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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) filed 27 September 2023 has not been considered by the examiner because it is unclear how DE 10 2019 203 775 A1 relates to the instant application given that DE 10 2019 203 775 A1 is drawn to a method and apparatus for using error propagation and makes no mention whatsoever of a panel comprising a substrate, a polyurethane bonding layer, and a decorative paper impregnated with melamine formaldehyde resin or acrylate resin.
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 57-58 and 64-70 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.
With respect to claim 57, the claim recites “…a layer of the substrate which contains polyvinyl butyral as a binder on the one hand and a filler or a wood-based filler on the other hand”. It is not clear what is meant by “on the one hand” and “on the other hand”. Does the substrate require both polyvinyl butyral and a filler or a wood-based filler or only a polyvinyl butyral or a filler or a wood-based filler?
Claims 58 is rejected under 35 U.S.C. 112(b) due to its dependency on claim 64.
With respect to claim 64, the claim recites “The panel” in line 1, but does not specify which claim that claim 64 is meant to depend from, and thus the claim is indefinite. For the purposes of examination, claim 64 has been interpreted as if it depends from claim 55.
Claims 65-70 are rejected under 35 U.S.C. 112(b) due to their dependency on claim 64.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 55, 57-58, 62-64, and 68-69 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clement et al. (WO 2021/009584 A1, “Clement ‘584”).
With respect to claims 55, 57-58, 62-64, and 68-69, Clement ‘584 discloses a panel (page 1, lines 3-4) comprising first layer of material comprising wood particles glued together by a first binder and a second layer comprising particulate particles glued by means of a second binder (page 3, lines 15-22). The wood particles are wood fibers and the first binder includes thermoset resins (page 4, line 28-page 5, line 4). The particulate particles are wood chips (page 4, lines 16-17) and the second binder is polyvinyl butyral (PVB) (page 6, lines 4-5). The first layer has a material structure of a wood fiberboard (MDF or HDF) (page 5, lines 6-10). The first and second layers correspond to the claimed substrate. A decorative top layer is applied to the second layer (page 14, lines 28-30). The decorative top layer is a printed paper sheet (page 15, lines 4-5). The decorative top layer has a relief (page 15, line 26), which would necessarily be pressed into the decorative top layer. The paper is impregnated with melamine-formaldehyde (page 28, line 29-page 29, line 15). Both surfaces of the paper are coated with polyurethane (page 25, lines 19-21), which would necessarily function as a bonding layer. The paper has a transparent or translucent layer applied thereto made from a thermally cured acrylate layer (i.e., an acrylate lacquer) (page 25, lines 11-15 and 22-23).
Claim 55 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Clement et al. (US 2022/0161539 A1, “Clement ‘539”).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
With respect to claim 55, Clement ‘539 discloses a panel ([0001]) having the structure substrate/binding layer/melamine-based resin layer ([0007], [0024]). The melamine-based resin impregnates a water absorbing substance including paper ([0016], [0026]). The binding layer includes urethane-based binders ([0113]). The melamine-based resin is a melamine formaldehyde resin ([0009]). The melamine-based resin layer is a decorative layer ([0024]) and thus the paper impregnated by the melamine-based resin is a decorative paper.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 56 is rejected under 35 U.S.C. 103 as being unpatentable over Clement et al. (WO 2021/009584 A1, “Clement ‘584”) as applied to claim 55 above.
With respect to claim 56, there is no disclosure from Clement ‘584 regarding the polyurethane applied to both surfaces of the paper (corresponding to the claimed bonding layer as set forth above) containing 7-15 g/m2 of dry weight polyurethane. However, given the amount of adhesive would impact degree of bonding and cost, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to control the amount of polyurethane, including over values presently claimed, in order to provide a bonding layer with desired adhesiveness that is not too expensive.
Claims 59-61 and 65-67 are rejected under 35 U.S.C. 103 as being unpatentable over Clement et al. (WO 2021/009584 A1, “Clement ‘584”) as applied to claims 55 and 64 above, and further in view of Gualandi et al. (EP 1 512 705 A1, “Gualandi”).
With respect to claims 59-61 and 65-67, while Clement ‘584 discloses the use of a polyurethane binding layer as set forth above, Clement ‘584 does not disclose wherein the polyurethane is anionically stabilized, nor wherein the polyurethane is self-crosslinking, nor wherein the polyurethane is at least partly carboxyl-stabilized.
Gualandi teaches an anionic polyurethane polymer having carboxylic groups (i.e., is anionically stabilized and at least partly carboxyl-stabilized), where the polyurethane has hydrolysis stability and is used in adhesives (Abstract, [0001]). While there may be no explicit disclosure from Gualandi regarding the polyurethane being self-crosslinking, given that Gualandi teaches a polyurethane identical to the presently claimed polyurethane, it is clear the polyurethane of Gualandi would necessarily inherently be self-crosslinking, absent evidence to the contrary.
Clement ‘584 and Gualandi are analogous inventions in the field of polyurethane adhesives.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane of Clement ‘584 to be the anionic polyurethane polymer having carboxylic groups taught by Gualandi in order to provide an adhesive having hydrolysis stability (Gualandi, [0001]).
Claim 70 is rejected under 35 U.S.C. 103 as being unpatentable over Clement et al. (WO 2021/009584 A1, “Clement ‘584”) as applied to claims 55 and 64 above, and further in view of Shen et al. (CN 108528125 A, “Shen”). The disclosure of Shen is based off a machine translation of the reference included with this action.
With respect to claim 70, while Clement ‘584 discloses the melamine formaldehyde can be modified (page 29, lines 13-14), Clement ‘584 does not disclose wherein the amount of the modifier.
Shen teaches a paper impregnated with modified melamine formaldehyde ([0010]). The toughener or modifier is present in an amount of 2-45% ([0018]). The toughener increases the toughness of melamine formaldehyde, which are known to be prone to chipping and cracking ([0004]).
Clement ‘584 and Shen are analogous inventions in the field of paper impregnated with modified melamine formaldehyde resins.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified melamine formaldehyde resin of Clement ‘584 to contain 2-45% of a toughening modifier, including values presently claimed, as taught by Shen in order to provide a melamine formaldehyde with increased toughness and is less prone to chipping and cracking (Shen, [0004]).
Claims 55-56, 63-64, and 69 are rejected under 35 U.S.C. 103 as being unpatentable over Kwon et al. (KR 10-2008-0049433 A, “Kwon”) in view of Pankoke et al. (DE 10 2019 203 755 A1, “Pankoke”). The disclosures of Kwon and Pankoke are based off machine translations of the references included with this action.
With respect to claims 55, 63-64, and 69, Kwon discloses a flooring material (i.e., panel) (page 7, last paragraph, “The present invention relates to a flooring material…”) having the structure shown below. The layer 13 is a printed layer ([9]) formed by impregnating a printed paper (page 13, “The printing layer (13) may be manufactured… or by manufacturing it in the form of an impregnated printed paper in which acrylate or thermoplastic resin is impregnated”). The layer 20 is an adhesive layer ([11]) which is a polyurethane-based adhesive (page 14, “an adhesive layer (20)… such as… [a] polyurethane-based adhesive is used”). The layer 31 is a board layer ([12]) including medium density fiberboard (MDF) or high density fiberboard (HDF) (page 10, “Wood-based boards may include… MDF (Medium Density Fiberboard), HDF (High Density Fiberboard)…”). There is additionally a surface treatment layer 11 having an embossed shape (i.e., the surface treatment layer comprises a relief that has been pressed into the decorative surface) (page 13, “before or after treating the surface treatment layer (11), an embossing of a suitable shape can be applied to give an embossed shape to the entire surface layer (10) or a part thereof”). There is also a protective layer 12 is made from a synthetic resin including polyurethane (PU) to protect the printed layer (page 12, “a protective layer (12) made of synthetic resin raw material to protect the printed pattern of the printing layer…”; page 13, “The protective layer (12) is… composed of one or more synthetic resins selected from… PU”) and thus corresponds to the claimed lacquer layer. The protective layer 12 and printed layer 13 are bonded using a transparent adhesive (page 13, “the printed layer (13)… and the protective layer (12) are… bonded using a transparent adhesive”); while there is no disclosure of the transparent adhesive being a polyurethane, given that Kwon discloses the use of a polyurethane adhesive layer (page 14, “an adhesive layer (20)… such as… [a] polyurethane-based adhesive”) and discloses that polyurethane is transparent (page 13, “The protective layer (12)… is transparent… and preferably is composed of… PU” (i.e., polyurethane)), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a transparent polyurethane as the adhesive layer between the protective layer 12 and printed layer 13.
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Kwon does not disclose the use of a melamine resin impregnating the paper.
Pankoke teaches impregnating a layer of paper with melamine-formaldehyde ([0016]) and its use in flooring ([0001]). The flooring also used a core layer made of MDF or HDF ([0018]).
Kwon and Pankoke are analogous inventions in the field of flooring materials containing a core layer of MDF or HDF and utilizing a paper layer impregnated with a melamine resin.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the melamine resin of Kwon to be the melamine formaldehyde resin of Pankoke and thereby arrive at the claimed invention. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945). See also In re Leshin, 227 F.2d 197 (CCPA 1960).
With respect to claim 56, there is no disclosure from Kwon in view of Pankoke regarding the polyurethane applied to both surfaces of the paper (corresponding to the claimed bonding layer as set forth above) containing 7-15 g/m2 of dry weight polyurethane. However, given the amount of adhesive would impact degree of bonding and cost, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to control the amount of polyurethane, including over values presently claimed, in order to provide a bonding layer with desired adhesiveness that is not too expensive.
Claims 59-61 and 65-67 are rejected under 35 U.S.C. 103 as being unpatentable over Kwon et al. (KR 10-2008-0049433 A, “Kwon”) in view of Pankoke et al. (DE 10 2019 203 755 A1, “Pankoke”) as applied to claims 55 and 64 above, and further in view of Gualandi et al. (EP 1 512 705 A1, “Gualandi”). The disclosures of Kwon and Pankoke are based off machine translations of the references included with this action.
With respect to claims 59-61 and 65-67, while Kwon in view of Pankoke discloses the use of a polyurethane binding layer as set forth above, Kwon in view of Pankoke does not disclose wherein the polyurethane is anionically stabilized, nor wherein the polyurethane is self-crosslinking, nor wherein the polyurethane is at least partly carboxyl-stabilized.
Gualandi teaches an anionic polyurethane polymer having carboxylic groups (i.e., is anionically stabilized and at least partly carboxyl-stabilized), where the polyurethane has hydrolysis stability and is used in adhesives (Abstract, [0001]). While there may be no explicit disclosure from Gualandi regarding the polyurethane being self-crosslinking, given that Gualandi teaches a polyurethane identical to the presently claimed polyurethane, it is clear the polyurethane of Gualandi would necessarily inherently be self-crosslinking, absent evidence to the contrary.
Kwon in view of Pankoke and Gualandi are analogous inventions in the field of polyurethane adhesives.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane of Kwon in view of Pankoke to be the anionic polyurethane polymer having carboxylic groups taught by Gualandi in order to provide an adhesive having hydrolysis stability (Gualandi, [0001]).
Claim 70 is rejected under 35 U.S.C. 103 as being unpatentable over Kwon et al. (KR 10-2008-0049433 A, “Kwon”) in view of Pankoke et al. (DE 10 2019 203 755 A1, “Pankoke”) as applied to claims 55 and 64 above, and further in view of Shen et al. (CN 108528125 A, “Shen”). The disclosures of Kwon, Pankoke, and Shen are based off machine translations of the references included with this action.
With respect to claim 70, while Kwon in view of Pankoke discloses the use of melamine formaldehyde, Kwon in view of Pankoke does not disclose wherein the melamine formaldehyde is modified, nor the amount of the modifier.
Shen teaches a paper impregnated with modified melamine formaldehyde ([0010]). The toughener or modifier is present in an amount of 2-45% ([0018]). The toughener increases the toughness of melamine formaldehyde, which are known to be prone to chipping and cracking ([0004]).
Kwon in view of Pankoke and Shen are analogous inventions in the field of paper impregnated with modified melamine formaldehyde resins.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the melamine formaldehyde resin of Kwon in view of Pankoke to contain 2-45% of a toughening modifier, including values presently claimed, as taught by Shen in order to provide a melamine formaldehyde with increased toughness and is less prone to chipping and cracking (Shen, [0004]).
Claims 55 and 58 are rejected under 35 U.S.C. 103 as being unpatentable over Steinmann et al. (EP 3 587 108 A1, “Steinmann”). The disclosure of Steinmann is based off a machine translation of the reference included with this action.
With respect to claims 55 and 58, Steinmann discloses a composite panel having the structure shown in Fig. 1 below. The layer 2 is MDF or HDF fiberboard and corresponds to the claimed substrate ([0005], [0010], [0017], [0019]). The layer 11 is a polyurethane adhesive ([0009], [0019]). The layer 3 is a paper impregnated with a synthetic resin ([0011], [0019]) including a mixture of melamine and formaldehyde (claim 7) (i.e., the paper is impregnated with melamine formaldehyde resin).
In light of the overlap between the panel as claimed and that disclosed by Steinmann, it would have been obvious to one of ordinary skill in the art to use an panel that is both disclosed by Steinmann and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
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Claims 59-61 are rejected under 35 U.S.C. 103 as being unpatentable over Steinmann et al. (EP 3 587 108 A1, “Steinmann”) as applied to claim 55 above, and further in view of further in view of Gualandi et al. (EP 1 512 705 A1, “Gualandi”). The disclosure of Steinmann is based off a machine translation of the reference included with this action.
With respect to claims 59-61, while Steinmann discloses the use of a polyurethane adhesive layer as set forth above, Steinmann does not disclose wherein the polyurethane is anionically stabilized, nor wherein the polyurethane is self-crosslinking, nor wherein the polyurethane is at least partly carboxyl-stabilized.
Gualandi teaches an anionic polyurethane polymer having carboxylic groups (i.e., is anionically stabilized and at least partly carboxyl-stabilized), where the polyurethane has hydrolysis stability and is used in adhesives (Abstract, [0001]). While there may be no explicit disclosure from Gualandi regarding the polyurethane being self-crosslinking, given that Gualandi teaches a polyurethane identical to the presently claimed polyurethane, it is clear the polyurethane of Gualandi would necessarily inherently be self-crosslinking, absent evidence to the contrary.
Steinmann and Gualandi are analogous inventions in the field of polyurethane adhesives.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane adhesive of Steinmann to be the anionic polyurethane polymer having carboxylic groups taught by Gualandi in order to provide an adhesive having hydrolysis stability (Gualandi, [0001]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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