DETAILED ACTION
Response to Amendment
Applicant’s amendment filed 10/27/25 have 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.
As to claim 28, the phrase “without use of an intermediate carrier film” is not supported within the specification. This limitation if an exclusionary phrase and the specification does not provide any support for this limitation. This negative limitation cannot be established solely based on the fact that the specification is silent to a carrier element.
As to claim 30 the phrase “glass mat” is not supported within the specification. The specification only provides support for reinforced layer made of a polymer with glass fibers.
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 overlay 102, at least one decorative layer 101 (first pattern), at least one underlay 103 and at least one substrate 106. Dong discloses that the overlay should be transparent so that the image of the decorative layer will transmit as intended and that the overlay may be comprised of a clear PVC or acrylic matrix. The decorative layer can be printed polymeric films or papers and the images can be photographic pictures. The decorative layer can be reverse printed on a single film or on a carrier film or multi-layer direct printed onto the films. The decorative layer is preferably is a reverse printed acrylic film or printed on the reverse film of a carrier layer (first 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 under the print layer to create a desired aesthetic image. The underlay/solid color layer substantially covers the layers of the decorative layers.
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.
As to claim 29, Dong discloses that the underlay prevents telegraphing of the substrate through the underlay, further Dong discloses a solid color layer under the print layer. These two layers would read on applicant’s opaque layer, in the alternative it would have been obvious to make these layers opaque in order to provide a more aesthetically pleasing panel.
As to claim 30, in one view, the solid color layer will read on the second layer and the underlay will read on the reinforcement layer, in an alternative view a second underlay can be present which would read on the reinforcement layer. The underlay layer can be made of the same materials as the overlay layer. The materials can be a glass fiber reinforced PVC layer.
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, further if reverse printed on the carrier film 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 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 overlay or carrier layer.
It would have been obvious to one of ordinary skill in the art to have modified Dong and formed the overlay or 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 overlay/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 overlay/carrier layer having a photoinitiator. Dong does teach that the overlay layer is an acrylic, polyurethane or PVC and the carrier layer is PVC or any suitable material.
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 overlay/carrier or using Crettes overlay for the overlay or 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 polyurethane and 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 overlay/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 overlay/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 overlay/carrier layer having a relief structure. Dong discloses that the decorative layer can comprise multiple layers 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 overlay/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 10/27/25 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 claim the rejection discloses a reverse printed film whether it is a single layer or multilayer. The claims are comprising language and would allow for a multilayer film. The art being applied discloses both a single film that is reverse printed or a multilayer decorative film that is reverse printed and therefore would read on claim 28.
As to claim 29, The examiner argues that the underlay film is made of the same materials as the claimed invention and further it is used for flooring the layer will prevent telegraphing as well as provide decorative effects for the printed image.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 5712721291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER M POLLEY/Primary Examiner, Art Unit 1785