DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment to the claims filed March 9, 2026 has been entered. Claims 1 and 10 are currently amended. Claims 22-25 are new. Claims 1-13 and 15-25 are pending and under examination.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/759,041, fails to provide adequate support in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Regarding claims 1 and 10, the claims recite “the proportion of calcium carbonate (CaCO3) powder is less than 80% by weight and greater than the proportion of polyvinylchloride (PVC) powder” and “the proportion of polyvinylchloride (PVC) powder is at least 20% and below 40% by weight”. The omission of a lower limit for the proportion of calcium carbonate in this context fails to meet the requirements of 35 USC 112(a) (e.g., see paragraphs [0001]-[0005] of the published application in this continuation application and original claim 1 in 16/759,041). The claims now include a broad genus, but the original disclosure only sufficiently describes a species with no evidence the genus is contemplated.
The recitation of these particular elements includes within its scope compositions that are not sufficiently disclosed in the prior-filed application to provide adequate support to comply with the requirements of 35 USC 112(a) (see MPEP 2163.05 IA; 2163 II 3b; 2163.03 V).
For example, a composition that includes 40 wt. % CaCO3, 35 wt. % PVC, and 25 wt. % additives is within the scope of the claims. Another example within the scope of the claims is a composition that includes 48 wt. % CaCO3, 39% wt. % PVC, and 13 wt. % additives. These examples demonstrate compositions that were not sufficiently disclosed in the prior-application to demonstrate possession of the claimed invention and yet are still within the scope of the claimed invention. It is noted that the parent application specifically disclosed and claimed the invention to include certain amounts of the components at the time of original filing. There is nothing to suggest in the original filing that other compositions outside of those ranges were disclosed or possessed by applicant as required under section 112(a).
Paragraph [0025] of the published application recites “The proportion of CaCO3 is greater than the proportion of PVC”. As set forth in the prosecution history of the application, this statement has a specific context The instant REMARKS seems to suggest the claimed proportions are to be considered only between the amount of calcium carbonate and PVC, such that the total amount of the material, when adding the PVC and the calcium carbonate together will equal 100%. However, this is not clear or explicit in the arguments or specification. Instead, the opposite appears to be the case from the claims and the specification. For example, paragraph [0025] of the published application, when speaking of the proportions of the materials, states “the necessary proportion of additives must naturally be taken into account here.” Further, the structure of the claims includes the specified proportions as sub-point c1), after a), b), and c) have been utilized to list all the materials, including the additives. Further still, claim 2 utilizes “the proportion” language also with the additive. For all of these reasons, the amount of additives is understood to be part of “the proportion” of the composition in view in the claims and the claims are not understood to be directed to amounts only of the CaCO3 and PVC fraction. As such, it is not understood by the examiner that the amounts of calcium carbonate in view are always determined by the formula: amount of calcium carbonate = 100% - (the amount of PVC) as may be applicant’s position. Further, if that is necessarily/inherently/implicitly the case, as may be applicant’s position, the lower limit now required by the claim would be 60% not “more than 50%” as suggested in the REMARKS. Those amounts do not have the same scope. The claim is not understood by the examiner to require a composition including “more than 50% of calcium carbonate”. Depending on the interpretation, the claims either require at least 60% of calcium carbonate or they remain open to a reasonable interpretation that include values of less than 50%. In either event, whatever scope is intended or actually present, the scope is not understood to be equivalent to “more than 50%”. Said somewhat differently, it is not clear whether applicant intends for the level of calcium carbonate to be limited to 60% or whether applicant’s position is that any amount greater than 50% is still within the scope of the claim. However, based on the disclosure and for the reasons set forth above, it is the examiner’s position that the claims remain open to a reasonable interpretation and amounts of calcium carbonate less than 50% remain with the scope of the claims, but if this is determined to be incorrect, it would follow that the claims are limited to a lower limit of 60% calcium carbonate and not 50%.
It is also noted that the examiner has not rejected the claims under 35 USC 112b as being indefinite because it seems sufficiently clear to the examiner that the scope of the claims remain open to a reasonable interpretation and that amounts of calcium carbonate lower than 50% are clearly in view absent further specificity and that the proportion values include additives as set forth in the specification at this point. The examiner previously interpreted paragraph [0025] to mean the lower proportion limit of calcium carbonate would need to be 60% by wt. from the original disclosure. However, Applicant has made clear that this is not how the limitation is to be interpreted. If it is to be interpreted under a broad reasonable interpretation, this value is also not limited to greater than 50%. Absent further clarification and specificity from Applicant the language continues to be interpreted under a broad reasonable interpretation.
Claims 2 and 11 have an effective filing date of November 3, 2017. However, the other claims are not entitled to the filing date of the parent application.
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, 3-10, 12, 13, and 15-25 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.
Regarding claims 1 and 10, the claims recite “the proportion of calcium carbonate (CaCO3) powder is less than 80% by weight and greater than the proportion of polyvinylchloride (PVC) powder” and “the proportion of polyvinylchloride (PVC) powder is at least 20% and below 40% by weight”. The omission of a lower limit for the proportion of calcium carbonate in this context fails to meet the requirements of 35 USC 112(a) (e.g., see paragraphs [0001]-[0005] of the published application in this continuation application and original claim 1 in 16/759,041). The claims now include a broad genus, but the original disclosure only sufficiently describes a species with no evidence the genus is contemplated. Further, the specific combination of “less than 80% by weight” and “greater than the proportion of polyvinylchloride” was also not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention.
The recitation of these particular elements includes within its scope compositions that are not sufficiently disclosed in the prior-filed application to provide adequate support to comply with the written description/new matter requirements of 35 USC 112(a) (see MPEP 2163.05 IA; 2163 II 3b; 2163.03 V).
For example, a composition that includes 40 wt. % CaCO3, 35 wt. % PVC, and 25 wt. % additives is within the scope of the claims. Another example within the scope of the claims is a composition that includes 48 wt. % CaCO3, 39% wt. % PVC, and 13 wt. % additives. These examples demonstrate compositions that were not sufficiently disclosed in the prior-application to demonstrate possession of the claimed invention and yet are still within the scope of the claimed invention. It is noted that the parent application specifically disclosed and claimed the invention to include certain amounts of the components at the time of original filing. There is nothing to suggest in the original filing that other compositions outside of those ranges were disclosed or possessed by applicant as required under section 112(a).
Paragraph [0025] of the published application recites “The proportion of CaCO3 is greater than the proportion of PVC”. As set forth in the prosecution history of the application, this has a specific context. Additionally, the instant REMARKS seems to suggest the claimed proportions are to be considered only between the amount of calcium carbonate and PVC, such that the total amount of the material, when adding the PVC and the calcium carbonate together will equal 100%. However, this is not clear or explicit in the arguments or specification. Instead, the opposite appears to be the case from the claims and the specification. For example, paragraph [0025] of the published application, when speaking of the proportions of the materials, states “the necessary proportion of additives must naturally be taken into account here.” Further, the structure of the claims includes the specified proportions as sub-point c1), after a), b), and c) have been utilized to list all the materials, including the additives. Further still, claim 2 utilizes “the proportion” language also with the additive. For all of these reasons, the amount of additives is understood to be part of “the proportion” of the composition and the claim is not understood to be directed to amounts only of the CaCO3 and PVC fraction. As such, it is not understood by the examiner that the amounts of calcium carbonate in view are always determined by the formula: amount of calcium carbonate = 100% - (the amount of PVC) as may be applicant’s position. Further, if that is necessarily/inherently/implicitly the case, as may be applicant’s position, the lower limit now required by the claim would be 60% not “more than 50%” as suggested in the REMARKS. Those amounts do not have the same scope. The claim is not understood by the examiner to require a composition including “more than 50% of calcium carbonate”. Depending on the interpretation, the claims either require at least 60% of calcium carbonate or they remain open to a reasonable interpretation that include values of less than 50%. In either event, whatever scope is intended or actually present, the scope is not understood to be equivalent to “more than 50%”. Said somewhat differently, it is not clear whether applicant intends for the lower level of calcium carbonate to be limited to 60% or whether applicant’s position is that any amount greater than 50% is still within the scope of the claim. However, based on the disclosure and for the reasons set forth above, it is the examiner’s position that the claims remain open to a reasonable interpretation and amounts of calcium carbonate less than 50% remain with the scope of the claims, but if this is determined to be incorrect, it would follow that the claims are limited to a lower limit of 60% calcium carbonate and not 50% in view of the REMARKS.
It is also noted that the examiner has not rejected the claims under 35 USC 112b as being indefinite because it seems sufficiently clear to the examiner that the scope of the claims remain open to a reasonable interpretation and that amounts of calcium carbonate lower than 50% are clearly in view absent further specificity and that the proportion values include additives as set forth in the specification. The examiner previously interpreted paragraph [0025] to mean the lower proportion limit of calcium carbonate would need to be 60% by wt. from the original disclosure. However, Applicant has made clear that this is not how the limitation is to be interpreted. If it is to be interpreted under a broad reasonable interpretation, this value is also not limited to greater than 50%. Absent further clarification and specificity from Applicant, the language continues to be interpreted under a broad reasonable interpretation
Claims 2 and 11 have an effective filing date of November 3, 2017. However, the other claims are not entitled to the filing date of the parent application.
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 21 is 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.
As to claim 21, the claim recites “said sheet comprises calcium carbonate as a main material being bound by said PVC”. The limiting effect of the recitation is unclear. It is not clear what is necessarily intended or required for the calcium carbonate to be “a main material”. It is not clear whether “main material” requires a majority of the composition, a supermajority of the composition, the largest single component in the composition, an important component that produces a particular result, used at a larger amount than other known methods, or whether something else is intended. Further, if claim 1 either requires the proportion of the calcium carbonate in the composition to be “more than 50%” or “at least 60%” of the composition, as appears to be possibly suggested by Applicant’s REMARKS, it is further not clear how this limitation is to be interpreted. If the composition is “more than 50%” or “at least 60%”, but yet is still not a “main material”, it is not clear at what levels or amounts it would become a main material. Appropriate correction and clarification are required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-10, 12, 13, and 15-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grafenauer (US 2020/0331166).
Note: Claims 1, 3-10, 12, 13 and 15-25 are not entitled to the filing date of the parent application and have an effective filing date of no earlier than October 11, 2023. Claims 2 and 11 are not rejected of Grafenauer as they are entitled to the priority date of the parent application.
Note: the application does not include a claim 14.
Regarding claim 1, Grafenauer teaches a process for the production of an extruded sheet (Abstract) comprising at least the following steps: a) provision of calcium carbonate (CaCO3) powder (paragraph [0002]) with a grain size as claimed (paragraph [0031]), b) provision of polyvinylchloride (PVC) powder (paragraph [0003]) with a grain size as claimed (paragraph [0030]), c) provision of additives in the form of stabilizers, comprising at least Ca/Zn stabilizers, impact modifiers and internal and external waxes (paragraph [0004]), where c1) the proportion of calcium carbonate (CaCO3) powder is 60% by weight up to 80% by weight (paragraph [0005]), the proportion of polyvinylchloride (PVC) powder is between 20% and 40% by weight (paragraph [0005]), d) mixing of at least a portion of the calcium carbonate (CaCO3) powder with the polyvinylchloride (PVC) powder, and the additives (paragraph [0006]), and then e) heating of the mixture until the polyvinylchloride (PVC) softens to a kneadable composition and the calcium carbonate (CaCO3) binds at least to some extent to the polyvinylchloride (PVC) (paragraph [0007]), and then f) cooling of the composition (paragraph [0008]), g) conveying of the obtained composition to an extruder by means of screws, wherein said extruder comprises an outlet and a slot die at said outlet (paragraphs [0009] and [0054])’ h) melting and extrusion of the composition by said extruder and molding by said slot die to give a sheet such that a sheet emerges from the slot die (paragraph [0010]), and then i) compressing the sheet following the step of melting and extrusion while the sheet generally maintains the temperature when emerging from the slot die by means of at least two calendar rolls to a desired final thickness (paragraphs [0011] and [0054]) wherein a width and thickness of the slot die are provide in accordance with a desired dimension and the sheet has a thickness of 2 to 10 mm (paragraph [0032]).
As to claim 3, Grafenauer teaches the PVC and additives are free from plasticizers (claim 3).
As to claim 4, Grafenauer teaches the sheet is passed over at least three calendar rolls (claim 4).
As to claim 5, Grafenauer teaches a decorative and/or protective film is pressed with the sheet as claimed (claim 5).
As to claim 6, Grafenauer teaches impressing a structure into the upper side of the sheet as claimed (claim 6).
As to claim 7, Grafenauer teaches division of the extruded sheet into a plurality of smaller sheets as claimed (claims 13 and 16).
As to claim 8, Grafenauer teaches only a first portion is mixed as then the remaining portion is mixed during the cooling step as claimed (claim 2).
As to claim 9, Grafenauer teaches the temperature as claimed (paragraph [0054]).
Regarding claim 10, Grafenauer teaches a process for the production of panels, wherein an extruded sheet is provided (Abstract; paragraph [0025]; claim 16) comprising at least the following steps: a) provision of calcium carbonate (CaCO3) powder (paragraph [0002]) having a particle size as claimed (paragraph [0031]), b) provision of polyvinylchloride (PVC) powder (paragraph [0003]) having a particle size as claimed (paragraph [0030]), c) provision of additives in the form of stabilizers, comprising at least Ca/Zn stabilizers, impact modifiers and internal and external waxes (paragraph [0004]), where c1) the proportion of calcium carbonate (CaCO3) powder is 60% by weight or above (paragraph [0005]), the proportion of polyvinylchloride (PVC) powder is below 40% by weight (paragraph [0005]), d) mixing of at least a portion of the calcium carbonate (CaCO3) powder with the polyvinylchloride (PVC) powder, and the additives (paragraph [0006]), and then e) heating of the mixture until the polyvinylchloride (PVC) softens to a kneadable composition and the calcium carbonate (CaCO3) binds at least to some extent to the polyvinylchloride (PVC) (paragraph [0007]), and then f) cooling of the composition (paragraph [0008]), g) conveying of the obtained composition to an extruder by means of screws, wherein said extruder comprises an outlet and a slot die at said outlet (paragraphs [0009] and [0054])’ h) melting and extrusion of the composition by said extruder and molding by said slot die to give a sheet (paragraph [0010]), and then i) compressing the sheet following the step of melting and extrusion while the sheet generally maintains the temperature when emerging from the slot die by means of at least two calendar rolls to a desired final thickness (paragraphs [0011] and [0054]), wherein a decorative polyvinylchloride (PVC) film and a protective polyvinylchloride (PVC) film is laminated to the upper side of said sheet (claim 5); wherein said sheet is divided into a plurality of smaller sheets, being said panels, wherein said panels are edge-profiled to provide click-lock profiles which permit connection of a plurality of sheets to one another without use of glue (paragraph [0025]) wherein a width and thickness of the slot die are provide in accordance with a desired dimension and the sheet has a thickness of 2 to 10 mm (paragraph [0032]).
As to claim 12, Grafenauer teaches the PVC and additives are free from plasticizers (claim 3).
As to claim 13, Grafenauer teaches the sheet is passed over at least three calendar rolls (claim 4).
As to claim 15, Grafenauer teaches a decorative and/or protective film is pressed with the sheet as claimed (claim 5).
As to claim 16, Grafenauer teaches impressing a structure into the upper side of the sheet as claimed (claim 6).
As to claim 17, Grafenauer teaches only a first portion is mixed as then the remaining portion is mixed during the cooling step as claimed (claim 2).
As to claim 18, Grafenauer teaches the temperature as claimed (paragraph [0054]).
As to claims 19 and 20, Grafenauer teaches screws that form a restricted-flow zone (col. 5, lines 57-60).
As to claim 21, Grafenauer teaches the sheet comprises calcium carbonate as a main material being bound by the PVC (col. 2, lines 55-57).
As to claims 22-25, Grafenauer teaches no plasticizers and plasticizers as claimed (paragraphs [0028], [0055], [0056] and [0058]; claim 3).
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.
Claims 1-13, 15-18 and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (US 11,021,874) in view of Muller et al. (US 2017/0190848), and any one of Rotilio (US 4,202,438), Rastoin (US 3,707,224), or Gray (US 2,933,175), and any one of Lombaert et al. (US 2018/0320388), Kalkanoglu et al. (US 2010/0129622), Chen et al. (US 2008/0311355), or Nishibori (US 5,869,138).
Regarding claim 1, Cheng et al. teach a process for the production of an extruded sheet (Abstract; Figures 1, 2A, and 4A) comprising at least the following steps: a) provision of calcium carbonate (CaCO3) powder (col. 3, lines 24-34; col. 10, lines 1-5), b) provision of polyvinylchloride (PVC) powder (col. 2, lines 7-41; col. 3, lines 24-34; col. 10, lines 1-5), c) provision of additives in the form of stabilizers, comprising at least Ca/Zn stabilizers, impact modifiers and lubricants (col. 3, lines 24-34; col. 10, lines 1-5), where c1) the proportion of calcium carbonate (CaCO3) powder is 60% by weight or above (col. 3, lines 24-34 yields an upper limit of 75% by weight; col. 10, lines 1-5 yields 63% by weight), the proportion of polyvinylchloride (PVC) powder is below 40% by weight (col. 3, lines 24-34; col. 10, lines 1-5), d) mixing of at least a portion of the calcium carbonate (CaCO3) powder with the polyvinylchloride (PVC) powder, and the additives (col. 3, lines 57-col. 4, line 7; col. 7, line 45-64), and then e) heating of the mixture until the polyvinylchloride (PVC) softens to a kneadable composition and the calcium carbonate (CaCO3) binds at least to some extent to the polyvinylchloride (PVC) (col. 3, lines 57-col. 4, line 7; col. 7, line 45-64), and then f) cooling of the composition (col. 3, lines 57-col. 4, line 7; col. 7, line 45-64), g) conveying of the obtained composition to an extruder, wherein said extruder comprises an outlet and a slot die at said outlet (col. 3, line 57-col. 7, line 7; col. 7, lines 45-64; Figures 4A, (408) to (410)); h) melting and extrusion of the composition by said extruder and molding by said slot die wherein a sheet emerges from the die (col. 3, line 57-col. 4, line 7; col. 5, lines 1-32; col. 7, lines 45-64), and then i) compressing the sheet following the step of melting and extrusion while the sheet generally maintains the temperature when emerging from the slot die by means of at least two calendar rolls to a desired final thickness (col. 3, lines 57-col. 4, line 7; col. 5, lines 1-32; col. 7, lines 45-64; Figure 4A (412)).
Cheng et al. teach the addition of lubricants as set forth above, but do not teach the lubricants are internal and external waxes or the calcium carbonate and the PVC have grain sizes as claimed. However, Muller teaches an analogous method wherein an analogous additive includes internal and external waxes as a lubricant (paragraphs [0089] and [0161]) and the mineral filler/calcium carbonate and the PVC have particle sizes/grain sizes which include or overlap the ranges as claimed (paragraphs [0054], [0062], [0076], [0095], [0135], [0137], [0154], [0157]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Cheng et al. and Muller and to have utilized internal and external waxes as the lubricant of Cheng et al., as suggested by Muller, for the purpose, as suggested by the references of utilizing an art recognized suitable and effective lubricant for the production of extruded PVC sheets/panels (e.g. Cheng et al. disclose the additives come together for effectiveness and ease of use – paragraph [0161]). Further, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Cheng et al. and Muller and to have utilized powders having a particle size/grain size as claimed in the method of Cheng et al., as suggested by Muller, for the purpose, as suggested by the references of utilizing an art recognized suitable and effective materials for forming PVC and higher filler content compositions.
Cheng et al. teach conveying the mixture of materials to an extruder, but do not teach the conveying is done by means of screws as claimed.
However, each of Rotilio (Abstract; Figures 1-3; col. 1, lines 5-27; col. 2, lines 60-col. 4, line 55), Rastoin (Abstract; Figures 1, 4, 5 and 6; col. 2, lines 17-41; col. 2, liens 57-67; col. 3, lines 42-col. 4, line 40) and Gray (col. 1, line 14-col. 2, line 8; col. 2, lines 22-col. 4, lines 55; Figure 1, Figure 3 (29)) teach analogous methods wherein screw conveyors are disclosed for conveying analogous compositions (e.g., powders/particulates).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Cheng et al. and any one of the secondary references and to have conveyed the materials from the mixer to the extruder of Cheng et al. with screws/screw conveyors, as suggested by any one of the references, for the purpose, as suggested by the references of utilizing an art recognized suitable and effective means of transporting materials from one location to another (all the references) and/or to lift the material to its location, as may be needed (Rotilio), and/or to transport the material in a controlled quantity (e.g. Rastoin – col. 1, lines 21-24; col. 2, lines 59-62) and/or to facilitate effective feeding/stuffing of the extruder with the material (e.g. Gray – col. 1, line 14-col. 2, line 8).
Cheng et al. teach extruding the sheet from what is reasonably understood to be slot die in order to form “a flat, uniform sheet” (col. 4, lines 3-6; col. 8, lines 16-18) and exemplify layers that are nominally 5 mm thick (col. 9, lines 29-30), for applications, like flooring or other applications (col. 6, lines 1-2; col. 11, lines 47-52), wherein a width and thickness of the die are necessarily provided with a width and thickness in accordance with a desired dimension of the sheet, but do not teach the slot die is configured to provide a sheet having a thickness of 2 to 10 mm as claimed. However, each of Lombaert et al. (paragraphs [0082], [0083]), Kalkanoglu et al. (paragraphs [0063] and [0071]), Chen et al. (paragraphs [0038], [0040] and [0042]), and Nishibori (col. 4, lines 41-65; col. 11, lines 31-39; col. 15, lines 20-22) teach analogous methods wherein the sheet/layer is extruded through a slot die configured as claimed at a thickness within or which overlaps the claimed thickness.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Cheng et al. and any one of Lombaert et al., Kalkanoglu et al., Chen et al. or Nishibori, and to have utilized a slot die configured as claimed to provide a width as desired and thickness within the claimed range of 2 to 10 mm in the method of Cheng et al., as suggested by any one of Lombaert et al., Kalkanoglu et al., Chen et al. or Nishibori, for the purpose, as suggested by the references, of producing a sheet having a desired thickness known in the art to be effective for intended applications (e.g. flooring/coverings/panels). Overlapping ranges are prima facie obvious.
As to claim 2, Cheng et al. teach amounts that overlap the claimed range (col. 3, lines 24-34).
As to claim 3, Cheng et al. teach the materials and the sheet are free of plasticizers (col. 6, lines 3-9).
As to claim 4, Cheng et al. teach the sheet is passed over at least three calendar rolls (Figure 4A (412); col. 5, lines 1-32).
As to claim 5, Cheng et al. teach inclusion of different layers/films as claimed (Figures 4A and 7A; col. 5, lines 1-48).
As to claim 6, Cheng et al. teach impressing/embossing/adding a structure/layer into the sheet as claimed (col. 3, lines 10-24 and 35-52; col. 5, lines 1-60; col. col. 6, lines 20-34; col. 7, lines 36-45; e.g. either through embossing and/or adding an additional layer within the roll stack to fuse the layers together).
As to claim 7, Cheng et al. teach cutting/dividing of the sheet (col. 7, lines 45-64; col. 8, lines 53-67).
As to claim 8, Cheng et al. do not teach dividing the feed of material as claimed. However, In Muller, some of the calcium carbonate (paragraph [0093]) is mixed and heated with the PVC and additives in a manner that reads upon steps d) and e). Muller heats the material in a hot mixer at 120 °C (paragraphs [0093], [0094] and [0139]). Since Muller performs the same claimed and disclosed heating step, in the same claimed and disclosed manner, with the same claimed and disclosed material, it follows from a technical and rational basis that the same claimed effects would be realized by practicing the hot mixing of Muller (i.e. “(PVC) softens to a kneadable composition and the calcium carbonate…binds at least to some extent”) under a reasonable interpretation (e.g. paragraph [0019] makes clear that the material does not segregate when leaving the hot-cold mixer). This material is then cooled in a cold-mixer to a temperature of “about 50°C” (paragraphs [0094] and [0139]).
Next in Muller, the remaining amount of calcium carbonate is added to the mixture in a “direct addition technology” device such as a cold-mixer (paragraphs [0109]-[0111]). This is adding the remaining amount of the calcium carbonate “after” it has been cooled as claimed (e.g. the material has already been cooled (paragraphs [0109], [0139]) or is being maintained at a cooled temperature in the cold mixer described in paragraph [0109]). As such, Muller teaches adding calcium carbonate as required by the claim. The amount of calcium carbonate, PVC and additives in the mixture, prior to it being fed to the extruder/compounder, in this interpretation is within (Example 7) or overlaps the claimed range (paragraphs [0110] and [0111]). Further, as to claim 18, the scope of the claim does not require the cooling to take place in the same mixing device set forth in claim d) or in the same device utilized in claim e). Muller suggests a cold-mixer as the direct technology device (paragraph [0109]).
Said differently, in Muller part of the calcium carbonate, PVC and additive material are mixed in step d) and heated in step e) and cooled in step f) in a cold-mixer. The remaining calcium carbonate in Mueller is added in a cold-mixer after the composition has been cooled and the compositional proportions at this point in the process of Muller are within or overlap the claimed ranges. The composition is then melted and extruded.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Cheng et al. and Muller and to have split the feed of material as claimed in the method of Cheng et al., as suggested by Muller, for the purpose, as suggested by the references, of effectively incorporating the ingredients together into a blended and processable mixture for ultimately forming an extruded PVC sheet filled with calcium carbonate.
As to claim 9, Cheng et al. teach extruding at a temperature ranging from 150-180°C, which encompasses and renders the claimed range prima facie obvious (col. 4, lines 6-9; col. 8, lines 18-20).
Regarding claim 10, Cheng et al. teach a process for the production of panels (col. 7, lines 45-64; col. 8, lines 53-67) wherein an extruded sheet is provided in at least the following steps (Abstract; Figures 1, 2A, and 4A): a) provision of calcium carbonate (CaCO3) powder (col. 3, lines 24-34; col. 10, lines 1-5), b) provision of polyvinylchloride (PVC) powder (col. 2, lines 7-41; col. 3, lines 24-34; col. 10, lines 1-5), c) provision of additives in the form of stabilizers, comprising at least Ca/Zn stabilizers, impact modifiers and lubricants (col. 3, lines 24-34; col. 10, lines 1-5), where c1) the proportion of calcium carbonate (CaCO3) powder is 60% by weight or above (col. 3, lines 24-34 yields an upper limit of 75% by weight; col. 10, lines 1-5 yields 63% by weight), the proportion of polyvinylchloride (PVC) powder is below 40% by weight (col. 3, lines 24-34; col. 10, lines 1-5), d) mixing of at least a portion of the calcium carbonate (CaCO3) powder with the polyvinylchloride (PVC) powder, and the additives (col. 3, lines 57-col. 4, line 7; col. 7, line 45-64), and then e) heating of the mixture until the polyvinylchloride (PVC) softens to a kneadable composition and the calcium carbonate (CaCO3) binds at least to some extent to the polyvinylchloride (PVC) (col. 3, lines 57-col. 4, line 7; col. 7, line 45-64), and then f) cooling of the composition (col. 3, lines 57-col. 4, line 7; col. 7, line 45-64), g) conveying of the obtained composition to an extruder, wherein said extruder comprises an outlet and a slot die at said outlet (col. 3, line 57-col. 7, line 7; col. 7, lines 45-64); h) melting and extrusion of the composition by said extruder and molding by said slot die wherein in a sheet emerges from the die (col. 3, line 57-col. 4, line 7; col. 5, lines 1-32; col. 7, lines 45-64), and then i) compressing the sheet following the step of melting and extrusion while the sheet generally maintains the temperature when emerging from the slot die by means of at least two calendar rolls to a desired final thickness (col. 3, lines 57-col. 4, line 7; col. 5, lines 1-32; col. 7, lines 45-64; Figure 4A (412)), wherein a decorative panel PVC and a protective PVC film are laminated to the upper side of the sheet (col. 5, lines 1-32; Figures 1, 3 and 6), wherein the sheet is subsequently provided with a topcoat (Figure 2B (228); Figure 3 1B; col. 4, lines 37-40 – UV coating; col. 6, lines 10-15 – PU coating; col. 6, lines 41-59 – top coat at line 57; col. 7, lines 36-41; col. 9, lines 55-66) and wherein the sheet is divided into a plurality of smaller sheets, being said panels, wherein the panels are edge-profiled to provide click-lock profiles which permit connection of a plurality of sheets to one another without glue (col.7, lines 45-64; col. 8, lines 53-67).
Cheng et al. teach the addition of lubricants as set forth above, but do not teach the lubricants are internal and external waxes or the calcium carbonate and the PVC have grain sizes as claimed. However, Muller teaches an analogous method wherein an analogous additive includes internal and external waxes as a lubricant (paragraphs [0089] and [0161]) and the mineral filler/calcium carbonate and the PVC have particle sizes/grain sizes which include or overlap the ranges as claimed (paragraphs [0054], [0062], [0076], [0095], [0135], [0137], [0154], [0157]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Cheng et al. and Muller and to have utilized internal and external waxes as the lubricant of Cheng et al., as suggested by Muller, for the purpose, as suggested by the references of utilizing an art recognized suitable and effective lubricant for the production of extruded PVC sheets/panels (e.g. Cheng et al. disclose the additives come together for effectiveness and ease of use – paragraph [0161]). Further, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Cheng et al. and Muller and to have utilized powders having a particle size/grain size as claimed in the method of Cheng et al., as suggested by Muller, for the purpose, as suggested by the references of utilizing an art recognized suitable and effective materials for forming PVC and higher filler content compositions.
Cheng et al. teach conveying the mixture of materials to an extruder, but do not teach the conveying is done by means of screws as claimed.
However, each of Rotilio (Abstract; Figures 1-3; col. 1, lines 5-27; col. 2, lines 60-col. 4, line 55), Rastoin (Abstract; Figures 1, 4, 5 and 6; col. 2, lines 17-41; col. 2, liens 57-67; col. 3, lines 42-col. 4, line 40) and Gray (col. 1, line 14-col. 2, line 8; col. 2, lines 22-col. 4, lines 55; Figure 1, Figure 3 (29)) teach analogous methods wherein screw conveyors are disclosed for conveying analogous compositions (e.g., powders/particulates).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Cheng et al. and any one of the secondary references and to have conveyed the materials from the mixer to the extruder of Cheng et al. with screws/screw conveyors, as suggested by any one of the references, for the purpose, as suggested by the references of utilizing an art recognized suitable and effective means of transporting materials from one location to another (all the references) and/or to lift the material, as may be needed, (Rotilio) and/or to transport the material in a controlled quantity (e.g. Rastoin – col. 1, lines 21-24; col. 2, lines 59-62) and/or to facilitate effective feeding of the extruder with the material (e.g. Gray – col. 1, line 14-col. 2, line 8).
Cheng et al. teach extruding the sheet from what is reasonably understood to be slot die in order to form “a flat, uniform sheet” (col. 4, lines 3-6; col. 8, lines 16-18) and exemplify layers that are nominally 5 mm thick (col. 9, lines 29-30), for applications, like flooring or other applications (col. 6, lines 1-2; col. 11, lines 47-52), wherein a width and thickness of the die are necessarily provided with a width and thickness in accordance with a desired dimension of the sheet, but do not teach the slot die is configured to provide a sheet having a thickness of 2 to 10 mm as claimed. However, each of Lombaert et al. (paragraphs [0082], [0083]), Kalkanoglu et al. (paragraphs [0063] and [0071]), Chen et al. (paragraphs [0038], [0040] and [0042]), and Nishibori (col. 4, lines 41-65; col. 11, lines 31-39; col. 15, lines 20-22) teach analogous methods wherein the sheet/layer is extruded through a slot die configured as claimed at a thickness within or which overlaps the claimed thickness.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Cheng et al. and any one of Lombaert et al., Kalkanoglu et al., Chen et al. or Nishibori, and to have utilized a slot die configured as claimed to provide a width as desired and thickness within the claimed range of 2 to 10 mm in the method of Cheng et al., as suggested by any one of Lombaert et al., Kalkanoglu et al., Chen et al. or Nishibori, for the purpose, as suggested by the references, of producing a sheet having a desired thickness known in the art to be effective for intended applications (e.g. flooring/coverings/panels). Overlapping ranges are prima facie obvious.
As to claim 11, Cheng et al. teach amounts that overlap the claimed range (col. 3, lines 24-34).
As to claim 12, Cheng et al. teach the materials are free of plasticizers (col. 6, lines 3-9).
As to claim 13, Cheng et al. teach the sheet is passed over at least three calendar rolls (Figure 4A (412); col. 5, lines 1-32).
As to claim 15, Cheng et al. teach inclusion of the different layers/films as claimed (Figures 4A and 7A; col. 5, lines 1-48).
As to claim 16, Cheng et al. teach impressing/embossing/adding a structure/layer into the sheet as claimed (col. 3, lines 10-24 and 35-52; col. 5, lines 1-60; col. col. 6, lines 20-34; col. 7, lines 36-45; e.g. either through embossing and/or adding an additional layer within the roll stack to fuse the layers together).
As to claim 17, Cheng et al. do not teach dividing the feed of material as claimed. However, in Muller, some of the calcium carbonate (paragraph [0093]) is mixed and heated with the PVC and additives in a manner that reads upon steps d) and e). Muller heats the material in a hot mixer at 120 °C (paragraphs [0093], [0094] and [0139]). Since Muller performs the same claimed and disclosed heating step, in the same claimed and disclosed manner, with the same claimed and disclosed material, it follows from a technical and rational basis that the same claimed effects would be realized by practicing the hot mixing of Muller (i.e. “(PVC) softens to a kneadable composition and the calcium carbonate…binds at least to some extent”) under a reasonable interpretation (e.g. paragraph [0019] makes clear that the material does not segregate when leaving the hot-cold mixer). This material is then cooled in a cold-mixer to a temperature of “about 50°C” (paragraphs [0094] and [0139]).
Next in Muller, the remaining amount of calcium carbonate is added to the mixture in a “direct addition technology” device such as a cold-mixer (paragraphs [0109]-[0111]). This is adding the remaining amount of the calcium carbonate “after” it has been cooled as claimed (e.g. the material has already been cooled (paragraphs [0109], [0139]) or is being maintained at a cooled temperature in the cold mixer described in paragraph [0109]). As such, Muller teaches adding calcium carbonate as required by the claim. The amount of calcium carbonate, PVC and additives in the mixture, prior to it being fed to the extruder/compounder, in this interpretation is within (Example 7) or overlaps the claimed range (paragraphs [0110] and [0111]). Further, as to claim 18, the scope of the claim does not require the cooling to take place in the same mixing device set forth in claim d) or in the same device utilized in claim e). Muller suggests a cold-mixer as the direct technology device (paragraph [0109]).
Said differently, in Muller part of the calcium carbonate, PVC and additive material are mixed in step d) and heated in step e) and cooled in step f) in a cold-mixer. The remaining calcium carbonate in Mueller is added in a cold-mixer after the composition has been cooled and the compositional proportions at this point in the process of Muller are within or overlap the claimed ranges. The composition is then melted and extruded.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Cheng et al. and Muller and to have split the feed of material as claimed in the method of Cheng et al., as suggested by Muller, for the purpose, as suggested by the references, of effectively incorporating the ingredients together into a blended and processable mixture for ultimately forming an extruded PVC sheet filled with calcium carbonate.
As to claim 18, Cheng et al. teach extruding at a temperature ranging from 150-180°C, which encompasses and renders the claimed range prima facie obvious (col. 4, lines 6-9; col. 8, lines 18-20).
As to claim 21, Cheng et al. teach the sheet comprises calcium carbonate as a main material being bound by said PVC (col. 3, lines 23-27 – overlapping amounts of material; col. 3, line 58-col. 4, line 6 – same hot/cold mixing and other steps produces same results; col. 10, lines 1-5 - amounts within claimed and disclosed ranges; also see section 112b rejection).
As to claim 22, Cheng et al. teach the materials and the sheet are free of plasticizers (col. 6, lines 3-9).
As to claims 23 and 24, Cheng et al. teach additional layers contain plasticizers (col. 6, lines 35-42).
As to claim 25, the sheet of Cheng et al. is free of plasticizers (col. 6, lines 3-9).
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (US 11,021,874) in view of Muller et al. (US 2017/0190848), and any one of Rotilio (US 4,202,438), Rastoin (US 3,707,224), or Gray (US 2,933,175), and any one of Lombaert et al. (US 2018/0320388), Kalkanoglu et al. (US 2010/0129622), Chen et al. (US 2008/0311355), or Nishibori (US 5,869,138), as applied to claims 1-13, 15-18, and 21-25 above, and further in view of Chen et al. (US 2017/0246845). Note: this is an alternative rejection of claims 6 and 16.
As to claims 6 and 16, the combination is understood to teach the method set forth above. Alternatively, Chen et al. further teach an analogous method wherein the extruded sheet of material is further calendared to produce a desired sheet/engineered plank material having a desired degree of flatness and/or impressed/embossed surface while generally at the maintained temperature when emerging from the slot die (Abstract; paragraphs [0028], [0034], [0035], [0043], [0046], [0056], [0069], [0070], and [0074]; claim 4 – PVC powder, whiting powder, lubricants and impact modifiers; Figures 4, 5, 6A and 7).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Cheng et al. and Chen et al. and to have compressed the extruded sheet of Muller et al. while generally at the temperature when emerging from the slot die and to impress a structure on the upper side of the extruded sheet, as suggested by Chen et al., for the purpose, as suggested by Chen et al. of producing a sheet/plank in an art recognized suitable manner for forming a sheet/plank having a desired surface/thickness/appearance and that is ready and able to receive additional layers, as may be needed.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (US 11,021,874) in view of Muller et al. (US 2017/0190848), and any one of Rotilio (US 4,202,438), Rastoin (US 3,707,224), or Gray (US 2,933,175), and any one of Lombaert et al. (US 2018/0320388), Kalkanoglu et al. (US 2010/0129622), Chen et al. (US 2008/0311355), or Nishibori (US 5,869,138), as applied to claims 1-13, 15-18, and 21-25 above, and further in view of either one of Przybylinski et al. (US 2010/0159213) or McCullough et al. (US 4,663,103).
As to claims 19 and 20, the combination teaches the method set forth above. Cheng et al. teach a twin-screw extruder may be used (col. 4, lines 6-8), but do not explicitly teach restricted flow zones. However, each of Przybylinski et al. (paragraphs [0027], [0033] and [0034]) and McCullough et al. (col. 7, line 1 – co. 11, lines 27; Figures 2 and 4) teach analogous methods wherein restricted flow zones are included(e.g. kneading blocks; disks; reverse flow flights) with the screw extruder.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Cheng et al. and either one of Przybylinski et al. or McCullough et al. and to have utilized screws that form a restricted flow zone as claimed in the method of Cheng et al., as suggested by either one of Przybylinski et al. or McCullough et al., for the purpose, as suggested by the references, of facilitating improved mixing, homogeneity and uniformity in the extruder.
Response to Arguments
Applicant’s arguments filed March 9, 2026 have been fully considered. The amendment has overcome the nonstatutory double patenting rejection. As such, the rejection has been withdrawn. Applicant’s arguments regarding the question of priority and 35 USC 112(a) support, regarding written description/new matter (note: the claims are not rejected for a lack of enablement and such arguments are not necessary and considered moot), have been fully considered but they are not persuasive. As an initial matter, it is noted that the language “more than 50% of calcium carbonate” as argued is not the language set forth in the specification. The pertinent language is: “The proportion of CaCO3 is greater than the proportion of PVC” at paragraph [0025] of the published application. This may be what applicant intended to say, since later in the same paragraph the argument states “implies that CaCO3 constitutes more than 50% of the combined PVC/CaCO3 fraction”. This paragraph on page 11 of the REMARKS seems to suggest the claimed proportions are to be considered only between the amount of calcium carbonate and PVC, such that the total amount of the material, when adding the PVC and the calcium carbonate together will equal 100%. However, this is not clear or explicit in the arguments or specification. Instead, the opposite appears to be the case from the claims and the specification. For example, paragraph [0025] of the published application, when speaking of the proportions of the materials states “the necessary proportion of additives must naturally be taken into account here.” Further, the structure of the claims includes the specified proportions as sub-point c1), after a), b), and c) have been utilized to list all the materials, including the additives. Further still, claim 2 utilizes “the proportion” language also with the additive. For all of these reasons, the amount of additives are understood to be part of “the proportion” of the composition and the claim is not understood to be directed to amounts only of the CaCO3 and PVC fraction. As such, it is not clear to the examiner that the amounts of calcium carbonate in view are always determined by the formula: amount of calcium carbonate = 100% - (the amount of PVC). Further, if that is necessarily/inherently/implicitly the case, as may be applicant’s argument at this point, the lower limit now required by the claim would be 60% not “more than 50%”. Those amounts do not have the same scope. The claim is not understood by the examiner to require a composition including “more than 50% of calcium carbonate”. Depending on the interpretation, the claim either requires at least 60% of calcium carbonate or it remains open to a reasonable interpretation that includes values of less than 50%. In either event, whatever scope is intended or actually present, the scope is not understood to be equivalent to “more than 50%”. Said somewhat differently, it is not clear whether applicant intends for the level of calcium carbonate to be limited to 60% or whether applicant’s position is that any amount greater than 50% is still within the scope of the claim. However, based on the disclosure and for the reasons set forth above, it is the examiner’s position that the claim remains open to a reasonable interpretation and amounts of calcium carbonate less than 50% remain with the scope of the claim, but if this is determined to be incorrect, it would follow that the claim is limited to a lower limit of 60% calcium carbonate and not 50%.
It is also noted that the examiner has not rejected the claim under 35 USC 112b as being indefinite because it seems clear to the examiner that the scope of the claim remains open to a reasonable interpretation and that amounts of calcium carbonate lower than 50% are clearly in view and that the proportion values include additives as set forth in the specification. The examiner previously interpreted paragraph [0025] to mean the lower proportion limit of calcium carbonate would need to be 60% by wt. from the original disclosure. However, Applicant has made clear that this is not how the limitation is to be interpreted. If it is to be interpreted under a broad reasonable interpretation, this value is also not limited to greater than 50%. Absent further clarification and specificity from Applicant, the language continues to be interpreted under a broad reasonable interpretation
As such, the amendment has overcome some of the compositional scenarios set forth in the previous office action, but other compositional scenarios outside of what has proper support in the original disclosure still remain within the scope of the claim.
For example, a composition that includes 40 wt. % CaCO3, 35 wt. % PVC, and 25 wt. % additives is within the scope of claims. Another example, is a composition that includes 48 wt. % CaCO3, 39% wt. % PVC, and 13 wt. % additives. These examples demonstrate compositions that were not sufficiently disclosed in the prior-application to demonstrate possession of the claimed invention and yet are still within the scope of the claimed invention. It is noted that the parent application specifically disclosed and claimed amounts of components at the time of original filing. There is nothing to suggest in the original filing that other compositions outside of those ranges were disclosed or possessed by applicant as required under section 112(a).
Further, for the sake of clarity and completeness, it is noted that if it is applicant’s position that the amounts set forth in the specification are now inherently or implicitly required by the claims as written (e.g. at least 60 wt. % and less than 80 wt.% calcium carbonate), a straightforward remedy at this point, which would not change the intended scope, would to be make what is inherent/implicit, from applicant’s perspective, explicit, since the examiner does not agree that the argued amounts are inherent or implicit. Any disagreement can be resolved by making what is understood by applicant to be inherent, explicit. Making what is already necessarily required inherently, does not further limit the claim when it has been set forth explicitly. Accordingly, a choice to not clarify the amounts and make them explicit at this point is understood by the examiner to demonstrate the propriety of the position being set forth by the examiner in reaching the conclusion that the claims are broader than what has been argued by applicant or originally disclosed. The examiner is continuing to seek clarity and common ground. It is further noted that general statements seem to further complicate this effort. For example, reciting “additives are present only in minor amounts” in the arguments does not make clear whether the “up to 5% by weight” set forth in the specification is intended by such a statement or whether 10%, 15%, 20% or 25% are still to be considered “minor amounts”. The original disclosure, for the reasons of record, is understood by the examiner to be relatively specific when it comes to the amounts of materials disclosed. This position was argued against by applicant and the arguments made clear that the lower limit for calcium carbonate was not intended to be 60% by weight. Claims 2 and 11 are understood to have proper support in the original disclosure and have not been rejected under 35 USC 112a and are understood to be entitled to the priority date of the parent application. More broadly, variants of claims 2 and 11 that recited a lower limit of 60% by weight for the calcium carbonate, an upper limit of 40% by weight of PVC, and the proportion of the additives is up to 5% by weight, are also understood to be properly supported by the original disclosure.
As to claim 21, applicant argues that “main material” is sufficiently clear. This argument is not persuasive for the reasons previously set forth and repeated above in the body of the rejection. Further, if claim 1 either requires the proportion of the calcium carbonate in the composition to be “more than 50%” or “at least 60%” of the composition, as appears to be suggested by Applicant’s REMARKS, it becomes more unclear as how this limitation is to be interpreted. If the composition is “more than 50%” or “at least 60%”, but yet is still not a “main material”, it is not clear at what levels or amounts it would necessarily become a main material. Further, if the amount of calcium carbonate necessarily within the scope of claim 1 already requires the calcium carbonate to be a “main material”, the claim would fail to further limit the claim from which it depends. As such, the presence of this claim also appears to further support the examiner’s position that claim 1 does not require the calcium carbonate to be provided at a proportion of “more than 50%”. Otherwise, the claim would also appear to be improper under 35 USC 112d.
As to the section 103 rejection, the amendment directed to grain/particle size has necessitated a new rejection as set forth above. Further, applicant’s other arguments have been fully considered but they are not persuasive. As an initial matter, it is noted that arguments that suggest high levels of calcium carbonate are required (e.g. values of 75% or 80% by weight of the composition comprising calcium carbonate are considered high by the examiner) and that the ability to process high levels provides new or unexpected results based on the challenges and difficulties of processing mixtures of such high levels are not considered to be commensurate in scope with the claimed invention. As such, any suggestion that new or unexpected results should be considered due to the requirement of high levels of calcium carbonate are not persuasive. As set forth above, the claims at this point in time are not even understood to require more than 50% by wt. of calcium carbonate. If applicant wants the claims to require high levels as argued, the claims would need to be further amended to require high levels.
Further, applicant points to col. 5, lines 3-5 and col. 7, lines 51-52 to support the assertion that Cheng extrudes “generally cylindrical cross-section” material. This argument is not persuasive. The examiner does not see anything that suggests such a shape at the cited locations. Appropriate clarification is requested if applicant is to maintain that assertion. The material from Cheng et al. is understood to be extruded as a layer/sheet not a cylinder as argued. (e.g. Figure 4A (410) which corresponds with the step (210) in Figure 2A wherein the layer “is extruded into a flat, uniform sheet” at col. 4, lines 4-5; col. 5, lines 3-5 is understood to be emphasizing taking the extruded layer/sheet and further “flattening it into a thin sheet”; col. 5, lines 18-20 states it is three “sheets” that are “rolled together and fused”, such that is it clear that it is sheets that are rolled, not cylindrical shapes). It is agreed that this layer/sheet of Cheng et al. is further rolled to form a thinner sheet/layer. However, this is precisely what is set forth in the claims. A layer/sheet is extruded as a sheet and then rolled to a final thickness in both Cheng and the instant claims. It is not clear where Applicant is getting support for a different understanding or interpretation.
As to Rastoin and Rotilio, it is argued that these references us “helical spring elements rather than screw conveyors” suggesting that these references are not applicable. This argument is not persuasive. The helical conveying elements of each of these references are reasonably understood to read upon “screws” as claimed. No additional structure is set forth in the claims and the terms are understood to be generally interchangeable or at least render some conceivably different structure prima facie obvious absent a showing of new or unexpected results. For example, extruder “screw” flights are conventionally “helical” flights. Both terms are used. Auger “screw” conveyors are “helical”/”helical coil” conveyors. It is not clear in what way applicant is asserting that the helical conveyors of the references are not reasonably understood to be “screws” unless it’s merely based on the selection of a different word. The structure is understood to be the same as that which has been claimed.
As to Gray, the screw which feeds the material into the body of the extruder is still conveying it into the extruder. The amount or type of conveying may be different than applicant intends, but it is still “conveying” the material “by means of screws” as claimed absent further specificity. Again, the arguments directed to unexpected results regarding conveying “highly filled PVC compositions” are not understood to be commensurate in scope with the claims.
Applicant further argues there is no motivation to adopt screw conveying in the manner claimed. This argument is not persuasive. The references set forth above are understood to disclose screw conveying of analogous materials. Cheng et al. need to convey analogous materials, but don’t specify how this is to be done. The relied upon references provide a teaching and suggestion as to how to transfer analogous materials. This provides a reason to select those methods of conveying. Further, the body of the rejection above more specifically recites reasons to combine the references.
As to the other arguments regarding dependent claims that utilize additional references, the rejections of claims 1 and 10 are not understood to be deficient as argued. As such, the rejections are understood to remain proper and the additional references are only relied upon in the manner set forth above in the body of the rejection.
Further, Cheng et al. is understood to teach the new plasticizer limitations found in claims 22-25 as set forth above.
The examiner submits the claims would need to be further amended to overcome the prima facie case of obviousness and the new matter rejection. Further, the claims would need to be further amended for consideration that PVC that is highly filled with calcium carbonate is necessarily required.
An amendment that recited the proportion of calcium carbonate was between 60-80% by weight, the proportion of PVC was between 20-40% by weight, and the proportion of the claimed additives was up to 5% by weight, would be understood by the examiner to have support in the original disclosure. Such an amendment would be entered after final as it would overcome the section 102 and 112a rejections, would resolve the question of priority, and would put the case into better condition for appeal. Such an amendment would then either need to persuasively argue against the section 103 rejection or further amend the claims to overcome the prima facie case of obviousness either or effectively establish new or unexpected results associated with processing the claimed composition since the rejection based upon Cheng et al. would still otherwise be understood to apply.
The examiner notes his availability to discuss the application in a telephonic interview if that will help advance prosecution.
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 Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742