DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Claims 2, 4, 5, 8, 12-14, 16, 22, and 23 in the reply filed on 11/12/25 is acknowledged.
Claims 3, 6, 7, 9, 11, 15, and 17-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/12/25.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 2, 4, 5, 8, 12, 13, 14, 16, 22, and 23 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of Fults (U.S. 11,788,301) in view of Belt et al. (U.S. 9,657,478). Although the conflicting claims are not identical, they are not patentably distinct from each other. Both the Claims of Fults and the Claims of the instant application are directed to a decorative wall covering with multiple planks, each plank with a facade; a plank back member opposing said facade; wherein said plank back member is configured with multiple channels interspersed within multiple plateaus; wherein at least a portion of said multiple channels provide a recess into which a quantity of construction adhesive can be received for adhering said plank onto said wall or surface; and an allocation feature within at least one of said multiple channels that marks a region to indicate an area for application of adhesive. Multiple pressure-sensitive adhesive strips are applied onto one of said multiple plateaus with release lining applied to an underside of said multiple strips. The multiple channels extend longitudinally between opposing first and second plank ends; and wherein each of said multiple plateaus extend longitudinally between opposing first and second plank ends. The facade has a width less than a width of said plank back member; wherein said plank back member comprises a back member forward- facing section; and wherein, after installation of said plank, at least a portion of said back member forward-facing section is viewable and is not concealed by said facade.
The examiner has notes that the claimed allocation feature is very broad and cold refer to almost anything. The bottom of the channel can be considered an allocation feature within at least one of said multiple channels that marks a region to indicate an area for application of adhesive.
The requirement that the allocation feature comprises one or more of a mark, paint, an inscription, a label, an irregularity of said recess, and a demarcation is fairly well known as indicia for marking where fasteners are to be located are common. Belt teaches the use of indicia (NAIL HERE, 19) such as an inscription or mark to indicate the placement of a fastener/connecting medium to mount a panel to an underlying surface. This would more clearing communicate the placement of adhesive on the OH panel.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 2, 5, and 13 is/are rejected under 35 U.S.C. 102(a2) as being anticipated by OH (U.S. 2006/0101751).
In re Claim 2, 5, and 13 OH teaches a decorative wall surface with multiple planks, each plank of said multiple planks (100) with façade/surface (101); a plank back member/surface opposing said facade; wherein said plank back member is configured with multiple channels (110) interspersed within multiple plateaus (raised surfaces between the channels); wherein at least a portion of said multiple channels provide a recess into which a quantity of construction adhesive (120,200) can be received for adhering said plank onto said wall or surface. The bottom of the channel can be considered an allocation feature within at least one of said multiple channels that marks a region to indicate an area for application of adhesive. Each of said multiple channels (110) extend longitudinally between opposing first and second plank ends; and wherein each of said multiple plateaus extend longitudinally between opposing first and second plank ends. (Figure 1A-2)
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.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over OH (U.S. 2006/0101751).
OH teaches a decorative wall surface with multiple planks, each plank of said multiple planks (100) with façade/surface (101) a plank back member/surface opposing said facade; wherein said plank back member comprises multiple channels (110) interspersed within multiple plateaus (raised surfaces between the channels); wherein said multiple channels comprise grooves; wherein each of said multiple channels is disposed at a location that is satisfactory for adhering said plank onto said wall or surface. The bottom of the channel can be considered an allocation feature within at least one of said multiple channels that marks a region to indicate an area for application of adhesive.
OH does not teach the multiple separate channels (110) comprises concave channel/groove. However, it has been held that changes in shape involves only routine skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). An OH plank with a concave/rounded channel would still function the same as the channels that are disclosed and it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have concave channels. Rounded edges would also remove sharp corners, making the planks easier to handle.
In Claim(s) 8 and 16, is/are rejected under 35 U.S.C. 103 as being unpatentable over OH (U.S. 20060101751) in view of Volpenhein (U.S. 4589241)
In re Claims 8 and 16, OH has been previously discussed but does not teach a plank/tile/panel where facade has a width less than the width of said plank back member; wherein said plank back member comprises a back member forward-facing section; and wherein, after installation of said plank, at least a portion of said back member forward-facing section is viewable and is not concealed by said facade.
Volpenhein teaches a wall construction panel (10) with a simulated brick (30) facade that is narrower that the back member (14). As with the plank shown in Figure 6 of the instant application, the Volpenhein have forward facing sections of the back member (14) that are positioned around and between the simulated bricks and are therefore not concealed by the facade. (Figures 1-6)
It would be obvious to one of ordinary skill in the art at the effective filling date of the claimed invention to modify OH with the teachings of Volpenhein to produce an aesthetically appealing brick face surface.
In Claim(s) 22 and 23, is/are rejected under 35 U.S.C. 103 as being unpatentable over OH (U.S. 20060101751) in view of Belt et al. (U.S. 9,657,478)
In re Claims 22 and 23, OH has been previously discussed but does not teach an allocation feature that is one or more of a mark, paint, an inscription, a label, an irregularity of said recess, and a demarcation.
Belt teaches the use of indicia (NAIL HERE, 19) such as an inscription or mark to indicate the placement of a fastener/connecting medium to mount a panel to an underlying surface.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify OH with the teachings of Belt to more clearing communicate the placement of adhesive on the OH panel.
Allowable Subject Matter
Claims 4 and 12 would be allowable if rewritten to overcome the rejection(s) of nonstatutory double patenting rejection set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The prior art of record does not disclose or make obvious decorative wall coverings that have both adhesive filled channel and multiple pressure sensitive adhesive strip with a release lining on the plateaus. The examiner does not believe it would be obvious to use both pressure sensitive adhesive strips along with the adhesive in the channels.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM G BARLOW whose telephone number is (571)270-1158. The examiner can normally be reached Monday - Friday, 9:00 am-4:00 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571) 272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM G BARLOW/Examiner, Art Unit 3633
/BRIAN E GLESSNER/Supervisory Patent Examiner, Art Unit 3633