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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12, in the reply filed on October 14, 2025, is acknowledged. Claims 1-12 and 22 have been examined for patentability as discussed below.
Claim Objections
Claim 6 is objected to because of the following informalities: line 2 recites “on the fop surface.” This should be “top surface.” Appropriate correction is required.
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.
Claim 10 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. Claim 10 requires a urethane material. However, a urethane has not been previously introduced in the claims. It is unclear which material is comprised of urethane. For purposes of examination, the claim will be interpreted such that the first or second elastomeric composition includes urethane.
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 1-7 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2011/028586 Harvey et al in view of CA 1,306,595 Ott et al.
Regarding claim 1, Harvey teaches a two-layer protective system (paragraph 0008) for a wooden structure (paragraph 0019, where the underlayment is wood), the two-layer protective system comprising:
a first layer covering at least a portion of a top surface of the wooden structure, the first layer comprising a first composition (paragraph 0021, where the underlayment includes an adhesive layer, where the adhesive layer is the first composition); and
a second layer placed on a top surface of the first layer, the second layer comprising a granular composition comprising: a second composition (adhesive of Harvey’s invention); and a granular material (decorative particles, paragraph 0023).
Harvey does not teach that the wooden structure is outdoors. However, the limitation “outdoor” is deemed to be a statement with regard to the intended use and are not further limiting in so far as the structure of the product is concerned. “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02 Section II. Therefore, in article claims, a claimed intended use should result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. In this case, the preamble requires “outdoor wooden structure,” where “outdoor” is only the intended use and therefore is not considered a limitation.
Harvey does not teach that either the first or second compositions are elastomeric. Harvey does, however, teach that the first composition may be urethane (paragraph 0021) and that the second composition may be urethane (paragraph 0021 teaching that the adhesive of the invention is applied as a grout, and paragraph 0006 teaching that the grouting material is urethane). Ott teaches a floor tile overlay where the elastic and resilient material comprise polyurethane (page 9, lines 15-19). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to replace the urethanes of Harvey with the elastic and resilient polyurethane of Ott because a yielding material is more pleasant to walk on (page 5, line 27 – page 6, line 1).
Regarding claim 2, Harvey teaches that the second layer further includes a plurality of tiles 5 placed on the top surface of the first layer (adhesive on wooden underlayment, paragraph 0023); and the elastomeric granular composition surrounds at least a portion of the plurality of tiles to form a containment field to inhibit the tiles from moving laterally (grout, paragraph 0023).
Regarding claim 3, Harvey teaches that the plurality of tiles are spaced apart from one another on the top surface of the first layer to form gaps therebetween (spacer, paragraph 0023).
Regarding claim 4, Harvey teaches that the system further comprises spacers positioned in the gaps (paragraph 0023).
Regarding claim 5, Harvey teaches that the elastomeric granular composition is positioned in the gaps (grout, paragraph 0023).
Regarding claim 6, Harvey does not teach pads. Ott further teaches a plurality of pads 13 positioned below the plurality of tiles 10 and on the top surface of the first layer 4 to create a space 15 between a bottom surface of each of the tiles and the top surface of the first layer (figure 2), the pads having a height sufficient to provide for water to pass through the space and across the top surface of the first layer (page 13, lines 11-23, teaching preventing the accumulation of water). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the pads and corresponding space of Ott in the product of Harvey because this allows for water to pass and thereby prevents accumulation and standing water.
Regarding claim 7, Harvey teaches that a top surface of each of the plurality of tiles co-operates with each other tile of the plurality of tiles to form at least a portion of a top surface of the protective system, and the elastomeric granular composition in the gaps between the tiles also forms at least a portion of the top surface of the protective system (paragraphs 0023, 0025 and figure 1).
Regarding claim 10, neither Harvey nor Ott explicitly teaches that urethane may freeze and thaw without losing elasticity. However, as Harvey in view of Ott satisfies all of the previous limitations, the combination’s materials and structure are indistinguishable from the claimed materials and structure. Therefore, it is reasonable to expect that the combination’s urethane would also undergo many freeze and thaw cycles without losing elasticity. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established” (MPEP 2112.01 Section I).
Regarding claim 11, Harvey teaches that the granular material comprises a washed aggregate material (paragraph 0023, where while the decorative material has not been explicitly stated as washed, it must be washed to be decorative).
Regarding claim 12, Harvey in view of Ott teaches the elastomeric granular composition but does not teach the ratio of granular material to elastomer. Harvey, however, does teach that the granular composition is pressed into the elastomeric composition to provide the decorative surface (paragraph 0023).
Since the instant specification is silent to unexpected results, the specific ratio of the granular material to elastomer is not considered to confer patentability to the claims. As the physical and optical characteristics are variables that can be modified, among others, by adjusting the parameters of the method, the precise ratio would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed ratio cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the invention, would have optimized, by routine experimentation, the ratio of granular material and elastomer to obtain the desired physical and optical characteristics (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). See MPEP 2144.05 Section II.
Claims 8, 9 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2011/028586 Harvey et al in view of CA 1,306,595 Ott et al as applied to claim 1 above, and further in view of CA 3,028,082 Neustaeter.
Regarding claim 8, Harvey in view of Ott teaches the protective system. Neither Harvey not Ott teaches a side cover. Neustaeter teaches a wooden deck structure where the first layer 121 covers at least a portion of a side surface of the outdoor wooden structure (waterproof membrane, figure 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the side cover of Neustaeter in the product of Harvey because this allows for protection of the side surfaces of the wooden structure as well as the top (paragraph 0035).
Regarding claim 9, Neustaeter further teaches that the second layer includes a skirt 132 extending downwardly in front of at least the portion 121 of the first layer on the side surface of the outdoor wooden structure (figure 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the skirt side cover of Neustaeter in the product of Harvey because this allows for protection of the side surfaces of the wooden structure as well as the top (paragraph 0035).
Regarding claim 22, Harvey in view of Ott teaches the protective system on a wood underlayment (Harvey paragraph 0019) covering a top surface (figure 1). Neither Harvey not Ott teaches a deck frame or posts. Neustaeter teaches a wooden outdoor deck structure 200 comprising a deck frame 108 supported above a ground by a plurality of deck posts 106 (figure 4).
The only difference between the claim and the prior art is the combination of the elements in a single reference. One of ordinary skill in the art before the effective filing date of the invention could have combined the elements using known methods and there is no evidence that the frame and posts of the claim performs differently when combined with the other elements than it does separably nor is there any evidence that the combination would produce any unexpected results (MPEP 2141, Part III. KSR A: Combining Prior Art Elements According to Known Methods To Yield Predictable Results). As such to include a deck frame and posts in the wood underlayment of Harvey would have been obvious to one of ordinary skill in the art.
Conclusion
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781