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 .
FINAL REJECTION
Election/Restrictions
Newly submitted claims 42-49, 53-57 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the above claims are directed to a method of forming an intermediate substrate, which was identified by the examiner as Group III in the Restriction dated 5/28/25. This Group was non-elected without traverse in the 6/26/25 reply.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 42-49, 53-57 are withdrawn without traverse from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Since the withdrawn claims are directed to a previously identified Group non-elected without traverse, the above election by original presentation shall be treated as a final election without traverse. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15 and 59 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claims 15 and 59, it’s not clear if, or how the “thermoplastic binder” recited in each claim is related to the thermoplastic resin.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 16 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Schulte (EP 3269543, see attached machine translation for citations).
As to claim 1, Schulte discloses a method to produce a panel, comprising providing a core (base) having a first surface (para 6-10), providing a surface layer (decorative – para 7) comprising a substantially uncured amino resin (para 7), applying an hydrolysable adhesive (adhesive, para 6-10) on the first surface of the core and/or on a surface of the surface layer adapted to face the core (para 6-10), arranging the surface layer on the first surface of the core (para 6-10), pressing the surface layer to the core to form a panel by applying heat and pressure in a press (para 9-10), thereby adhering the surface layer to the core by the hydrolysable adhesive and curing (para 21) the amino resin of the surface layer (para 6-10, 14, 21).
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.
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) 50-52 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schultz, as applied to claim1 above, and further in view of Munk et al. (WO02/46325).
As to claims 50-52, Schultz fails to disclose the core comprising 20-60 wt% of the inorganic binder. Munk discloses a binder for a core, said binder comprising polyurethane and 20-60wt% of an inorganic binder. Use of an organic filler in such an amount enables binder with optimal viscosity of application, good fire resistance and good filter sedimentation resistance (p. 2, L4 – p. 3, L24). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Schultz such that the inorganic binder is present in an amount of 20-60wt% as taught by Munk above as such achieves the advantages detailed above.
Allowable Subject Matter
Claims 1-4, 6-14, 17 and 58 are allowed. Schultz discloses a method as detailed in the Non-Final Rejection ( NF). The claim 1 amendment requires the core to comprise at least 10% of thermoplastic resin before the surface layer is applied and adhered to the core. Schultz discloses thermoplastic resin in the core after the adhering occurs (see claim 15 rejection in NF). It is known in the art for a core to contain at least 10% thermoplastic resin before adhering (Baert et al. US 2016/0083965). However, as detailed by applicant in the Remarks, Schultz expressly teaches away from thermoplastic in the core before adhering, and further expressly teaches away from the method of Baert (para 2-6)). As such, any combination of Schultz and Baert would render Schultz unsuitable for its intended purpose.
Response to Arguments
Applicant's arguments filed 2/9/26 have been fully considered but are moot in view of the new ground(s) of rejection or in view of the indication of allowable claims.
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 CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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