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 .
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.
Claim 34 recites the limitation "the decorative layer". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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 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(s) 21-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jones (USPGPub 2003/0211334) in view of Furuta et al. (US5206281)
Regarding claim 21, Jones teaches that it is known to form a material comprising a core substrate having a surface which may be considered “decorative” with at least one coating layer thereon (see Fig. 1) wherein the COF of the outer surface of the material reads upon the claimed range (see claim 8) wherein at least one intended use of the product of Jones is the for the formation of automotive interiors (title). Jones further teaches the use of a thermoplastic material that reads upon a binder that is included in the substrate material that may be polypropylene [0028]. Jones fails to teach wherein the composition further includes a mineral filler in the ratio to the binder material claimed. However, Furuta teaches that it is known to form automotive interior portions (see paragraph immediately before Examples) from a thermoplastic composition filled with a filler (claim 1) which can be calcium carbonate (see Component (d) Inorganic Filler section) wherein the ratio of filler to a material that can read upon “one thermoplastic binder” reads upon the currently claimed range (claim 2). It is noted that while Furuta teaches the use of a propylene polymer, similar to that used in the Jones, which may be considered a binding material as part (b), the polyphenylene ether of item (a) may also be considered a thermoplastic binder as well as the rubbery substance (c) as claimed by Furuta. As such, Furuta teaches the use of a ratio of mineral filler to “one thermoplastic binder” in a plurality of ways and combinations. Further, Furuta generally implies the benefit of the use of a filler material is for the purpose of providing “dimensional stability and stiffness of molder articles (col. 17, lines 34-38). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate that filler material of Furuta into the invention of Jones in an amount relative to polymeric components found in Jones as guided by Furuta in order to control the dimensional stability and stiffness of the materials of Jones. Further it is noted that a “building panel” is a recitation of intended use of the product produced, presumably a panel used for either building something (which Jones does) or a panel that is placed inside a “building”, which is an extremely broad term. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing 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" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claim 22, more than one layer of stack between the substrate and clear coat layer may be considered a “primer layer” and given that the purpose of the invention of Jones is to provide a “low gloss” interior, reasonably any layer present may be considered a “gloss control layer”.
Regarding claim 23, the invention of Jones may comprise a core layer (substrate) coated with a surface adhesion layer (film) thereafter coated with a primer layer (tie coat) further coated with a clear coat (coating layer)(see Fig. 1).
Regarding claim 24, the tie coat or color coat of Jones could be considered a gloss control layer wherein are fully exposed to the layers adjacent to them. Further providing a second layer that may be identical to the tie coat or color coat of Jones would be considered a mere duplication of parts of the product of Jones wherein the Court has long held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See In reHarza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
Regarding claim 25, the gloss level of the upper surface of the invention of Jones reads upon the claimed range (see claim 1).
Regarding claim 26, the teachings of Jones in view of Furuta are as shown above. Jones in view of Furuta fails to teach explicitly wherein the surface may comprise a plurality of cavities although the surface area of Jones may be arbitrarily divided into first and second surface areas. However, the surface of Jones is provided with a “surface micro-roughness”. In prior art in general surface micro-roughness is generally characterized by pluralities of high and low areas which in combination result in an overall micron scale roughness associated with a surface. Reasonably, without clarification in the current claims as to differentiate the “cavities” claimed from lower areas on the surface of Jones that constitute the provided micro-roughness, the lower areas of the microroughness of Jones would read upon “cavities”. Further, the micro-roughness of Jones must have some shape to it and a change in shape of the micro-roughness of Jones to the shape of “cavities” broadly would constitute a mere change in surface shape of the invention of Jones wherein the Court has long held that changes in shape in the absence of a new and unexpected result arising form said change in shape are unpatentable over the provided prior art shape. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Further, Jones does not provide any gloss level deviation measurements. However, any two areas of Jones may be selected for comparison wherein the areas may be substantially identical in shape, size and gloss level and be expected to meet the limitations of the current claims. Further, it is the intent of Jones to provide a “uniformly distributed low gloss surface” [0032]. One of ordinary skill reviewing Jones would generally understand Jones to provide as little deviation in gloss level as possible because Jones clearly states indicates that overall gloss level is one of the qualities that makes his product desirable. Therefore, in the absence of criticality of the specific gloss level deviation of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the gloss level deviation of Jones within a range so as to provide the uniformity of gloss level explicitly desired by Jones. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Claim(s) 27 and 30-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duong (US4411931) in view of Weitzel et al. (US6027672) and Tanaka et al. (US4877964).
Regarding claims 27, Duong teaches that it is known to form wall or floor coverings (abstract) using a curing system/apparatus comprising an inert gas provision system (claim 1) and a set of at least two irradiation unit capable of providing radiation at two varying wavelengths (see Example 1) and a conveyor system (see Example 3) for passing the article to be treated through the entirety of the system. Duong fails to teach wherein the system is contained within a chamber and how components would be arranged if they were present within a chamber. However, Weitzel teaches a curing system/apparatus employing radiation processing and inert gas provision that shows that the system is provided with an “enclosure… for controlling the atmosphere surrounding the substrate” (col. 4, lines 24-39). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide the system of Duong with the enclosure of Weitzel in order to provide the ability to better control the atmosphere around substrates to be treated in Duong.
Further one providing an enclosure to the invention of Duong which comprises a conveyor system would reasonably provide it in a manner that would allow for entry into the enclosure at one end and an exit at the other end. The examiner it taking Official Notice to inform the applicant that this is a common general arrangement of parts for a system involving a covered conveyor system wherein treatment takes place within the enclosure and it would be obvious to combine the two inventions of Duong and Weitzel in this general arrangement because of that common knowledge. Further if the invention Duong were placed in the enclosure of Weitzel, the successive treatment using the irradiation units of Duong would occur as claimed. The teachings of Duong in view of Weitzel are as shown above. Duong in view of Weitzel fails to teach wherein the chamber comprises a flexible closing element as claimed that would be expected to contact the panel being treated upon exit and to engage with the conveyor otherwise to substantially fully close the chamber otherwise. However, Tanaka teach that it is known to treat substrates with radiation as they pass on a conveyor inside of a chamber (see abstract and Fig. 1) wherein a strip curtain or two separate strip curtains, paired on each end the conveyor may be used (see Fig. 3, items 22A, 4A, 5A and 23A) wherein as described, the product “pushes aside the curtain” and the curtains are otherwise “completely closed” such that there is “no leakage of ultraviolet radiation to the outside” (reasonably implying that the curtain engages the conveyor in such a manner so as to prevent radiation from exiting between the conveyor and strip curtain). Because the system of Duong in view of Weitzel uses two forms or radiation and a gas provision, the use of a similar strip curtain in conjunction with the conveyor of Duong in view of Weitzel would seemingly substantially prevent the escape of radiation and process gases. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to include the strip curtain mechanisms of Tanaka in view radiation providing conveyor system of Duong in view of Weitzel in order to prevent radiation leakage and process gas leakage from the system of Duong in view of Weitzel.
Regarding claim 30, Duong teaches the use of second wavelengths in the range claimed (see Example 1) and the system of Duong comprises a “pre-gelling” unit (see Example 1) and is itself a final curing unit collectively (see abstract).
Regarding claim 31, the products of Duong comprise a core substrate, which may be considered to have a “decorative surface” that is further provided with a coating thereon (see Example 1).
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duong (US4411931) in view of Weitzel et al. (US6027672) and Tanaka et al. (US4877964) as applied to claims 27 and 30-31 above and further in view of Beck et al. (USPGPub 2011/0016739).
Regarding claim 29, the teachings of Duong in view of Weitzel and Tanaka are as shown above. Duong in view of Weitzel and Tanaka fails to teach explicitly what type of conveyor belt is employed. However, Beck teaches that in general, conveyor belts known in the art for treatment of substrates as they move through a treatment system may include among others, perforated transport belts (abstract). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the conveyor belt type of Beck in the invention of Duong and Weitzel and Tanaka as a simple substitution of one conveyor belt in a treatment system to another wherein the results of the substitution would be predictable based on the disclosure of Beck.
Claim(s) 32 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jones (USPGPub 2003/0211334) in view of Furuta et al. (US5206281) as applied to claim 21-26 above and further in view of Nishio et al. (US6001455).
Regarding claim 32 the teachings of Jones in view of Furuta are as shown above. Jones further teaches that the panel formed is embossed with an embossing roller [0029-0030] but is silent as to what depth that embossing occurs. However, Nishio teaches that embossing performed on automotive interior panels (see Background of Art) is known to be performed at depths reading upon those claimed (see (III) Experimental Examples, Preparation of Sheet section). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the embossing depth of Nishio employed on automotive interior panels for the embossing depth of the interior panel material of Jones in view of Furuta as a use of a known embossing technique having a specific depth to a known embossing method ready for improvement to yield predictable results based upon the known suitability of the embossing depth of Nishio for interior automotive panels. Further it is recognized by those of ordinary skill in the art, that embossing is done to provide an aesthetic affect, wherein Nishio shows that his depth is desirable for the production of automotive interior panels such as those of Jones in view of Furuta.
Regarding claim 34, the teachings of Jones in view of Furuta and Nishio are as shown above. Jones further teaches that the thickness of the substrate may be about 10mm which would read upon the 8 mils of the current claims and the layer thicknesses of the current claims are generally near the ranges claimed [0024-0026]. Further the general dimensions of the embossing of Nishio are near those currently claimed. Further however, the Court has long held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jones (USPGPub 2003/0211334) in view of Furuta et al. (US5206281) as applied to claim 21-26 above and further in view of Bouckaert et al. (USPGPub 2020/0032017).
Regarding claim 33, the teachings of Jones in view of Furuta are as shown above. Jones in view of Furuta is silent as to the density of the core layer employed. However, Bouckaert teaches that for the purpose of forming interior automotive panels and etc [0002], it is known to form the panels from a multilayer material comprising at least a first harder layer contacted with at least a second softer layer wherein the first layer may be considered a core layer and as a density in the range claimed [0037](claim 1) wherein Bouckaert further teaches that the density of the layers provided further directly affects the flexural modulus of the product formed through the intermediate calculation of areal weight.[0018-0019] Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the density of the core material of Jones in view of Furuta as guided by Bouckaert in order to control the flexural modulus of the panels of Jones in view of Furuta as guided by Bouckaert. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Response to Arguments
The applicant argues that the panels of Jones are automotive panels and not building panels. However, two points should be made. First, it is unclear what defines a “building panel” as structurally different from an automotive panel. As described above, the Courts have long held that a product claim defines what the product is and not what it does. The only apparent difference between a “building panel” and an automotive panel would seemingly be where they are employed. This does not define the products as structurally different. Second, the panel of Jones is a panel used in the construction of a car (i.e., a building panel). As such, without a specially provided definition, the panels of Jones are “building panels” technically and legally.
Regarding the applicants’ argues that that Furuta does not teach the claimed component percentages argued by the applicant. The examiner cited claim 2 for the teaching and in response the applicant stated that “despite the extremely broad and varied language in claim 2” Furuta teaches specific range in a list of examples. However, Furuta is not limited to the examples cited by the applicant. Furuta, in the portion cited by the applicant herein (claim 2), explicitly teaches ranges reading on the current claims. The disclosure of Furuta is not provided in spite of “the extremely broad and varied language in claim 2”. It is provided in a manner including the extremely broad and varied language in claim 2. Specifically the filler component may be provided at 60% of the total composition excluding component (a), wherein (c) being a possible components reading upon the thermoplastic components being present in amounts from 0-60% of the amount of (a) and (b) combined. As such, when (d) is for example 60 parts, all others (a-c) may be 20 parts and as such the filler may be provided in a ratio of “at least 3:1” or either a, b or c, all of which can read upon the thermoplastic component.
The applicant should reasonably address the disclosed prior art as a whole for all its teachings but at a minimum directly address the particular portion cited by the examiner as disclosing the claim limitations.
As relates to rejections based on Bouckaert, the applicant seemingly argues that the prior art does not correct the supposed deficiencies previously presented. However, as argued above the examiner maintains that the previously provided rejection was not deficient.
As relates to the use of Tanaka, the applicant argues that one would not use the curtain of Tanaka to prevent gas flow out of the treatment chamber. However, it is not a requirement that the prior art modifications take place for the cited reasons provided by the applicant. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Further it noted that the applicant uses their closure to prevent gas leakage. Certainly a curtain that is capable of preventing UV radiation from escaping would at least reduce (i.e., prevent) leakage of gas by obstructing the direct flow of gas out of the chamber. Further it is not stated that the current invention seals the end in an air or gas tight manner. This would not be implied in the prior art but is not claimed herein either.
As relates to claim29, the applicant seemingly argues that the prior art provided in the rejection does not correct the supposed deficiencies previously presented. However, as argued above the examiner maintains that the previously provided rejection was not deficient.
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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717