DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 18, 2026 has been entered.
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 June 18, 2026 have been entered into the file. Currently claims 1, 7, and 15 are amended, resulting in claims 1-16 pending for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 was amended to recite the limitation “wherein the at least one area free from physical cues is substantially free from variations in print composition, tufting density, yarn construction, and yarn composition relative to adjacent patterned areas”. This limitation is not supported by the specification as filed. The instant specification does not describe the structure required to be considered “free from physical cues”, however, the instant specification does provide embodiments where portions of the textile are free from tufted yarns while other areas include tufted yarns (see e.g., paragraph [0009]).
A textile comprising tufted areas and areas free from tuft does not support the new limitation. If the areas with the tufts are defined as the at least one area containing physical cues, then tuft density is defined as the physical cue. Therefore the areas free from tufts are the at least one area free from physical cues. However, because the area free from tufts has a different tuft density than the area containing tufts, it does not meet the limitation “wherein the at least one area free from physical cues is substantially free from variations in … tufting density … relative to adjacent patterned areas”. Therefore, the aforementioned tuft embodiment cannot support the new limitation.
The instant specification provides one example where the textile substrate has pile with different pile heights (paragraph [0071]). Paragraph [0061] states that an example of a yarn construction physical cue is yarn height, which includes variation in tuft height. Therefore the Example also does not provide support for the new limitation because there is a variation in yarn construction between the two areas, therefore neither area can be defined as the area free from physical cues in the manner required by claim 1.
Claims 2-6 are also rejected under 35 U.S.C. 112(a) based on their dependency from claim 1, rejected above.
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 1-6 and 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 1 was amended to recite the limitation “wherein the at least one area free from physical cues is substantially free from variations in print composition, tufting density, yarn density, yarn construction, and yarn composition relative to adjacent patterned areas”. The limitation is indefinite because claim 1 also defines the physical cues as being selected from print composition, tufting density, yarn construction, yarn composition, and combinations thereof. Therefore, the at least one area free from physical cues is required to have the same print composition, tufting density, yarn construction, and yarn composition relative to the at least one area with physical cues (“the at least one area free form physical cues is substantially free from variation in …”). However, if the at least one area free from physical cues is required to have the same print composition, tufting density, yarn construction, and yarn composition as the at least one are containing physical cues, then as defined by the claim it is now an area that contains physical cues. It is therefore unclear how the area free from physical cues can have no variation in structure from the areas with physical cues, yet still be considered to be free from physical cues.
Since the claim requires conflicting structure, prior art cannot be applied until further clarification is provided by Applicant.
Claims 2-6 are also rejected under 35 U.S.C. 112(b) based on their dependency from claim 1, rejected above.
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 only requires the presence of at least two of the printing inks A, B, or C. Therefore it is within the scope of claim 7 to include only two 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.
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) 7-10 and 15-16 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 7 and 10, 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]).
Kawabata further discloses Figure 1(b) which shows a union fabric tufted into loops of different yarn heights (physical cue of yarn construction) (Fig. 1(b); paragraph [0020]). In another example the acrylic yarn (2) (area containing first physical cue) (physical cue of yarn composition) was dyed with yellow, red, and blue cationic dyes (physical cue of print composition) (Printing Ink A, B, and C) (each of printing Inks A, B and C contains a different composition) whereas the polyester yarn (3) (area containing second physical cue) (physical cue of yarn composition) was not dyed and remained white (physical cue of yarn construction) (at least one of Printing Ink A, B, or C on at least a portion of the area containing the first physical cue) (paragraphs [0015]-[0016]).
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 claim 8, Kawabata teaches all the limitations of claim 7 above. As described above the union fabric may have tufts of different yarn heights (the first and second physical cues are yarn construction) (Fig. 1(b); paragraph [0020]).
With respect to claim 9, Kawabata teaches all the limitations of claim 7 above. As described above the union fabric may have tufts of different yarn heights (first physical cue of yarn construction) (Fig. 1(b); paragraph [0020]) and the acrylic yarn (2) was dyed with yellow, red, and blue cationic dyes (Printing Ink A, B, and C) whereas the polyester yarn (3) (second physical cue of yarn composition) was not dyed and remained white (paragraphs [0015]-[0016]).
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, each physical cue being configured as a discrete spatial feature detectable for automated ink placement” 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).
Claim(s) 7-9 and 11-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kiff (US 2005/0100705).
With respect to claims 7-8 and 11, Kiff discloses a color shade contrast and differential that corresponds with carved or etched areas on a textile (paragraph [0017]). The method includes providing a polyester pile fabric, dying the pile surface with an unfixed dye, etching of the pile, and fixing the dye (paragraph [0017]). A washing a drying step results in a product having a color shade difference between etched areas and non-etched areas (at least one of Printing Ink A, B, or C on at least a portion of an area containing both the first and second physical cues) (paragraph [0018]). The etching provides a first region 23 with a first pile height 33 (one area containing a first physical cue of yarn construction) which is taller or higher than the second height 34 of the second region 24 (one area containing a second physical cue of yarn construction) (paragraph [0030]). Since the difference in color shade is produced by the etching, the areas with the different pile heights are dyed with the same dye (at least two of Printing Inks A, B and C contain the same composition). Since the etching occurs on an already formed pile surface, the tufting density of both the non etched (area with first physical cue) and etched (area with second physical cue) areas will be the same.
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 Kiff teaches the same materials and structure as disclosed by the Applicant, and therefore would be capable of performing in the manner claimed.
With respect to claim 9, Kiff teaches all the limitations of claim 7 above. Kiff further teaches the pile height between the first region 23 and the second region 24 is different (wherein the first and second physical cues are different) (Fig. 2; paragraph [0030]).
With respect to claims 12-14, Kiff teaches all the limitations of claim 7 above. Kiff further teaches the pile fibers are polyester (third physical cue) and are dyed (fourth physical cue) (paragraph [0017]).
With respect to claim 15, Kiff 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, each physical cue being configured as a discrete spatial feature detectable for automated ink placement” 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). Kiff 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, Kiff teaches all the limitations of claim 7 above. Since the entire pile surface is dyed prior to etching, which provides the different shades (paragraphs [0017]-[0018]), the dye will necessarily be in-register with the pile height (first and second physical cues). Kiff further teaches that after the textile is etched it may be desirable to print color on the surface to color the tall pile heights, while the etched areas display the color of the ground yarn (paragraph [0025]). This produces a final product that is in exact registration with the pile height differential regions (first and second physical cues) (paragraph [0025]).
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) 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawabata (JP H06-184958)3,4.
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.
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 7-9 and 12-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 20, 22, and 24 of copending Application No. 18/403,8365 (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 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 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 7-11, and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-7 of copending Application No. 18/403,8476 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to instant claims 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 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 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 two 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.
In light of the amendments to the claims new rejections under 35 U.S.C. 112(a) and 112(b) have been applied above.
Response – Claim Rejections 35 USC §102
The rejections of claim(s) 1-6 under 35 U.S.C. 102(a)(1) as being anticipated by Kawabata (JP H06-184958) have been withdrawn in light of the amendments to the claims filed June 18, 2026.
Applicant’s arguments in the response filed January 26, 2026 have been fully considered and are not persuasive.
On page 7 of the response Applicant submits that Kawabata does not teach first and second physical cues that are spatially distinct.
The Examiner respectfully disagrees. Kawabata further discloses Figure 1(b) which shows a union fabric tufted into loops of different yarn heights (physical cue of yarn construction) (Fig. 1(b); paragraph [0020]). In another example the acrylic yarn (2) (area containing first physical cue) (physical cue of yarn composition) was dyed with yellow, red, and blue cationic dyes (Printing Ink A, B, and C) (each of printing Inks A, B and C contains a different composition) whereas the polyester yarn (3) (area containing second physical cue) (physical cue of yarn composition) was not dyed and remained white (physical cue of yarn color) (at least one of Printing Ink A, B, or C on at least a portion of the area containing the first physical cue) (paragraphs [0015]-[0016]). Therefore Kawabata teaches first and second physical cues that are spatially distinct.
On page 7 of the response Applicant submits that the physical cueing of the patterned substrate in terms of machine-detectable spatial structure is not merely an intended use.
These arguments are not persuasive. It is not clear from either the specification or the arguments what additional structure, if any, is required to make the physical cues machine-detectable. Therefore, since the prior art meets the claimed structure of the physical cues, the prior art is interpreted as being capable of performing in the function claimed
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
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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 Machine translation used as reference
4 Previously presented
5 Hereinafter referred to as MacMeccan
6 Hereinafter referred to as McCay
Prosecution Insights