DETAILED ACTION
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments and claim amendments submitted on January 26, 2026 have been entered into the file. Currently claims 1 and 7 are amended, resulting in claims 1-16 pending for examination.
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 10-11 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 10 depends from claim 7 and recites the limitation “wherein each of Printing inks A, B and C contains different composition”. However, claim 7 recites that the pattern has only one of features (a), (b), and (c), and in the listed features at least one of the Printing Inks A, B, C are required. Therefore it is within the scope of claim 7 to include only one of the claims Inks A, B, and C. As such claim 10 is indefinite because it is unclear whether it is further limiting claim 7 to include all of the Inks A, B, and C.
Claim 11 depends from claim 7 and recites the limitation “wherein at least two of Printing Inks A, B and C contain the same composition”. Claim 11 is indefinite for the same reasons presented with respect to claim 10 above.
Due to claims 10 and 11 requiring comparisons to compositions of inks that are not present in the claimed textile substrate prior art cannot be applied.
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 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.
Claim(s) 1-9 and 12-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawabata (JP H06-184958)1,2.
With respect to claims 1 and 5-6, Kawabata discloses an interwoven pile fabric made by mixing two or more pile yarns (2) (3) having different dyeability in a tufted base fabric (1) and printing the fabric by spraying a dye that selectively dyes one of the pile yarns (2) (3) in accordance with a desired pattern (paragraph [0006]). In an example only the acrylic yarn (2) (area containing physical cue of print composition) was dyed and the polyester yarn (3) (area free from the physical cue) was not dyed ((a) printing ink on at least a portion of the area containing the physical cue) (paragraph [0021]).
The limitations "designed for use on a horizontal surface” in claim 1, “wherein the horizontal surface is a flooring surface” in claim 5, and “wherein the textile substrate is a floorcovering article” in claim 6 are use limitations and do not determine the patentability of the product, unless the use produces a structural feature of the product. The use of the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed use because Kawabata teaches the claimed structure as well as that pile fabrics are suitable for applications that place them on the floor such as bath mats and kitchen mats (paragraph [0003]). Since Kawabata teaches the same materials and structure as disclosed by the Applicant, then it would be capable of performing in the manner claimed.
With respect to claims 2-3, Kawabata discloses all the limitations of claim 1 above. Kawabata further discloses Figure 1(b) which shows a union fabric tufted into loops of different heights (Fig. 1(b); paragraph [0020]). The polyester yarn (3) is taller (high loft) than the acrylic yarn (2) (low loft) (Fig. 1(b); paragraph [0020]).
With respect to claim 4, Kawabata discloses all the limitations of claim 2 above. Kawabata further discloses the interwoven pile fabric may be any fabric in which two or more types of pile yarns are mixed and planted in a tufted and embroidery base fabric (paragraph [0008]). The form of the planted pile yarns may be looped, cut, or a mixture of these (paragraph [0008]).
With respect to claims 7-8, Kawabata discloses an interwoven pile fabric made by mixing two or more pile yarns (2) (3) (first physical cue) (second physical cue) (first and second physical cues are the same) having different dyeability in a tufted base fabric (1) and printing the fabric by spraying a dye that selectively dyes one of the pile yarns (2) (3) in accordance with a desired pattern (paragraph [0006]). The first and second physical cues are identified as yarn construction, being in the form of a pile.
Kawabata further discloses that both pile yarns (2) (3) may be dyed by printing in multiple stages or at least one type of pile-yarn may be not be printed so that the color of the original yarn or original-dyed yarn may be used ((a) printing ink A, B, or C on at least a portion of the area containing the first physical cue, (b) printing ink A, B, or C on at least a portion of the area having the second physical cue, (c) printing ink A, B, or C on at least a portion of the area containing both the first and the second physical cues) (paragraph [0011]).
The limitation "designed for use on a horizontal surface” is a use limitation and does not determine the patentability of the product, unless the use produces a structural feature of the product. The use of the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed use because Kawabata teaches the claimed structure as well as that pile fabrics are suitable for applications that place them on the floor such as bath mats and kitchen mats (paragraph [0003]). Since Kawabata teaches the same materials and structure as disclosed by the Applicant, then it would be capable of performing in the manner claimed.
With respect to claims 7 and 9, Kawabata discloses an interwoven pile fabric made by mixing two or more pile yarns (2) (3) (first physical cue) having different dyeability in a tufted base fabric (1) and printing the fabric by spraying a dye that selectively dyes (second physical cue) one of the pile yarns (2) (3) in accordance with a desired pattern (paragraph [0006]). The first physical cue is identified as the yarn construction in the form of a pile and the second physical cue is identified as the print composition.
Kawabata further discloses that both pile yarns (2) (3) may be dyed by printing in multiple stages or at least one type of pile-yarn may be not be printed so that the color of the original yarn or original-dyed yarn may be used ((a) printing ink A, B, or C on at least a portion of the area containing the first physical cue) (paragraph [0011]).
The limitation "designed for use on a horizontal surface” is a use limitation and does not determine the patentability of the product, unless the use produces a structural feature of the product. The use of the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed use because Kawabata teaches the claimed structure as well as that pile fabrics are suitable for applications that place them on the floor such as bath mats and kitchen mats (paragraph [0003]). Since Kawabata teaches the same materials and structure as disclosed by the Applicant, then it would be capable of performing in the manner claimed.
With respect to claims 12-14, Kawabata discloses all the limitations of claim 7 above. Kawabata further teaches the interwoven pile fabric may comprise two or more types of pile yarns which are mixed and planted in a tufted and embroidery base fabric (paragraph [0008]). The form of the planted pile yarn is not important, such as the height, basis weight, the proportion and arrangement of different types of pile yarns, and whether the planted pile yarns are looped, cut, or a mixture of these (paragraph [0008]). These aspects, combined with the dyeing and patterns, create a complex texture (paragraph [0008]).
To one of ordinary skill in the art before the effective filing date of the claimed invention it would have been obvious to try multiple combinations of different types of piles disclosed by Kawabata, including three and four different combinations of different types of piles, in order to determine which provides the desired pattern and texture. See MPEP 2143.
With respect to claim 15, Kawabata discloses all the limitations of claim 7 above. The limitation “wherein each physical cue is detectable by hardware that transmits print instructions via software to a digital printing machine for application of at least one of Printing Ink A, B and C to the textile substrate” defines the textile substrate by what it does, rather than what it is. This is a functional limitation, and therefore was not evaluated on its own, but in conjunction with the remainder of claim 15. See MPEP 2173.05(g). Kawabata teaches the claimed structure as stated in the above rejection, and therefore would be capable of performing in the manner claimed.
With respect to claim 16, Kawabata discloses all the limitations of claim 7 above. The pile yarns (2), (3) have different dyeability where a dye selectively dyes only one of the pile yarns (2), (3) in accordance with a desired pattern (paragraph [0006]). The pile yarns (2) (3) are defined as the first physical cue, therefore the dye pattern will be in-register with at least one area containing the physical cue when applied to the pile yarns (2) (3).
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 1-9 and 12-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 20, 22, and 24 of copending Application No. 18/403,8363 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to the instant claims 1-2 and 7-9, claims 1 of MacMeccan claims a textile substrate comprised of tufted yarns, said tufted yarns forming at least two areas A1 and A2 within the textile substrate, said areas A1 and A2 each containing a tufted design, said area A1 containing a first tufted design TD1 and said area A2 containing a second tufted design TD2, said TD1 being different from TD2, said at least two areas A1 and A2 being further characterized by having one of the following: (a) a print composition on at least a portion of area A1, (b) a print composition on at least a portion of area A2, or (c) a print composition on at least a portion of both area A1 and area A2, said textile substrate designed to be affixed to a building surface (MacMeccan; claim 1).
With respect to the instant claim 3, claim 5 of MacMeccan further claims wherein variations in height include yarns having a first tuft height and a second tuft height, said first tuft height being greater than said second tuft heigh (MacMeccan; claim 5).
With respect to the instant claim 4, claim 4 of MacMeccan further claims wherein variations in yarn constriction include yarns having both loop pile and cut pile (MacMeccan; claim 4).
With respect to the instant claims 5-6, the limitations “wherein the horizontal surface is a flooring surface” in instant claim 5 and “wherein the textile substrate is a floorcovering article” in instant claim 6 are use limitations and do not determine the patentability of the product, unless the use produces a structural feature of the product. The use of the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed use because MacMeccan teaches the claimed structure. Since MacMeccan teaches the same materials and structure as disclosed by the Applicant, then it would be capable of performing in the manner claimed.
With respect to the instant claim 12, claim 20 of MacMeccan further claims wherein the textile substrate further comprises a third tufted design TD3 that differs from TD1 and TD2 (MacMeccan; claim 20).
With respect to the instant claims 13-14, claim 22 of MacMeccan further claims wherein the textile substrate further comprises at least one additional tufted design TD4 that differs from TD1, TD2, and TD3 (MacMeccan; claim 22).
With respect to the instant claim 15, the limitation “wherein each physical cue is detectable by hardware that transmits print instructions via software to a digital printing machine for application of at least one of Printing Ink A, B and C to the textile substrate” defines the textile substrate by what it does, rather than what it is. This is a functional limitation, and therefore was not evaluated on its own, but in conjunction with the remainder of claim 15. See MPEP 2173.05(g). McMeccan teaches the claimed structure as stated in the above rejection, and therefore would be capable of performing in the manner claimed.
With respect to the instant claim 16, claim 24 of MacMeccan further claims wherein the print composition is present in-register with the tufted yarns in A1, A2, or both A1 and A2 of the textile substrate (MacMeccan; claim 24).
Claims 1-3, 5-11, and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-7 of copending Application No. 18/403,8474 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to instant claims 1-3 and 7-9, claim 1 of McCay claims a textile substrate comprising a patter, sad pattern characterized by having at least one topographical area containing tufted yarns of a first height and of a second height, said pattern further characterized by having only one of the following: (a) printing ink A, B, or C on at least a portion of the tufted yarns having a first height (area A1), (b) printing ink A, B, or C on at least a portion of the tufted yarns having a second height, or (c) printing ink A, B, or C on at least a portion of the tufted yarns having a first height and a second height, said substrate designed for use on a horizontal surface (McCay; claim 1).
With respect to instant claims 5-6, claim 2 of McCay further claims wherein the textile substrate is a floorcovering article (McCay; claim 2).
With respect to instant claim 10, claim 4 of McCay further claims wherein each of printing inks A, B, and C contains a different composition (McCay; claim 4).
With respect to instant claim 11, claim 5 of McCay further claims wherein at least two of printing inks A, B, and C contain the same composition (McCay; claim 5).
With respect to instant claim 15, claim 6 of McCay further claims wherein the at least one topographical area containing tufted yarns of a first height and of a second height is detectable by hardware that transmits print instructions via software to a digital printing machine for application of at least one of Printing Ink A, B, and C to the textile substrate (McCay; claim 6).
With respect to instant claim 16, claim 7 of McCay further claims wherein the textile substrate contains printing ink in-register with the at least one topographical area containing tufted yarns of a first height and a second height (McCay; claim 7).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Response – Claim Rejections 35 USC §112
The rejections of claims 7-16 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 pre-AIA the applicant regards as the invention, are overcome by Applicants amendments to the claims in the response filed January 26, 2026.
The rejections of claims 10-11 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 pre-AIA the applicant regards as the invention, are maintained.
The rejections are maintained because it is still within the scope of claim 7 to include only one of the claimed Inks A, B, and C, and it is unclear whether claims 10 and 11 further limit claim 7 to include all of the Inks A, B, and C (or two of the inks as in claim 11).
Response – Claim Rejections 35 USC §102
Applicant’s arguments in the response filed January 26, 2026 have been fully considered and are not persuasive.
On pages 4-5 of the response Applicant submits that Kawabata teaches applying ink to the entire surface of the dye fabric where some of the areas take up the dye and some do not, contrary to the claimed invention which selectively applies printing ink to only some areas based on the physical cues contained therein.
These arguments are not persuasive. First, it is respectively submitted that application of a printing ink across the fabric is encompassed by claims 1 and 7, as they both include an option (c) where printing occurs on both physical cue areas (or physical cue and non-physical cue areas as in claim 1).
Second, it is respectfully submitted that the selective printing argued by Applicant is not present in the claims, and is a method limitation which would not determine the patentability of the product unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113. There does not appear to be a difference between the prior art structure and the structure resulting from the argued method because Kawabata teaches only specific pile areas with a certain physical cue (e.g., material or pile height) are dyed during a dyeing process with a specific dye.
Response – Double Patenting
The examiner acknowledges Applicant’s request that the provisional non-statutory double patenting rejections be held in abeyance until the allowance of one or more of the pending applications.
Conclusion
Applicant's amendment necessitated any 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.
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Machine translation used as reference
2 Previously presented
3 Hereinafter referred to as MacMeccan
4 Hereinafter referred to as McCay