) (page 8, lines 2-4).
De Journo is silent as to the carpet (building panel) comprising a substrate comprising a mechanical locking device arranged at least partly along at least one side edge of said carpet (building panel) and configured to connect building panels having corresponding structural and/or mechanical features in an assembled position.
Whispell teaches carpet tiles which combine a carpet layer as a surface layer and a substrate comprised of VCT, LVT, or rubber materials to which the carpeting is attached (paragraph [0071]). In view of a mechanical interlocking tongue and groove system being provided at the profiled edges of the composite structure, the carpet does not need to be adhered to a floor which it is covers to keep the tiles in place (paragraph [0071]). This can provide modular carpet tile flooring which is strongly connecting and can be easily installed, replaced/repaired, and uninstalled while eliminating the need to use costly or difficult to remove adhesives (paragraph [0071]). The rubber can be a thermoplastic elastomer (paragraph [0070]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the carpet include a substrate comprising a mechanical interlocking tongue and groove system is provided at profiled edges attached to the binder of De Journo in order to provide a modular carpet tile flooring which is strongly connecting and can be easily installed, replaced/repaired, and uninstalled while eliminating the need to use costly or difficult to remove adhesives.
It further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the profiled substrate to be a material of substantially the same generic class of the material of the carpet in order to maintain De Journo’s goals of a recyclable carpet where the layers are adhered to each other. Whispell teaches the substrate may be a thermoplastic elastomer (Whispell; paragraph [0070]), and thermoplastic polyolefin elastomers (Fink; col. 6, lines 62-65) and polyester elastomers (Corbin; col. 3, lines 16-19) suitable for use in recyclable carpets are known in the art.
De Journo in view of Whispell teaches the claimed invention above but does not expressly teach wherein the substrate has an E-modulus of at least 300 MPa. It is reasonable to presume that the E-modulus is inherent to De Journo in view of Whispell. Support for said presumption is found that De Journo in view of Whispell teaches the same structure and material as the claimed invention as described above and below. Additionally, the instant specification at page10, lines 22-25 explains that having an E-modulus of at least 300 MPa allows the creation and use of any desirable mechanical locking device. Since the substrate of Whispell is directed to substrates with an interlocking design (Whispell; paragraph [0002]) in addition to the similarities in structure and material, it is reasonable to presume that the substrate of De Journo in view of Whispell has the claimed E-modulus. See MPEP 2112.
With respect to claims 7 and 21, De Journo in view of Whispell teaches all the limitations of claims 5 and 19 above. De Journo further teaches that the binder may be soften through heat (page 9, lines 15-20).
With respect to claims 9 and 23, De Journo in view of Whispell teaches all the limitations of claims 8 and 22 above. The layers of De Journo being formed of polymers of “substantially the same generic class” includes those materials that have substantially the same characteristics so as to permit the two materials to be softened together and then, when cooled, to form one material (De Journo; page 4, line 24 – page 5, line 4). Therefore, when the binder is softened and bonded to the primary backing (surface layer) it becomes one material with the primary backing (surface layer) (De Journo; page 9, lines 15-20). As such, when the carpet of De Journo is bonded to the substrate of Whispell by softening of the lower surface of the carpet as described in the bonding process of De Journo, the material from a surface of said primary backing (surface layer) is at least partially merged with the material of substantially the same generic class of a surface of the substrate.
With respect to claims 10-11 and 24-25, De Journo in view of Whispell teaches all the limitations of claims 9 and 23 above. De Journo further teaches that the “softening” of the material may be through application of heat (lamination process) or treating the material chemically (chemical welding process) (page 5, lines 5-10).
With respect to claims 12 and 26, De Journo in view of Whispell teaches all the limitations of claims 1 and 15 above. De Journo further teaches the pile may be tufted or needled into the primary backing (page 9, lines 5-7).
With respect to claims 13-14 and 27-28, De Journo in view of Whispell teaches all the limitations of claims 1 and 15 above. As can be seen in at least Fig. 10 of Whispell, the substrate comprises a connecting means on at least one side edge and a counter-connecting means arranged on an opposite side edge, wherein the connecting means is configured to engage with the counter-connecting means of a second building panel in a substantially horizonal direction (Fig. 10).
Alternate Rejection
In the event it is determined that the E-modulus is not inherent to De Journo in view of Whispell the claims are rejected as follows:
Claim(s) 1-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over De Journo (CA 2032599)2 in view of Whispell (US 2014/0352248)1 and Boquillon (WO 2019/197393). Supporting evidence provided by Fink (US 5240530)1 and Corbin (US 5538776)1.
With respect to claims 1-6, 8, 15-20, and 22, De Journo teaches a recyclable carpet (building panel) comprising a primary backing (surface layer/carrier) formed from a first material, a pile (decorative carpet fibers) extending from at least the first surface of the primary backing (surface layer/carrier) and made from a material that is of substantially the same generic class as the first material, and a binder adhering to at least the second surface of the primary backing (surface layer/carrier) and made from a material that is of substantially the same generic class as the first material (page 2, line 22 – page 3, line 9). The primary backing (surface layer/carrier), pile (decorative carpet fibers), and binder may all be made from polypropylene (same base polymer) (page 8, lines 2-4).
De Journo is silent as to the carpet (building panel) comprising a substrate comprising a mechanical locking device arranged at least partly along at least one side edge of said carpet (building panel) and configured to connect building panels having corresponding structural and/or mechanical features in an assembled position.
Whispell teaches carpet tiles which combine a carpet layer as a surface layer and a substrate comprised of VCT, LVT, or rubber materials to which the carpeting is attached (paragraph [0071]). In view of a mechanical interlocking tongue and groove system being provided at the profiled edges of the composite structure, the carpet does not need to be adhered to a floor which it is covers to keep the tiles in place (paragraph [0071]). This can provide modular carpet tile flooring which is strongly connecting and can be easily installed, replaced/repaired, and uninstalled while eliminating the need to use costly or difficult to remove adhesives (paragraph [0071]). The rubber can be a thermoplastic elastomer (paragraph [0070]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the carpet include a substrate comprising a mechanical interlocking tongue and groove system is provided at profiled edges attached to the binder of De Journo in order to provide a modular carpet tile flooring which is strongly connecting and can be easily installed, replaced/repaired, and uninstalled while eliminating the need to use costly or difficult to remove adhesives.
It further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the profiled substrate to be a material of substantially the same generic class of the material of the carpet in order to maintain De Journo’s goals of a recyclable carpet where the layers are adhered to each other. Whispell teaches the substrate may be a thermoplastic elastomer (Whispell; paragraph [0070]), and thermoplastic polyolefin elastomers (Fink; col. 6, lines 62-65) and polyester elastomers (Corbin; col. 3, lines 16-19) suitable for use in recyclable carpets are known in the art.
De Journo in view of Whispell is silent as to the substrate having an E-modulus of at least 300 MPa.
Boquillon teaches a floor or wall covering panel comprising a rigid core layer and a wear layer arranged on the core layer (paragraphs [0001], [0006]). The core layer includes a first composite material and a second composite material, each of which comprise a thermoplastic material and a filler material (paragraph [0006]). The term “rigid” refers to a relative high modulus of elasticity, e.g., greater than 1000 MPa, preferably greater than 2000 MPa, more preferably greater than 4000 MPa (paragraph [0009]). Rigid panels facilitate installation and better bridge slight unevenness as well as local bumps or recesses of the installation surface in a permanent manner (paragraph [0009]). The thermoplastic material of the core may be polypropylene (paragraph [0012]). The fillers used are non-polymeric fillers including mineral fillers and natural organic fibers (paragraphs [0019]-[0020]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the substrate of De Journo in view of Whispell to have an elastic modulus of greater than 4000 MPa in order to provide a substrate that is rigid enough to facilitate installation and bridge an unevenness, local bumps, or recesses in the installation surface. It is noted that Boquillon teaches this elastic modulus can be achieved with thermoplastic polymers such as polypropylene (paragraph [0012]) and non-polymeric fillers, therefore the ordinary artisan would be able to maintain De Journo’s goal of recyclability.
With respect to claims 7 and 21, De Journo in view of Whispell and Boquillon teaches all the limitations of claims 5 and 19 above. De Journo further teaches that the binder may be soften through heat (page 9, lines 15-20).
With respect to claims 9 and 23, De Journo in view of Whispell and Boquillon teaches all the limitations of claims 8 and 22 above. The layers of De Journo being formed of polymers of “substantially the same generic class” includes those materials that have substantially the same characteristics so as to permit the two materials to be softened together and then, when cooled, to form one material (De Journo; page 4, line 24 – page 5, line 4). Therefore, when the binder is softened and bonded to the primary backing (surface layer) it becomes one material with the primary backing (surface layer) (De Journo; page 9, lines 15-20). As such, when the carpet of De Journo is bonded to the substrate of Whispell by softening of the lower surface of the carpet as described in the bonding process of De Journo, the material from a surface of said primary backing (surface layer) is at least partially merged with the material of substantially the same generic class of a surface of the substrate.
With respect to claims 10-11 and 24-25, De Journo in view of Whispell and Boquillon teaches all the limitations of claims 9 and 23 above. De Journo further teaches that the “softening” of the material may be through application of heat (lamination process) or treating the material chemically (chemical welding process) (page 5, lines 5-10).
With respect to claims 12 and 26, De Journo in view of Whispell and Boquillon teaches all the limitations of claims 1 and 15 above. De Journo further teaches the pile may be tufted or needled into the primary backing (page 9, lines 5-7).
With respect to claims 13-14 and 27-28, De Journo in view of Whispell and Boquillon teaches all the limitations of claims 1 and 15 above. As can be seen in at least Fig. 10 of Whispell, the substrate comprises a connecting means on at least one side edge and a counter-connecting means arranged on an opposite side edge, wherein the connecting means is configured to engage with the counter-connecting means of a second building panel in a substantially horizonal direction (Fig. 10).
Response to Arguments
Response – Claim Rejections 35 USC §103
Applicant’s arguments submitted on June 30, 2026 have been fully considered and are not persuasive.
On pages 11-12 of the response Applicant submits that De Journo and Whispell’s fundamental purposes and material requirements are incompatible.
The Examiner respectfully disagrees. Applicant argues that De Journo does not teach a rigid substrate and Whispell does not teach the use of the same base polymer, however 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).
As described in the rejection of claim 1 above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the profiled substrate to be a material of substantially the same generic class of the material of the carpet in order to maintain De Journo’s goals of a recyclable carpet where the layers are adhered to each other. Whispell teaches the substrate may be a thermoplastic elastomer (Whispell; paragraph [0070]), and thermoplastic polyolefin elastomers (Fink; col. 6, lines 62-65) and polyester elastomers (Corbin; col. 3, lines 16-19) suitable for use in recyclable carpets are known in the art.
On pages 12-13 of the response Applicant submits that there is no evidence or suggestion in the references that the artisan would (or could) have maintained the same base polymer as the majority polymer through the fibers, layers, binders and substrate while simultaneously achieving the required E-modulus.
The Examiner respectfully disagrees. De Journo in view of Whispell teaches the claimed invention above but does not expressly teach wherein the substrate has an E-modulus of at least 300 MPa. It is reasonable to presume that the E-modulus is inherent to De Journo in view of Whispell. Support for said presumption is found that De Journo in view of Whispell teaches the same structure and material as the claimed invention as described above and below. Additionally, the instant specification at page10, lines 22-25 explains that having an E-modulus of at least 300 MPa allows the creation and use of any desirable mechanical locking device. Since the substrate of Whispell is directed to substrates with an interlocking design (Whispell; paragraph [0002]) in addition to the similarities in structure and material, it is reasonable to presume that the substrate of De Journo in view of Whispell has the claimed E-modulus. See MPEP 2112.
In the alternative, Boquillon teaches a floor or wall covering panel comprising a rigid core layer and a wear layer arranged on the core layer (paragraphs [0001], [0006]). The core layer includes a first composite material and a second composite material, each of which comprise a thermoplastic material and a filler material (paragraph [0006]). The term “rigid” refers to a relative high modulus of elasticity, e.g., greater than 1000 MPa, preferably greater than 2000 MPa, more preferably greater than 4000 MPa (paragraph [0009]). Rigid panels facilitate installation and better bridge slight unevenness as well as local bumps or recesses of the installation surface in a permanent manner (paragraph [0009]). The thermoplastic material of the core may be polypropylene (paragraph [0012]). The fillers used are non-polymeric fillers including mineral fillers and natural organic fibers (paragraphs [0019]-[0020]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the substrate of De Journo in view of Whispell to have an elastic modulus of greater than 4000 MPa in order to provide a substrate that is rigid enough to facilitate installation and bridge an unevenness, local bumps, or recesses in the installation surface. It is noted that Boquillon teaches this elastic modulus can be achieved with thermoplastic polymers such as polypropylene (paragraph [0012]), therefore the ordinary artisan would be able to maintain De Journo’s goal of recyclability.
Boquillon explicitly teaches how a thermoplastic polymer such as polypropylene can be used to make a rigid substrate which fulfills the requirements of the claim using a base polymer and non-polymeric filler materials.
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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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Previously presented
2 Previously presented
Prosecution Insights