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 .
Response to Amendment
This is a response to the amendment filed 6/15/2026. Claims 1 and 14 have been amended. Claim 12 has been canceled.
Response to Arguments
Applicant's arguments have been fully considered and they are persuasive in view of the amendment. While it may have been seen as feasible to use decorative kraft materials known to be used in place of decorative wood material when using intumescent compositions used as adhesive as in CN108659760, there is clearly no specific motivation to treat any such decorative kraft layer on its outward facing surface when using adhesive such as in CN108659760.
Claim Rejections - 35 USC § 112
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 1-11 and 13-15 are 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.
Claim 1 recites “an intumescent-composition- treated side of the kraft paper…” It is unclear if this mandates the side facing away from the wood or cellulose-based material must treated with the aqueous intumescent composition (C) or any intumescent composition. Since there is not support for treating with a distinct intumescent composition, Examiner assume it must be the aqueous intumescent composition (C). Applicant must make this clear, e.g. “wherein a side of the kraft paper facing away from the wood- or cellulose based material is treated with the aqueous intumescent composition (C).” This makes clear the treatment is with the aqueous intumescent composition (C) in the process.
Claim 14 references “and/or an aqueous first-retardant composition (B)” without at all connecting it to the process or the aqueous intumescent composition (C) thus making it unclear if a solution existing at a separate location completely unconnected tot eh current process or aqueous intumescent composition (C) may satisfy this claim. Since the relationship of the an aqueous first-retardant composition (B) to the aqueous intumescent composition (C) is explained in Claim 3, Claim 14 should either dependent from this claim, or else separately define how the aqueous first-retardant composition (B) relates to the process and the aqueous intumescent composition (C).
The remaining claims are rejected as being dependent on an indefinite claim.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/265,965 in view of Kim et al. (US 2003/0022577). Application No. 18/265,965 teaches the exact process of forming the aqueous intumescent composition with the same additives at identical ratios and solids content, and both teach laminating, but teach a different carrier of kraft paper and fiber matte, respectively, and does not teach the away facing side is treated. However, in decorative laminates having fire resistant resins (See, for example Kim et al., page 2, paragraph [0028]), it is known Kraft paper is an alternative to fiber/glass nonwovens, i.e. matting, as carriers for aqueous melamine-formaldehyde resin for fire retardancy, which is known to be coated and/or impregnated into the carrier (See, for example, Kim et al. page 1, paragraph [0004]-[0007] and [0012]-[0013], page 2, paragraph [0054]-[0055], and page 3, paragraph [0071]-[0073], teaching carriers for fire retardant materials include fibrous nonwoven or kraft papers that are typically coated or impregnated with the aqueous resin of melamine-formaldehyde, etc. in distilled water). Thus, it at least would have been obvious when using an aqueous melamine-based carrier for fire retardancy, such as intumescent composition as claimed in Application No. 18/265,965 to impart fire retardancy in decorative laminates via coating the intumescent composition on a layer thereof, that impregnated Kraft paper would have been a known alternative glass or fibrous matting as a known carrier to receive the fire-retardant coating in similar applications. Examiner submits impregnated Kraft paper would have predictably been permeated with the intumescent composition throughout, including on both surfaces, thus having a treat side on both sides, including facing away from the wood or cellulose material.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 1-11, 13, 14, and 15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and if the provisional obviousness-type double patenting requirement is overcome.
The following is a statement of reasons for the indication of allowable subject matter: CN108659760 teaches an essentially identical intumescent composition for veneers and decorative layers. Although it may be plausible to attach these layers or similar alternative well-known decorative layers such as kraft paper via such a composition (since it is taught as an adhesive), there is no motivation to coat an exterior side of a kraft paper used in this fashion because any such paper would be exclusively decorative without motivation to coat such or treat such an intumescent as in CN108659760 exteriorly, or even impregnate it, since there is no suggestion to do this in CN108659760, which exclusively applies to veneers and wooden decorative materials.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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, Michael Orlando can be reached at 5712705038. 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.
/SCOTT W DODDS/Primary Examiner, Art Unit 1746
Prosecution Insights