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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/16/26 has been entered.
Currently claims 28-47 are pending and claims 1-27 are cancelled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 28-47 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
a. As to claim 28, the phrase “printed directly on and adhered to a back face of the first layer” is not supported within the specification. This limitation of adhered to the back face of the first layer is not supported within the specification as the specification makes no mention of adhering the printed pattern to the back face of the first layer.
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 28-47 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 claim 28, the phrase “printed directly on and adhered to a back face of the first layer” is renders this claim indefinite because it is unclear as to whether an adhesive layer is present or not. The metes and bounds of this limitation are not provided within the specification and it is unclear as to whether an adhesive layer is present. Therefore, this limitation will be treated as being met if the print is directly applied to the back face of the first layer.
Claim Rejections - 35 USC § 102/103
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.
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 28-35 and 40 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Dong (Wo 02/060702).
Dong discloses a decorative and/or flame-retardant laminate comprising at least one decorative layer as the only required layer in the laminate is the decorative laminate. The decorative layer can be printed polymeric films or papers and the images can be photographic pictures. The decorative layer can be a reverse printed film comprising a carrier film (first layer) and a print layer on the carrier film. The carrier film can act as a performance enhancing layer such as a weathering or wear layer. The carrier layer is a transparent layer as the viewers can see the image from beneath the film. The decorative layer can also be printed with a solid color layer, secondary film (second layer), under the print layer to create a desired aesthetic image. The secondary film can substantially cover the decorative layer.
It should be noted that claim 28 is a product by process claim in that it defines how the pattern layer was formed. 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 steps imply the pattern structure, and the reference discloses such a product. It should be noted that the printed photographic image will read on applicant’s digitally printed pattern in the alternative it would have been obvious to digitally print the photographic images. Therefore, the decorative laminate of Dong will read on applicant’s claim structure as only a decorative layer is required in the alternative it would have been obvious to form the claimed structure as it’s a suitable embodiment disclosed by Dong.
As to claims 29 and 30, Dong discloses that an underlay can be present within the decorative laminate. The underlay layer can be made of the same materials as the overlay layer. The materials of this layer can be a glass fiber reinforced PVC layer. Therefore, the underlay will read on applicant’s reinforcement layer and the secondary film of solid color will read on applicant’s second layer. The secondary layer can be configured to prevent visual telegraphing of the underlay and the underlay can be configured to provide structural rigidity to the panel.
As to claims 31 and 32, it should be noted that all surfaces are considered to have a textured surface. The figures show that the carrier/decorative layers would have a smooth outer surface. In an alternative view it would have been obvious to have the surfaces be textured to enhance the wood grain design as this would be an aesthetic design choice.
As to claims 33-35, Dong discloses that the patterns can any image including wood grains, stones marbles or photographic image. Therefore, it would have been obvious to make the pattern of a natural material or a manmade design such as a tiled surface, brickwork or stone wall as it would be up to the end user to create an aesthetically pleasing image. See MPEP 2144.04.
As to claims 38 and 39, Dong discloses that the overlay layer can have a low or high gloss finish which would be a matte appearance or a glossy appearance. The overlay can be added to the decorative layer as Dong stated the carrier layer can act as a performance enhancing film, therefore the carrier layer can have the glossy or matte appearance. In the alternative, it would be obvious to have the carrier layer have a matte or glossy appearance to help enhance the image to provide a more aesthetically pleasing design. See MPEP 2144.06.
As to claim 40, Dong discloses that the secondary film is provided to create a desired image effect and therefore it would have been obvious to have formed the secondary film to be clear as this would be an aesthetic design choice.
In an alternative view the secondary film is not provided and an underlay will read on the second layer as Dong discloses that the underlay can be made of the same materials as the overlay layer which is a transparent layer, further the underlay layer can optionally have colorants in them. In an alternative view it would have been obvious to have the underlay be clear as this would be an aesthetic design choice.
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 36 is rejected under 35 U.S.C. 103 as being unpatentable over Dong (Wo 02/060702).
Dong anticipates/renders obvious claim 28 for the reasons noted above, however is silent to the thickness of the carrier layer.
It would have been obvious to one of ordinary skill in the art to have modified Dong and formed the carrier layer to have any thickness including a thickness of .01 to .02 inches as one of ordinary skill in the art knows that a thicker carrier layer will provide more protection to the decorative layer as well as cost more and a thinner layer would be cheaper and provide less protection. See MPEP 2144.06 change in thickness.
Claims is 37 is rejected under 35 U.S.C. 103 as being unpatentable over Dong (Wo 02/060702) in view of Crette et al (US Publication 20050176321).
Dong anticipates/renders obvious claim 28 for the reasons noted above, however is silent to the carrier layer having a photoinitiator. Dong does teach that the carrier can be an acrylic, or PVC or any suitable material and act as a weathering/wear layer.
Crette discloses an overlay layer for flooring made from acrylates, polyurethanes that protect a decorative layer. The layer comprises a photoinitiator to help cure the layers.
It would have been obvious to one of ordinary skill in the art to have modified Dong by adding a photoinitiator to the carrier or using Crettes overlay for the carrier layer as one of ordinary skill in the art would know that the overlay of Crette would be a suitable alternative to help protect the decorative layer as that’s the function of both the overlay and carrier layer. See MPEP 2144.05. Further it would have been obvious to add a photoinitiator as it would help cure the acrylic overlays.
Claims 39 is rejected under 35 U.S.C. 103 as being unpatentable over Dong (Wo 02/060702) in view of Plusquellec (FR 2831563 which has been machine translated).
Dong anticipates/renders obvious claim 28 for the reasons noted above, however is silent to the carrier layer having a matte finish.
Plusquellec discloses a flooring wherein the overlay layer has a matte or gloss finish applied on the flooring.
It would have been obvious to one of ordinary skill in the art to have modified Dong and had the carrier be a matte finish as Dong discloses low gloss it and it would have be obvious to form the layer to be matte as suggested by Plusquellec as it would provide for an aesthetically pleasing floor covering.
Claims 41-47 are rejected under 35 U.S.C. 103 as being unpatentable over Dong (Wo 02/060702) in view of Meersseman (US Publication 20060156672).
As to claims 41-47, Dong anticipates/renders obvious claim 28 for the reasons noted above, however is silent to the carrier layer having a relief structure. Dong discloses that the decorative layer can comprise multiple layers/images to having different designs or images to form the complete image.
Meersseman discloses a flooring panel wherein the overlay layer comprises at least one relief element, the relief element has a flat surface and as seen in the figure it will have a recess area. The decorative layer can be a wood pattern.
It would have been obvious to one of ordinary skill in the art to have modified Dong and formed the carrier as suggested by Meersseman and had first printed pattern correspond to a relief element and a second printed pattern on an area adjacent to one relief element, thereby having at least one relief element molded in registry with the first printed pattern as these would be aesthetic design choices to form a more natural and aesthetically pleasing wood grain appearance. Meersseman discloses forming relief patterns to replicate wood patterns and therefore the overlay would help to create a more aesthetically pleasing image. See MPEP 2144.06.
Response to Arguments
Applicant's arguments filed 4/16/26 have been fully considered but they are not persuasive.
Applicant’s argue that Dong does not disclose the decorative layer to have the first digitally printed pattern to be printed on the back face of the first layer without a carrier film. The examiner respectfully disagrees and argues that the claims are of comprising language and would be open to an overlay layer over the carrier layer. However, since Dong discloses that only the decorative layer is required and the other layers are optional when forming the laminate and the fact that the carrier layer can act as the wear layer the new interpretation of Dong will read on the claims as Dong teaches the decorative laminate to be a carrier layer reverse printed with a secondary film under the print.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M POLLEY whose telephone number is (571)270-5734. The examiner can normally be reached Monday through Friday from 8am till 4:30 pm.
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/CHRISTOPHER M POLLEY/Primary Examiner, Art Unit 1785
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