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 .
Withdrawn Rejections
The 35 U.S.C. 112(b) rejections of claims 41-54, 56-59 and 61 of record in the previous Office Action mailed on 10/1//2025 have been withdrawn due to Applicant's amendment filed on 12/26/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 52 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 52 now recites “the at least part of the thermoplastic polymer is a recycled thermoplastic polymer”. However, claim 41, from which claim 52 depends from, recites “wherein at least part of the thermoplastic material is recycled”, which is similar to what is being recited in claim 52. Thus, it appears claim 52 fails to further limit the subject matter of claim 41. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 41-52, 54, 56-59 and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Van Giel et al. (US 2019/0024384) [hereinafter Van Giel].
Regarding independent claim 41, Van Giel discloses a panel suitable for constructing a waterproof floor or wall covering (paragraph [0024]), wherein the panel has a substantially planar top surface, a substantially planar bottom surface, and at least four substantially linear side edges (paragraph [0027]), wherein the panel is a floor panel or a wall panel (paragraph [0024]) and has a laminate structure which comprises a rigid core layer (substrate; paragraph [0056]) composed of a composite material comprising a mixture of a filler that is a mineral material and a thermoplastic material (claims 1 and 11), a top layer fixed to the core layer (claim 1), wherein the composite material comprises at least 20 wt.% of mineral material (claim 1), which could include at least 65 wt.% of mineral material, wherein at least part of the thermoplastic material can be recycled (paragraph [0053]) and wherein the mixture comprises one or more thermoplastic materials chosen from the group of polyethylene, polypropylene and copolymers thereof (paragraph [0048]), wherein the composite material has a density from 1500 kg/m3 to about 1600 kg/m3 (paragraph [0086]), which falls within the claimed range from 1500 kg/m3 to 2200 kg/m3, wherein the core layer is an extruded layer formed by an extrusion process (paragraphs [0075] and [0122-0124]; claim 17), wherein the core layer has a solid structure free of a foam structure, since including a foaming agent is optional (Table 1, Examples 2 and 5; paragraph [0050]), and wherein a modulus of elasticity of the core layer and/or the panel is about 4000 MPa to about 10,000 MPa (paragraph [0056]).
Van Giel fails to specifically teach the composite material comprising at least 65 wt.% of mineral material.
However, Van Giel teaches a composite material comprising at least 20 wt.% of mineral material (claim 1) which could include at least 65 wt.% of mineral material.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wt.% of mineral material in Van Giel to be at least 65 wt.%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05 (II).
Regarding claim 42, Van Giel discloses the mixture can further comprises one or more thermoplastic materials chosen from the group consisting of polyvinyl acetate, polyvinyl alcohol, vinyl and vinylidene resins and copolymers thereof, acrylonitrile butadiene styrene, styrene acrylonitrile resin, polystyrenes and copolymer thereof, saturated and unsaturated polyesters, acrylics, polyamides, nylon containing polyamides, engineering plastics, acetyl, polycarbonate, polyimide, polysulfone, polyphenylene oxide and sulfide resins (paragraphs [0046-0048]).
Regarding claim 43, Van Giel discloses the core layer further comprising one or more conductive thermoplastic polymers (paragraphs [0026] and [0120]).
Regarding claim 44, Van Giel fails to specifically teach the composite material comprising at least 70 wt.% of mineral filler. However, Van Giel teaches a composite material comprising at least 20 wt.% of mineral material (claim 1) which could include at least 70 wt.% of mineral material. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wt.% of mineral material in Van Giel to be at least 70 wt.%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05 (II).
Regarding claim 45, Van Giel discloses the composite material comprising at least 15% by weight of thermoplastic material (paragraphs [0052-0053]).
Regarding claim 46, Van Giel discloses the composite material comprising one or more additives chosen from the group consisting of a pigment, an impact modifier, an internal lubricant, an external lubricant, a stabilizer, a wax and/or an aid processing agent (paragraphs [0106-0111] and [0120]).
Regarding claim 47, Van Giel discloses at least one impact modifier comprising a thermoplastic elastomer (paragraph [0108]).
Regarding claim 48, Van Giel discloses at least one stabilizer being a calcium zinc stabilizer, barium-cadmium stabilizer, barium-zinc stabilizers, organotin stabilizers or epoxidized soybean oils (paragraph [0110]).
Regarding claim 49, Van Giel discloses the total amount of additives present in the composite core layer can be restricted to 1-15% by weight (paragraphs [0106] and [0110]).
Regarding claim 50, Van Giel discloses the core layer comprising organic fibers (paragraphs [0061-0062]).
Regarding claim 51, Van Giel discloses the composite material comprising at least one bio plasticizer in an amount less than 5 wt.% (paragraphs [0088-0092]). However, Van Giel fails to specifically teach the bio-plasticizer being a plasticizer derived from vegetable oils or an epoxy-functional bio-derived plasticizer formed by an epoxy-functional fatty acid ester obtained from a vegetable oil selected from the group consisting of soybean oil, canola oil, corn oil, linseed oil, rapeseed oil, safflower oil, sunflower oil, tall oil, tung il, and mixtures and derivatives thereof. Van Giel teaches the plasticizer can be a natural-material based plasticizers (paragraph [0090]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the plasticizer in Van Giel to include a plasticizer derived from vegetable oils or an epoxy-functional bio-derived plasticizer formed by an epoxy-functional fatty acid ester obtained from a vegetable oil selected from the group consisting of soybean oil, canola oil, corn oil, linseed oil, rapeseed oil, safflower oil, sunflower oil, tall oil, tung il, and mixtures and derivatives thereof, if so desired, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Regarding claim 52, Van Giel discloses the at least part of the thermoplastic polymer can be a recycled thermoplastic polymer (paragraph [0053]; claim 11).
Regarding claim 54, Van Giel discloses the mineral material of the rigid core layer being selected from the group consisting of one or more of calcium carbonate, clay, limestone, talc, calcium silicate, and chalk (paragraphs [0057-0058]).
Regarding claim 56, the limitations “formed by an extrusion process” and “formed by a co-extrusion process” are deemed process limitations. Thus, claim 56 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited step implies forming a top layer and fixing the top layer to the core layer. As shown above, Van Giel teaches the structure of the panel, i.e. a core layer and a top layer, and the top layer fixed to the core layer. The method of forming the product is not germane to the issue of patentability of the product itself. MPEP 2113.
Regarding claims 57-58, Van Giel discloses the top layer being a wood or decorative vinyl/plastic veneer layer adhered to a top surface of the core layer (paragraphs [0067-0068] and [0132]).
Regarding claim 59, the limitation “are fixed to each other by virtue of a fusion bonding which has been formed under heat and pressure” is deemed a process limitation. Thus, claim 59 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited step implies a top layer fixed to a core layer. As shown above, Van Giel suggests such a product. The method of forming the product is not germane to the issue of patentability of the product itself. MPEP 2113.
Regarding independent claim 61, Van Giel discloses a panel suitable for constructing a waterproof floor or wall covering (paragraph [0024]), wherein the panel has a substantially planar top surface, a substantially planar bottom surface, and at least four substantially linear side edges (paragraph [0027]), wherein the panel is a floor panel or a wall panel (paragraph [0024]) and has a laminate structure which comprises a rigid core layer (substrate; paragraph [0056]) composed of a composite material comprising a mixture of a filler that is a mineral material and a binder (resin) that is a thermoplastic material (claims 1 and 11), a top layer fixed to the core layer (claim 1), wherein the composite material comprises at least 20 wt.% of mineral material (claim 1), which could include at least 65 wt.% of mineral material, wherein at least part of the thermoplastic material is recycled (paragraph [0053]) and wherein the mixture comprises one or more thermoplastic materials chosen from the group of polyethylene, polypropylene and copolymers thereof (paragraph [0048]), wherein the composite material has a density from 1500 kg/m3 to about 1600 kg/m3 (paragraph [0086]), which falls within the claimed range from 1500 kg/m3 to 2200 kg/m3, wherein the core layer is an extruded layer formed by an extrusion process (paragraphs [0075] and [0122-0124]; claim 17), wherein the core layer has a solid structure free of a foam structure, since including a foaming agent is optional (Table 1, Examples 2 and 5; paragraph [0050]), and wherein a modulus of elasticity of the core layer and/or the panel is about 4000 MPa to about 10,000 MPa (paragraph [0056]).
Van Giel fails to specifically teach the composite material comprising at least 65 wt.% of mineral material.
However, Van Giel teaches a composite material comprising at least 20 wt.% of mineral material (claim 1) which could include at least 65 wt.% of mineral material.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wt.% of mineral material in Van Giel to be at least 65 wt.%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05 (II).
Response to Arguments
Applicant's arguments, filed 12/26/2025, have been fully considered but they are not persuasive.
Applicant argues that Van Giel teaches away from a solid core. The teaching of a high void (cavity) volume in Van Giel is the exact opposite of the presently claimed solid structure, which is free of a foam structure.
This argument is not deemed persuasive. Van Giel may teach the core having a foam structure, however, adding a foaming agent to the core is optional (paragraph [0050]; see Table 1, Examples 2 and 5). 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). Thus, Van Giel teaches a core layer having a solid structure free of a foam structure as recited in independent claims 41 and 61.
Applicant further argues that Van Giel teaches away from a high filler content in the core. The high mineral content of claim 41, which is at least 65 wt%, is substantially higher than the preferred maximum of Van Giel, which is 50 wt%. The currently recited subject matter of amended independent claim 41 overcomes the difficulty of having a higher filler material over 50%, as warned against by Van Giel”.
This argument is not deemed persuasive. Van Giel may teach that the amount of filler present is at most 50 wt.%. However, this is a preferred embodiment (paragraph [0035]). 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). Van Giel teaches the filler is present in an amount of at least 20 wt% (see abstract and claim 1) which could include at least 65 wt% as recited in independent claims 41 and 61. Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wt.% of mineral material in Van Giel to be at least 65 wt.%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05 (II).
In view of the foregoing, independent claims 41 and 61 are unpatentable over Van Giel. Dependent claims 42-52, 54 and 56-59 are also unpatentable over Van Giel for at least the reasons given above.
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 CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781