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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 20, 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 July 20, 2026 are entered into the file. Currently claims 1 and 4-5 are amended and claims 6-7 are cancelled, resulting in claims 1-5 pending for examination.
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) 1-3 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 1-3, 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 heights (Fig. 1(b); paragraph [0020]). The polyester yarn (3) is taller (first height) than the acrylic yarn (2) (second height) (Fig. 1(b); paragraph [0020]).
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) at least one of printing ink A, B, and C on at least a portion of the area containing the first physical cue, (b) at least one of printing ink A, B, and C on at least a portion of the area having the second physical cue, (c) at least one of printing ink A, B, and C on at least a portion of the area containing both the first and the second physical cues) (paragraph [0011]). 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]). As discussed above, the polyester yarn (3) is taller (first height) than the acrylic yarn (2) (second height) (Fig. 1(b); paragraph [0020]). Therefore the dye pattern will be in-register with the topographical area containing the pile yarns (2) (second height), (3) (first height) of different heights.
The limitation “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” is a method limitation and does 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. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Kawabata discloses the claimed structure, particularly the ink being applied in-register with at least one of the first tuft height and the second tuft height.
The limitations "designed for use on a horizontal surface” in claim 1, “wherein the textile substrate is a floorcovering article” in claim 2, and “wherein the floorcovering article is selected from broadloom carpet, floor mats, and carpet tiles” in claim 3 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.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kiff (US 2005/0100705).
With respect to claims 1-3 and 5, Kiff discloses a textile having regions of color contrast and corresponding regions of sculpted three-dimensional surface geometry (abstract). Fig. 2 shows a textile 20 with a first region 23 providing a first pile height 33 and a second region 24a providing a second pile height 34, and the first pile height 33 is greater than the second pile height 34 (Fig. 2; col. 4, lines 25-35). The entire textile is dyed ((c) at least one of Printing Ink A, B and C on at least a portion of the tufted yarns having a first height and a second height) (col. 4, line 58 – col. 5, line 17).
The process of Kiff includes dyeing the textile in a base shade (Printing Inks A, B and C contain the same composition) and etching to form areas of different pile heights (Fig. 3; col. 4, line 58 – col. 5, line 26). This results in the first region 23 providing a first color shade and first pile height 33 and a second region 24a which exhibits a second pile height 34 and a second color shade that differs from the color shade of the first region 23 (col. 3, lines 25-51). Therefore, the print composition is present in-register with the pile yarn heights.
The limitation “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” is a method limitation and does 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. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Kiff discloses the claimed structure, particularly the ink being applied in-register with at least one of the first tuft height and the second tuft height.
The limitations "designed for use on a horizontal surface” in claim 1, “wherein the textile substrate is a floorcovering article” in claim 2, and “wherein the floorcovering article is selected from broadloom carpet, floor mats, and carpet tiles” in claim 3 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 Kiff teaches the claimed structure and materials. Since Kiff teaches the same materials and structure as disclosed by the Applicant, then it would be capable of performing in the manner claimed.
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(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawabata (JP H06-184958)3,4 as applied to claim 1 above.
With respect to claim 4, Kawabata discloses all the limitations of claim 1 above. Kawabata further teaches that two or more pile yarns having different dyabilities may be used (Printing Inks A and B), and printing occurs by spraying a dye that selectively sprays at least one of the pile yarns in accordance with a desired pattern (paragraph [0006], [0011]). The use of two or more pile yarns not only provides clear color boundaries and complex color tones and patterns, but also leads to the creation of complex texture and improved quality of the pile fabric by combining the textures and properties unique to each pile yarn (paragraph [0013]).
It therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a third pile yarn with a different dyability (Printing Ink C) in order to provide a pile fabric with the desired color, color tone, pattern, and texture.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 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 claim 1, claim 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). Claim 5 of MacMeccan further claims the variations in yarn height including yarns having a first tuft height and a second tuft height, said first tuft height being greater than said second tuft height (MacMeccan; claim 5).
Claims 1-2 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7, 10-11, and 15-16 of copending Application No. 18/403,8446 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to instant claim 1, claim 1 of McCay claims a textile substrate comprising a pattern, said pattern characterized by having at least one area containing physical cues and at least one area free from physical cues, said physical cues being selected from print composition, tufting density, yarn construction, yarn composition, and combinations thereof, 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). Claims 2-3 of McCay further claims the textile substrate containing areas of tufted yarns having at least one of high tuft and low tuft (McCay; claims 2-3). Claim 15 of McCay further claims 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 (McCay; claim 15). Claim 16 of McCay further claims wherein the textile substrate contains printing ink in-register with at least one area containing a first physical cue (McCay; claim 16).
With respect to instant claim 1, claim 7 of McCay claims a textile substrate comprising a pattern, said pattern characterized by having at least one area containing a first physical cue and at least one area containing a second physical cue, said physical cues being selected from print composition, tufting density, yarn construction, yarn composition, and combinations thereof, 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, (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 7).
With respect to instant claim 2, claim 6 of McCay further claims wherein the textile substrate is a floorcovering article (McCay; claim 6).
With respect to instant claim 4, claim 10 of McCay further claims wherein each of printing inks A, B, and C contains a different composition (McCay; claim 10).
With respect to instant claim 5, claim 11 of McCay further claims wherein at least two of printing inks A, B, and C contain the same composition (McCay; claim 11).
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 4-5 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, have been withdrawn in light of the amendments to the claims filed July 20, 2026.
Response – Claim Rejections 35 USC §102
Applicant’s arguments submitted in the response filed July 20, 2026 have been fully considered and are not persuasive.
On page 4 of the response Applicant submits Kawabata teaches selectively dyeing yarns because the yarns possess different dyabilities, not dyeing by hardware that transmits print instructions via software to a digital printing machine as claimed.
These arguments are not persuasive. The limitation “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” is a method limitation and does 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. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Kawabata discloses the claimed structure, particularly the ink being applied in-register with at least one of the first tuft height and the second tuft height.
On pages 4-5 of the response Applicant submits that Kawabata does not anticipate claim 1 because Kawabata does not disclose topographical scanning hardware, height-detection hardware, software generation of print instructions from topographical information, or digital print control based upon detected height information.
The Examiner respectfully disagrees. The claim is directed to a textile substrate comprising two tuft heights, and at least one of Printing A, B, and C applied in one of the patterns (a)-(c). In claim 1 the printing ink(s) are positively recited as applied to the pile in order to form the claimed textile substrate. Since the printing ink(s) are present in the final product, the method of applying the printing ink is a product-by-process limitation. As described above, the method limitation does not determine the patentability of the product, unless the method produces a structural feature of the product. The structural feature provided by the method limitation in question is printing ink applied in-register with the at least one topographical area containing tufted yarns of a first height and a second height. As described above, Kawabata discloses the claimed structure, particularly the ink being applied in-register with at least one of the first tuft height and the second tuft height. Since Kawabata teaches the structure resulting from the product-by-process limitation it reads on the product-by-process limitation of claim 1, regardless of whether the specific process claimed is disclosed in Kawabata.
On page 5 of the response Applicant submits that chemical selectivity dyeing as disclosed in Kawabata is different from selectivity with registration, which includes alignment of printing relative to a spatially identifiable feature.
These arguments are not persuasive. The statement that the printing ink being in-register with the tuft heights requires alignment of printing relative to a spatially identifiable feature is with respect to the process of applying the printing ink. As discussed above, since a product is claimed the method limitation does not determine the patentability of the product unless the method produces a structural feature of the product. In this instance, the structure that would be provided by the argument is printing ink on the textile substrate that is present only on the tufted yarns having a first height, only on the tufted yarns having a second height, or on both the tufted yarns having a first height and a second height. As described above, Kawabata teaches this structure by proving a pile with a first height and material and a pile with a second height and material, wherein the materials have different dyabilities. Therefore the printing ink will necessarily be “in-register” with the pile height and the textile substrate will have the structure which results from the argued method.
It is noted that the instant specification does not provide a definition for “in-register” and it is unclear whether “in-register” is appropriately limited to only methods which include alignment of printing relative to spatially identifiable features as suggested in the arguments.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Larissa Rowe Emrich whose telephone number is (571)272-2506. The examiner can normally be reached Monday - Friday, 7:30am - 4:00pm EST.
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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
