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Withdrawn Rejections
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response dated April 30, 2026. However, new rejections may have been made using the same prior art if still applicable to the newly presented amendments and/or arguments.
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 21 – 28 are rejected under 35 U.S.C. 103 as being unpatentable over Muxlow (USPN 9,365,385) in view of Doyle (USPGPub 2013/0236676 A1) and Saruwatari et al. (USPN 5,255,727).
Muxlow discloses a surface protector for providing temporary protection to at least a portion of a top surface of a walkable surface (Figures; Abstract); said surface protector consists essentially of a single sheet of bendable water-resistant material (Column 2, lines 25 – 26); said single sheet has a perimeter edge, a top surface, and a bottom surface (Figures 1 and 2; Column 2, lines 30 – 32); said perimeter edge formed of a front edge, a back edge, a first side edge, and a second side edge (Figures 1 and 2; Column 2, lines 30 – 32); said single sheet has no more than three preformed creases (Claim 7; Column 2, lines 27 – 54); said single sheet has a first preformed crease that is offset a distance inward from said first side edge of said single sheet (Figures 1 and 2, #40, 50 and 60; Column 2, lines 34 – 36); said first preformed crease formed on said top surface of said single sheet (Column 2, lines 42 – 45); said first preformed crease forming a reduced thickness in said single sheet prior to said single sheet being folded along said first preformed crease (Column 3, lines 4 – 15); said first preformed cease has a depth of 5-40% of a thickness of said single sheet such that said first preformed crease does not fully penetrate said single sheet (Column 3, lines 4 – 15); said single sheet configured to be foldable along said first preformed crease to thereby create a first portion and a second portion without damaging said single sheet and without compromising the water-resistant properties of said single sheet along said first preformed crease (Column 2, line 27 to Column 3, line 32; Figures 1 and 2, #40, 50 and 60, the portions between the creases); said second portion has a width that extends from said first preformed crease to said first side edge (Figures 1 and 2, #40, 50 and 60, the portions between the creases); a width of said second portion is less than a width of said first portion (Column 6, lines 51 – 67); said first preformed crease configured to be water-resistant both prior to and after said single sheet is folded along said first preformed crease (Column 2, line 27 to Column 3, line 32); said single sheet has a second preformed crease that is offset a distance inward from said second side edge of said single sheet (Figures 1 and 2, #40, 50 and 60; Column 2, line 27 to Column 3, line 32); said second preformed crease spaced from said first preformed crease (Figures 1 and 2, #40, 50 and 60; Column 2, line 27 to Column 3, line 32); said second preformed crease positioned parallel to said first preformed crease (Figures 1 and 2, #40, 50 and 60; Column 2, line 27 to Column 3, line 32); said second preformed crease forming a reduced thickness in said single sheet prior to said single sheet being folded along said second preformed crease (Column 3, lines 4 – 15); said second preformed cease has a depth of 5-40% of said thickness of said single sheet such that said second preformed crease does not fully penetrate said single sheet (Column 3, lines 4 – 15); said single sheet configured to be foldable along said second preformed crease to thereby create a third portion without damaging said single sheet and without compromising the water-resistant properties of said single sheet along said second preformed crease (Figures 1 and 2, #40, 50 and 60, the portions between the creases; Column 3, lines 4 – 15); a width of said first portion extends from said first preformed crease to said second preformed crease (Column 6, lines 51 – 67); a width of said third portion is less than said width of said first portion (Column 6, lines 51 – 67); said second preformed crease is configured to be water-resistant both prior to and after said single sheet is folded along said second preformed crease (Column 2, line 27 to Column 3, line 32); said first and second preformed crease configured to enable said second and third portions to bend upwardly above a top surface of said first portion (Figure 1) and, a second surface protector (Column 7, lines 13 – 17); said second surface protector formed of a bendable water- resistant material that has a top surface and a bottom surface (Column 7, lines 13 – 17) as in claims 21 and 25. With respect to claims 22 and 26, said single sheet is formed of paperboard or fiberboard (Column 2, lines 25 – 26). Regarding claim 23, wherein said single sheet includes a third preformed crease (Figures 1 and 2, #40, 50 and 60; Column 2, line 27 to Column 3, line 32); said third preformed crease is positioned parallel to said second preformed crease (Figures 1 and 2, #40, 50 and 60; Column 2, line 27 to Column 3, line 32); said third preformed crease is positioned on a top surface of said single sheet (Claim 7; Column 2, lines 27 – 54); said third preformed crease is positioned between said second side edge and said second preformed crease (Figures 1 and 2, #40, 50 and 60); said third preformed cease has a depth of 5-40% of said thickness of said single sheet such that said third preformed crease does not fully penetrate said single sheet (Column 3, lines 4 – 15); said single sheet configured to be foldable along said third preformed crease to thereby create a fourth portion without damaging said single sheet and without compromising the water-resistant properties of said single sheet along said third preformed crease (Column 2, line 27 to Column 3, line 32); a width of said fourth portion is less than said width of said first portion (Column 6, lines 51 – 67); a width of said fourth portion is less than said width of said second portion (Column 6, lines 51 – 67); a width of said third portion is less than said width of said second portion (Column 6, lines 51 – 67). For claim 24, said single sheet includes a third preformed crease; said third preformed crease is positioned parallel to said second preformed crease (Figures 1 and 2, #40, 50 and 60; Column 2, line 27 to Column 3, line 32); said third preformed crease is positioned on a top surface of said single sheet (Claim 7; Column 2, lines 27 – 54); said third preformed crease is positioned between said second side edge and said second preformed crease (Figures 1 and 2, #40, 50 and 60); said third preformed cease has a depth of 5-40% of said thickness of said single sheet such that said third preformed crease does not fully penetrate said single sheet (Column 3, lines 4 – 15); said single sheet configured to be foldable along said third preformed crease to thereby create a fourth portion without damaging said single sheet and without compromising the water-resistant properties of said single sheet along said third preformed crease (Column 2, line 27 to Column 3, line 32); a width of said fourth portion is less than said width of said first portion (Column 6, lines 51 – 67); a width of said fourth portion is less than said width of said second portion (Column 6, lines 51 – 67); a width of said third portion is less than said width of said second portion (Column 6, lines 51 – 67). In claim 27, said second surface protector consists essentially of a single sheet of bendable water-resistant material (Column 7, lines 13 – 17; Column 2, line 27 to Column 3, line 32); said single sheet has a perimeter edge, a top surface, and a bottom surface (Figures 1 and 2; Column 2, lines 30 – 32); said perimeter edge formed of a front edge, a back edge, a first side edge, and a second side edge (Figures 1 and 2; Column 2, lines 30 – 32); said single sheet has no more than three preformed creases (Claim 7; Column 2, lines 27 – 54); said single sheet has no more than three preformed creases (Claim 7; Column 2, lines 27 – 54); said single sheet has a first preformed crease that is offset a distance inward from said first side edge of said single sheet (Figures 1 and 2, #40, 50 and 60; Column 2, lines 34 – 36); said first preformed crease formed on said top surface of said single sheet (Column 2, lines 42 – 45); said first preformed crease forming a reduced thickness in said single sheet prior to said single sheet being folded along said first preformed crease (Column 3, lines 4 – 15); said first preformed cease has a depth of 5-40% of a thickness of said single sheet such that said first preformed crease does not fully penetrate said single sheet (Column 3, lines 4 – 15); said single sheet configured to be foldable along said first preformed crease to thereby create a first portion and a second portion without damaging said single sheet and without compromising the water-resistant properties of said single sheet along said first preformed crease (Column 2, line 27 to Column 3, line 32; Figures 1 and 2, #40, 50 and 60, the portions between the creases); said second portion has a width that extends from said first preformed crease to said first side edge (Figures 1 and 2, #40, 50 and 60, the portions between the creases); a width of said second portion is less than a width of said first portion (Column 6, lines 51 – 67); said first preformed crease configured to be water-resistant both prior to and after said single sheet is folded along said first preformed crease (Column 2, line 27 to Column 3, line 32); said single sheet has a second preformed crease that is offset a distance inward from said second side edge of said single sheet (Figures 1 and 2, #40, 50 and 60; Column 2, line 27 to Column 3, line 32); said second preformed crease spaced from said first preformed crease (Figures 1 and 2, #40, 50 and 60; Column 2, line 27 to Column 3, line 32); said second preformed crease positioned parallel to said first preformed crease (Figures 1 and 2, #40, 50 and 60; Column 2, line 27 to Column 3, line 32); said second preformed crease forming a reduced thickness in said single sheet prior to said single sheet being folded along said second preformed crease (Column 3, lines 4 – 15); said second preformed cease has a depth of 5-40% of said thickness of said single sheet such that said second preformed crease does not fully penetrate said single sheet (Column 3, lines 4 – 15); said single sheet configured to be foldable along said second preformed crease to thereby create a third portion without damaging said single sheet and without compromising the water-resistant properties of said single sheet along said second preformed crease (Figures 1 and 2, #40, 50 and 60, the portions between the creases; Column 3, lines 4 – 15); a width of said first portion extends from said first preformed crease to said second preformed crease (Column 6, lines 51 – 67); a width of said third portion is less than said width of said first portion (Column 6, lines 51 – 67); said second preformed crease is configured to be water-resistant both prior to and after said single sheet is folded along said second preformed crease (Column 2, line 27 to Column 3, line 32) as in claims 27 and 28. However, Muxlow fails to disclose a preapplied adhesive strip arrangement secured to said single sheet; said preapplied adhesive strip arrangement includes first and second adhesive strips and a removable top protective release liner on a top adhesive surface of ach of said first and second adhesive strips, said single first adhesive strip arrangement is positioned on a top surface of said second portion; said first adhesive strip arrangement is spaced from said first side edge and runs parallel to said first side edge; said second adhesive strip positioned parallel to said first adhesive strip; said second adhesive strip positioned on said bottom surface of said single sheet, a bottom portion of said second surface protector overlying a top portion of said first surface protector; said bottom portion of said second surface protector connected to said top surface of said first surface protector by at least one of said first and second adhesive to form a permanent connection between said first and second surface protectors and a dust-proof connection between said first and second surface protectors.
Doyle teaches a surface protector for providing temporary protection to at least a portion of a top surface of a walkable surface (Figures; Abstract) having a single/at least one preapplied adhesive strip spaced from at least a portion of said perimeter of said single sheet (Claims 10 and 13); said single/at least one preapplied adhesive strip attached to said bottom surface of said single sheet (Claims 10 and 13); said single/at least one preapplied adhesive strip having a top adhesive surface (Paragraph 0016; Claims 10 and 13); said single/at least one preapplied adhesive strip running parallel to at least a portion of said perimeter edge (Figures 3 and 4, #303); said single/at least one preapplied adhesive strip including a removable top protective release liner that, when removed, exposes said top adhesive surface of said single/at least one preapplied adhesive strip (Paragraph 0016) for the purpose of preventing debris from contaminating the underlying floor (Paragraph 0016).
Saruwatari et al. teach a surface protector for providing temporary protection a surface (Figures; Abstract) comprising a preapplied adhesive strip arrangement secured to said single sheet (Figure 3, #27, 28 36 – 43; Column 4, line 5 – 34); said preapplied adhesive strip arrangement includes first and second adhesive strips (Figure 3, #27, 28 36 – 43; Column 4, line 5 – 34), said single first adhesive strip arrangement is positioned on a top surface of said second portion (Figure 3, #27, 28 36 – 43; Column 4, line 5 – 34); said first adhesive strip arrangement is spaced from said first side edge and runs parallel to said first side edge (Figure 3, #27, 28 36 – 43; Column 4, line 5 – 34); said second adhesive strip positioned parallel to said first adhesive strip (Figure 3, #27, 28 36 – 43; Column 4, line 5 – 34); said second adhesive strip positioned on said bottom surface of said single sheet (Figure 3, #27, 28 36 – 43; Column 4, line 5 – 34) for the purpose of improving the method of protecting a surface (Column 2, lines 5 – 20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a preapplied adhesive strip on two surfaces of a protector in Muxlow in order to prevent debris from contaminating the underlying floor as taught by Doyle and to improve the method of protecting a surface as taught Saruwatari et al.
With regard to “a portion of said second surface protector overlying a portion of said first surface protector and only a portion of a bottom surface of said second surface protector adhesively connected to said top surface of said first surface protector to form an adhesive connection and which adhesive connection forms a permanent connection between said first and second surface protector and a dust-proof connection between said first and second surface protector” and “said preapplied adhesive strip configured to the secured the walkable surface or another surface protection material located on the walkable surface”, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the adhesive strip of Doyle adhere one surface protector to another protector or to a walkable surface since it is known in the art to adhere to articles together using adhesive as stated by Doyle (Paragraph 0016, line 16, wherein flexible tape is used to adhere the base board protectors to the central panel).
Response to Arguments
Applicant's arguments filed April 30, 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument that Doyle does not disclose surface protector consisting of a single sheet of material, the Examiner respectfully disagrees. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Muxlow is used to disclose a surface protector for providing temporary protection to at least a portion of a top surface of a walkable surface (Figures; Abstract), wherein said surface protector consists essentially of a single sheet of bendable water-resistant material (Column 2, lines 25 – 26).
In response to Applicant’s argument that Doyle only teaches that the first and second baseboard protectors can include an adhesive strip, but such adhesive strip is positioned on the same side so that the first and second baseboard protectors can be connected to a wall surface, the Examiner respectfully disagrees. The limitation of the adhesive strip being two different surfaces of the surface protector was recently added to the claims. While Doyle does not disclose the limitation, please the rejection in view of Saruwatari et al.
In response to Applicant’s argument that Doyle only discloses use of adhesive strips to adhesively connect the surface protector to another surface protector, the Examiner respectfully disagrees. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The adhesive may be attached to a variety of surfaces including another surface protector.
In response to Applicant’s argument Doyle does not teach a protection device that includes creases between the first and second baseboard protectors and the central panel, the Examiner respectfully disagrees. Muxlow and Doyle teach the surface production system make contain a multiple creases in different configurations (Figures). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrange the creases in the desired configuration, since it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP 2144.04
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 Patricia L Nordmeyer whose telephone number is (571)272-1496. The examiner can normally be reached 10am - 6:30pm EST, Monday - Friday.
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, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/ Primary Examiner, Art Unit 1788 May 22, 2026
Prosecution Insights