DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5-28-2026 has been entered.
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.
Claims 1, 2, and 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 1, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “5 mm or less” regarding the thickness of the cork layer, and the claim also recites “about 1 mm to about 2 mm,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. It is unclear whether Applicant intends to claim a product with a thickness of 5 mm or less, or a product with a thickness of 1 – 2 mm.
Regarding claim 2, the claim states that the total thickness of the covering is about 5 - 9.1 mm. If the acoustical layer has a thickness of 1 – 2 mm and constitutes 30-50% of the thickness of the product (as specified in claim 1, from which claim 2 depends), the total thickness of the product could not be more than approximately 6.7 mm (ie, could not be as high as the claimed 9.1 mm upper limit).
Regarding claim 20, the claim recites the limitation “the wear layer,” but there is insufficient antecedent basis for the limitation in the claim.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Glasis Holding AB, DE 29518858 U1, cited herein according to a machine translation.
Regarding claim 1, DE 29518858 U1 teaches a surface covering comprising an upper section of laminated polymeric layers (layers 4 and 2 of Fig. 1) and a single acoustical layer of cork material (layer 5 of Fig. 1). See Fig. 1 and [0024], [0057]. DE 29518858 U1 teaches that the cork layer may have a thickness of 1-5 mm ([0027]) and that the cork lay may make up 5-30% of the total thickness of the panel ([0028]). Note that when a claimed range overlaps with or lies inside a range disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Although DE 29518858 U1 does not teach any specific density for the cork layer, it is inherent that the cork layer would have the claimed density because the claimed density corresponds to that of cork.
Regarding claim 2, although DE 29518858 U1 does not explicitly teach a total thickness for the product, DE 29518858 U1’s teaching that the cork layer may have a thickness of 1-5 mm and may constitute 5-30% of the total thickness of the product equates to a teaching that the product may have a total thickness of 3.3 mm – 100 mm.
Claims 1-5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Baert et al., US 2015/0368912A1.
Regarding claims 1 and 2, Baert teaches a surface covering ([0003], Fig 2) comprising an upper section of laminated polymeric layers (12, 30, 32, 34, and 36 of Fig. 3) and an acoustical section for dissipating sound waves comprising a single layer (10 of Fig. 2 and 3), the acoustical layer comprising cork ([0032]) and extending entirely along the upper section (Fig. 2). Baert teaches that the panel may have a thickness of up to 8 mm ([0009], claim 1) and that the acoustical layer may have a thickness of 4 mm ([0049]), equating to an implicit teaching that the acoustical layer may comprise 50% of the total thickness of the surface covering. As discussed above, it is unclear whether Applicant intends to claim a thickness of 5 mm or less, or a thickness of 1 – 2 mm. In the case that Applicant wishes to claim a product having a thickness of 5 mm or less, the dimensions taught by Baert overlap in scope with those of the present claim. Although Baert does not teach any specific density for the cork layer, Baert teaches that the layer may be 30 wt. % cork or more ([0032]), which would overlap with the claimed density range given the density of cork.
Regarding claim 3, Baert teaches that the upper section (12 of Fig. 2 and 3) may include a wear layer (30 of Fig. 3), a backing layer (34 or 36 of Fig. 3), and a print layer positioned between the wear layer and the backing layer (32 of Fig. 3); see [0029], [0068].
Regarding claim 4, either side of the product of Fig. 2 could be arbitrarily regarded as the bottom surface.
Regarding claim 5, Baert does not teach any specific thickness for the outer wear layer. Baert does, however, teach that the total thickness of the 4-layer laminate portion 12 may be 0.5 mm ([0049]). It would have been obvious to one of ordinary skill in the art to make each of the 4 layers in portion 12 have and equal thickness and thus comprise 25% of the total thickness, equating to a thickness of 0.125 mm for the outer wear layer.
Regarding claim 18, Baert teaches the use of an adhesive layer for securing the backing layer to the acoustical section ([0028]).
Claims 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Baert et al., as applied above, in view of Naert et al., USPGPub. No. 2014/0315021.
Regarding claims 6 and 7, the teachings of Bart differ from the present invention in that although Baert teaches that the wear layer may comprise PVC, Baert does not teach a plasticizer. Naert, however, teaches a plasticized PVC composition for use in flooring materials (¶ [0003]) comprising a non-phthalate plasticizer that is present in an amount of 25-85 or 10-35 phr (¶ [0109] - [0111]). Naert teaches that the plasticizer may be dipropylene glycol dibenzoate (¶ [0093]). It would have been obvious to one of ordinary skill in the art to use the PVC and dipropylene glycol dibenzoate composition of Naert as the material of Baert, as Naert explicitly teaches that the composition is useful for making flooring materials.
Regarding claim 8, Naert teaches that the composition may comprise 2-8 phr of a stabilizer (¶ [0112]).
Regarding claim 9, Naert teaches various types of stabilizers that may be used in combination (¶ [0144]-[0147]), any of which may correspond to the claimed “co-stabilizer,” and may be present in an amount of 1-10 phr (¶ [0113]).
Regarding claim 10, Naert teaches that a UV light stabilizer may be present (¶ [0147]) in an amount of 1-10 phr (¶ [0113]).
Claims 5, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Baert et al., as applied above, in view of Freedman et al., US PGPub. No. 2013/0299273.
Regarding claim 5, Baert does not teach any specific thickness for the outer wear layer. Freedman, however, teaches a similar flooring product (Abstract) and teaches that the wear layer may have a thickness of 0.008-0.012 inches (¶ [0027]), equating to 0.2 - 0.3 mm. It would have been obvious to one of ordinary skill in the art to make the wear layer of Baert with a thickness of 0.2 – 0.3 mm, as Freedman explicitly teaches such a thickness to be appropriate for a wear layer in such a flooring product.
Regarding claim 11, the teachings of Baert differ from the present invention in that Baert does not teach any specific thickness for the backing layer. Freedman, however, teaches a vinyl backing layer may have a thickness of 2 mm (¶ [0027]). It would have been obvious to one of ordinary skill in the art to use the 2 mm vinyl backing layer of Freedman in the product of Baert, as Freedman explicitly teaches such a backing layer to be appropriate for use as a backing layer in such a flooring product.
Regarding claim 12, Freedman teaches that the vinyl backing layer may be made from polyvinyl chloride (¶ [0026]).
Claims 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Baert and Freedman, as applied above, and further in view of Wilson et al., USPGPub. No. 2014/0044936.
Regarding claim 13, the teachings of Freedman differ from the present invention in that Freedman does not teach the presence of a filler in the backing layer. Wilson, however, teaches a backing layer for a similar floor covering, and teaches that the backing layer may comprise filler in an amount of 10-80% by weight (¶ [0010]), equating to 10-400 parts filler per 100 parts polymer. It would have been obvious to one of ordinary skill in the art to use the backing material of Wilson as the backing material in the product of Freedman, as Wilson explicitly teaches that the backing material of his invention is appropriate for use in such floor coverings.
Regarding claims 14-17, Wilson teaches that the backing layer may comprise an upper and lower layer that are each made from EVA and comprise 10-80% filler by weight (¶ [0010], 0021]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Baert et al., as applied above, as applied above, in view of Boutillier et al., US Pat. No. 4908408.
Regarding claim 19, the teachings of Baert differ from the present invention in that Baert does not teach that the adhesive may be a hot melt ethylene vinyl acetate glue. Boutillier, however, teaches a hot melt ethylene vinyl acetate glue (Abstract) and teaches that the adhesive exhibits good heat resistance (col. 1, ln. 40-50). It would have been obvious to one of ordinary skill in the art to use the adhesive of Boutillier when making the product of Baert, as the adhesive of Boutillier exhibits good het resistance.
Claims 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Baert et al., as applied above, in view of Sigel et al., USPGPub. No. 2002/0168501.
Regarding claims 20 and 21, the teachings of Baert differ from the present invention in that Baert does not teach the presence of a coat layer disposed on the wear layer. Sigel, however, teaches that such floor coverings may have an outer coat layer so as to control the gloss of the product (Abstract), and teaches that the outer coat layer may be made from a UV-curable urethane acrylate (¶ [0019]-[0021]). It would have been obvious to one of ordinary skill in the art to apply an outer coating layer made from a UV-curable urethane methacrylate to the product of Baert, as doing so would allow one to control the gloss of the product.
Regarding claim 22, the teachings of Sigel differ from the present invention in that Sigel does not teach that the coating may have a thickness of about 1 mm. It would, however, have been obvious to one of ordinary skill in the art to make the coating have whatever thickness was necessary to achieve the desired appearance and durability in the coating, depending on the specific material properties of the UV-curable coating material. Additionally, the claimed thickness of “about 1 mm” appears to be an arbitrary recitation of size, and as such cannot distinguish the claimed invention; see MPEP 2144.04 IV A.
Response to Arguments
Applicant’s arguments filed 5-28-2026 regarding the teachings of Baert have been fully considered, but are unpersuasive for the reasons discussed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ian A Rummel whose telephone number is (571)270-5692. The examiner can normally be reached Monday - Thursday and alternating Fridays, 8:30-5:00.
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/IAN A RUMMEL/ Primary Examiner, Art Unit 1785
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