DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Claims 29 – 32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1 – 10, 23, 24, 26 – 28 and 33 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Pervan (US 8,245,477; also published as US 2005/0208255).
With respect to claims 1 and 26, Pervan teaches a sound attenuating laminated panel (Fig.2b), having a laminate structure comprising a plurality of layers (Fig.2a, ltems 34 - 36), wherein an outside layer of the plurality of layers includes a decorative paper (Fig.2a, Item 35), and a wear layer (Fig.2a, Item 34) applied to the decorative paper (Fig.2a, Item 35), wherein the wear layer comprises a thermosetting melamine resin-impregnated material having a sound attenuating characteristic (Col.4, Lines 40 – 42 and Col.8, Lines 59 – 67).
With respect to claim 2, Pervan teaches wherein said laminated panel is one of a floor covering, or a floor panel (Fig.4b; Col.8, Line 59).
With respect to claim 3, Pervan teaches wherein said laminated panel comprises a decorative layer, a core layer, a backing layer, and a wear layer (Figs. 4a and 4b; Col.8, Lines 24 – 67).
With respect to claims 4 – 8 and 23, Pervan teaches wherein the plurality of layers includes treated layer been formed by pre-impregnating a selected layer, with the thermosetting melamine resin-impregnated material prior to production of said laminated panel; or wherein the thermosetting melamine resin-impregnated material is a liquid, solid or film; or wherein the thermosetting melamine resin-impregnated material comprises a natural or synthetic resin with elastomeric properties, applied to the paper layers and/or the wood core; or wherein the thermosetting melamine resin-impregnated material is a one component or multi-component, thermoset, thermoplastic (TPE), solution polymer or water-based or solvent-based dispersion and latexes (Col.9, Lines 1 – 46).
With respect to claims 9 and 10, the limitations do not depart from the scope and spirit of the Pervan invention; additionally, the Examiner considers that it would have been an obvious matter of design choice to provide the sound attenuating laminated panel layers being made from particular materials and having particular dimensions because it would tune the panel to provide a desired acoustic performance as necessitated by the specific requirements of the particular application. Furthermore, 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. In re Leshin, 125 USPQ 416; also, 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. In re Aller, 105 USPQ 233; and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With respect to claims 24, 27 and 28, Pervan teaches the use of a wear layer (Fig.2a, Item 34) and wherein the thermosetting melamine resin-impregnated material (Col.4, Lines 40 – 42) is applied to the decorative paper (Fig.2a, Item 35) such that the decorative paper is bonded to one or more of the other layers of the plurality of layers (Fig.2a) or wherein the plurality of layers includes a fiberboard, and wherein the thermosetting melamine resin-impregnated material is applied to the decorative paper such that the decorative paper is bonded to the fiberboard (Col.8, Lines 24 – 58).
With respect to claim 33, Pervan teaches wherein the thermosetting melamine resin-impregnated material is applied directly to the decorative layer (Col.4, Lines 40 – 42).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 34 – 36 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pervan (US 8,245,477; also published as US 2005/0208255).
With respect to claim 34 and 36, Pervan teaches the limitations already discussed in a previous rejection, but fails to particularly disclose wherein another layer of thermosetting melamine resin-impregnated material is applied to the backing layer or wherein the panel defines at least one edge surface for forming a panel joint.
The Examiner considers that it would have been an obvious matter of design choice to provide another layer of thermosetting melamine resin-impregnated material being applied to the backing layer or to use the panel to define at least one edge surface for forming a panel joint because it would help tune the laminated panel to exhibit a predetermined acoustic performance as necessitated by the specific requirements of the particular application without departing form the scope and spirit of the Pervan invention. Furthermore, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d - 164 7 (1987) ; and it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
With respect to claims 35, the Examiner considers that it would have been an obvious matter of design choice to employ a thermosetting melamine resin-impregnated material composed of a desired chemical combination because it would help tune the laminated panel to exhibit a predetermined acoustic performance and structural integrity as necessitated by the specific requirements of the particular application without departing form the scope and spirit of the Pervan invention; additionally, 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. In re Leshin, 125 USPQ 416.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims (1, 2), 3, (5, 10), (6, 7), 8 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, (8,9), 4, 2, 3 and 5, respectively, of U.S. Patent No. 11,732,468. Although the claims at issue are not identical, they are not patentably distinct from each other because they describe the same invention.
Claims 1 – 3, (5, 10) and 7 – 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 2, 4, 8, 6, 7 and 9, respectively, of U.S. Patent No. 11,041,305. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claimed subject matter is contained in the patented claims and they describe the same invention.
Claims 1 – 3, (5, 10) and 7 – 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 7, 9, 4, 2, 3 and 5, respectively, of U.S. Patent No. 10,287,771. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claimed subject matter is contained in the patented claims and they describe the same invention.
Claims (1, 4), 2, 3, (5, 7, 10), 8 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 2, 3, 7, 8 and 9, respectively, of U.S. Patent No. 8,678,133. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claimed subject matter is contained in the patented claims and they describe the same invention.
Response to Arguments
Applicant's arguments filed on 11/18/2025 have been fully considered but they are not persuasive. The Examiner considers that Pervan teaches the limitations described in the claims as discussed above.
The Examiner considers that any person with ordinary skill in the art would acknowledge that Pervan clearly discloses in Figure 2a and Col.4, Lines 38 – 42 and Col.8, Lines 59 – 67, a sound attenuating laminated panel, having a laminate structure comprising a plurality of layers, wherein an outside layer of the plurality of layers includes a decorative paper, and a wear layer applied to the decorative paper, wherein the wear layer comprises a thermosetting melamine resin-impregnated material having a sound attenuating characteristic as discussed 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDGARDO SAN MARTIN whose telephone number is (571)272-2074. The examiner can normally be reached on 9:00 - 5:00 M - F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shawki S. Ismail can be reached on 571-272-39853985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Edgardo San Martin/
Edgardo San Martín
Primary Examiner
Art Unit 2837
January 16, 2026