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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
1. Claims 1-7 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regard to Claim 1, there is not antecedent basis for “the first paper overlay.” For purposes of examination, the overlay is presumed to comprise paper. Claims 2-7 are similarly rejected to the extent they depend from Claim 1 and do not resolve the noted ambiguity.
With regard to Claim 10, the preamble of the claim recites “the product of claim 1;” however Claim 1 is directed to a method. Accordingly, Claim 10 is ambiguous. For purposes of examination, Claim 10 is presumed directed to the product of Claim 8.
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.
(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.
1. Claims 1, 5, 8-10, and 14 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by US 2022/0402162 to Merrick et al. (“Merrick”).
With regard to Claims 1, 8, and 10, Merrick teaches a method of producing a factory-finished integrated panel comprising treating a plurality of wood strands and flakes with adhesives, chemicals, and/or additives, forming the treated wood material into one or more mat layers, applying a paper overlay thereon, and applying heat and pressure to form a board comprising an upper surface featuring the paper overlay (see Abstract; FIG. 3; ¶¶ [0021]-[0023]).
With regard to Claims 5, 9, and 14, Merrick teaches the overlay may be a paper overlay (see ¶ [0021]).
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.
2. Claims 2-4, 6-7, and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Merrick as applied to Claim 1, and further in view of US 2022/0372749 to Ni et al. (“Ni”).
With regard to Claims 2, 4, 6-7, 11, and 13, Merrick teaches trimming the board (see ¶ [0023]); however the reference does not expressly teach applying a coating to resulting edges. Ni is similarly directed to manufacture of multilayer boards, and teaches coating board edges with a sealant after pressing to prevent water ingress (see Abstract; ¶ [0014]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have coated board edges with a sealant after trimming in the method of Merrick in order to protect them against water as taught by Ni.
With regard to Claims 3 and 12, Merrick is directed to production of boards with smooth finished surfaces (see Abstract). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have matched features, including color, of an edge coating with that of the other board surfaces.
3. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Merrick.
With regard to Claim 15, Merrick teaches a paper overlay without particular limitation; however the reference does not expressly teach a resin-impregnated paper overlay. Merrick otherwise teaches an interface layer comprising resin-impregnated paper (see ¶ [0006]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have employed a resin-impregnated paper overlay in order to conserve materials and improve process efficiency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael P Rodriguez whose telephone number is (571)270-3736. The examiner can normally be reached 9:00 - 6:00 Eastern M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael P. Rodriguez/Primary Examiner, Art Unit 1715