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
The Amendment filed 21 November 2025 has been entered. Claims 1 – 11, 13, 15, and 16 remain pending in the application.
Claim Interpretation
As amended, claim 1 is directed to (portions of emphasis bolded):
“A panel comprising a substrate and a top layer provided onto the substrate, wherein the top layer provided onto the substrate, wherein the top layer comprises at least a melamine-based resin and wherein the top layer comprises a resin impregnated foil disposed between the melamine-based resin and the substrate;
wherein the substrate comprises a magnesium oxide board;
wherein the resin impregnated foil contacts the magnesium board; and
wherein the resin impregnated foil contacts the melamine-based resin.”
The instant specification states the following regarding contact of two features (portions of emphasis bolded):
[008] Preferably, the invention also relates to a panel wherein the melamine-based resin of the top layer is hardened directly on the substrate. Wherein “directly on the substrate” means that that the melamine-based is provided onto the substrate and is hardened while it lays onto the substrate, and that it is not hardened separately from the substrate and subsequently fixed to it. Therefore, within the scope of the present invention, “directly on the substrate” doesn’t necessarily means that the melamine-based resin is in direct contact with the substrate and it is also irrespective whether between the substrate and the melamine-based resin one or more intermediate layer are provided or not. Hardening the melamine-based resin directly onto the substrate provides for a more flexible process, a reduction of stocks needed and also improves the adhesion between the melamine-based resin and the substrate.
[020] According to the preferred embodiment the décor is provided on a carrier, for example a sheet, preferably a paper sheet or a PVC sheet, to be laminated onto the substrate. In this case the carrier can be impregnated with the melamine-based resin and/or the binder. Alternatively, the décor may be printed directly onto the substrate. Wherein, with “printed directly onto the substrate” is meant that the printing operation is performed directly onto the substrate and not that the print is in direct contact with the top surface of the substrate. Therefore, within the context of the present application “printed directly onto the substrate” doesn’t exclude that one or more layers are interposed between the décor and the top surface of the substrate.
[057] With the same aim as in the first aspect, the invention, according to a fifth independent aspect thereof, relates to a method for manufacturing a panel, with the characteristic that the method comprises the following steps: the step of providing a substrate; the step of providing a top layer comprising a melamine-based resin on top of the substrate; and the step of curing the melamine-based resin directly on top of the substrate. It is to be noted that the panel according to this third independent aspect may comprise any of the features described in relation to the first and or the third independent aspect. Wherein “directly on the substrate” means that that the melamine-based is provided onto the substrate and is hardened while it lays onto the substrate, and that it is not hardened separately from the substrate and subsequently fixed to it. Therefore, within the scope of the present invention, “directly on the substrate” doesn’t necessarily means that the melamine-based resin is in direct contact with the substrate and it is also irrespective whether between the substrate and the melamine-based resin one or more intermediate layer are provided or not. Curing, or hardening, the melamine-based resin directly onto the substrate provides for a more flexible process, a reduction of stocks needed and also improves the adhesion between the melamine-based resin and the substrate. Moreover, curing the melamine-based resin directly on the substrate provides the possibility of creating structures and reliefs on the melamine-based surface. This also provides for creating structures in register with the print and/or comprising other features like for example beveled edges.
[073] Alternative embodiments of the invention may comprise the step of providing the décor directly on the top surface of the substrate, preferably via digital inkjet printing. Wherein “directly on the substrate” means that that the printing operation is performed onto the substrate, and not that the printing operation is performed on a separate carrier, like a paper sheet, that subsequently attached on the substrate. Therefore, within the scope of the present invention, “directly on the substrate” doesn’t necessarily mean that the print is in direct contact with the surface of the substrate and it is also irrespective whether between the substrate and the print one or more layer are provided or not, on the contrary in this case it could be preferable to provide a primer coating on the surface of the substrate before providing the print or, in any case perform a step of treating the top surface of the substrate in order to prepare it for direct printing.
These are the only passages in the instant specification which mention contact (or its grammatical equivalents), and each passage distinguishes “directly on” a substrate as not necessarily meaning “direct contact”, i.e. “directly on” is broader than “direct contact”. However, as highlighted in claim 1, claim 1 recites “contact” rather than “direct contact” and therefore reads more broadly than “direct contact”. Accordingly, a prior art disclosure need not have direct contact between a resin impregnated foil and a magnesium board, or a resin impregnated foil and a melamine-based resin, to anticipate or render obvious claim 1.
Furthermore, this interpretation is considered reasonable in light of claim 11. Notably, claim 11 requires the top layer to comprise a binding layer between the substrate and the resin impregnated foil, i.e. the binding layer is a separate feature from the resin impregnated foil. Therefore, direct contact between the substrate and the resin impregnated foil cannot exist in the embodiments of claim 11.
A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph.
Thus, for the above assessment of claim 11 to be true, claim 1 must encompass embodiments wherein direct contact is not required.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 – 11, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Drees (US 2002/0146954 A1) in view of Chu (US 2016/0159032 A1).
Regarding claim 1, Drees discloses a panel (“decorative laminate assembly” 30: e.g. Fig. 2, 2A, 3; ¶¶ [0031], [0033] – [0052], [0063], [0064]) comprising
a substrate (“substrate”, e.g. “substrate” 34: e.g. Fig. 3; ¶¶ [0031], [0041], [0044] – [0049], [0051]) and
a top layer provided onto the substrate (comprising a “top layer assembly” and an “adhesive”, e.g. “decorative laminate cladding” 20 and “adhesive” 32: e.g. Fig. 2, 2A, 3; ¶¶ [0031], [0038], [0045], [0051]),
wherein the top layer comprises at least a melamine-based resin (as provided in an “overlay layer”, e.g. “overlay layer” 22: e.g. Fig. 2, 2A, 3; ¶¶ [0031], [0038], [0040], [0041], [0043], [0045], [0050]), and
wherein the top layer comprises a resin impregnated foil disposed between the melamine-based resin and the substrate (individually or collectively, “decorative print sheet” 24, “core layer” 26, “layer” 27: e.g. Fig. 2, 2A, 3; ¶¶ [0031], [0038], [0040] – [0042]),
wherein the resin impregnated foil contacts the substrate (“adhesive” 32 contacts “substrate” 34: e.g. Fig. 3; ¶¶ [0031], [0045]); and
wherein the resin impregnated foil contacts the melamine-based resin (“overlay layer” 22 contacts “decorative print sheet” 24: e.g. Fig. 2, 2A, 3; ¶¶ [0038], [0041]).
Although Drees is not explicit as to the substrate comprising a magnesium oxide board and thus the resin impregnated foil contacting the magnesium oxide board, these features would have been obvious in view of Chu.
Chu discloses a substrate for forming panels (e.g. ¶¶ [0010] – [0055]) like Drees discloses, wherein the substrate comprises a magnesium oxide board, e.g. to provide superior resistance to fire and water (e.g. ¶ [0012]).
Accordingly, it would have been obvious for Drees’ substrate to comprise a magnesium oxide board in order to provide superior fire and water resistance.
Given the positions of the magnesium oxide board in Drees’ modified substrate and the resin impregnated foil, it follows the modification of Drees’ disclosure provides a resin impregnated foil contacting a magnesium oxide board as required of claim 1.
Regarding claim 2, in addition to the limitations of claim 1, Drees discloses said resin impregnated foil comprises a resin, e.g., a melamine-based resin (e.g. ¶¶ [0038], [0041], [0051]).
Regarding claim 3, in addition to the limitation of claim 1, Drees discloses said resin impregnated foil comprises, e.g., a paper sheet (e.g. ¶¶ [0040], [0041], [0045]).
Regarding claim 4, in addition to the limitations of claim 3, Drees discloses the paper sheet is a printed paper sheet (“decorative print sheet” 24: e.g. Fig. 2, 2A, 3; ¶¶ [0038], [0040], [0041]).
Regarding claim 5, in addition to the limitations of claim 1, Drees discloses the foil of the resin impregnated foil has a starting weight of between 16.27 and 195.3 g/sqm, e.g. 55.33 g/sqm or 105.8 g/sqm (“50 to 120 pounds per 3000 square foot ream”, “40 to 75 pounds per ream”, “10 to 40 pounds per ream”, with examples at 34 and 65 pounds per ream: e.g. ¶¶ [0006], [0055], [0056]).
Drees’ broad range for the starting weight overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 6, in addition to the limitations of claim 1, Drees discloses the resin content in the resin impregnated foil is between 35 and 80 % of foil weight (e.g. ¶ [0009]), e.g. between 39 and 41% of the foil weight (e.g. ¶ [0056]) or between 64 and 66% of the foil weight (e.g. ¶ [0055]).
These ranges are within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 7, in addition to the limitations of claim 1, Drees discloses said resin impregnated foil has a weight after impregnation of at least between 218.2 and 266.7 g/sqm, e.g. (“resin content” of, e.g., 45-55% for a paper of “50 to 120 pound per ream basis weight” for a “solid color sheet”, where the true value will be higher for the additional layers cited in the 35 U.S.C. 102(a)(1) rejection of claim 1 if considered as features of the resin impregnated foil: e.g. ¶¶ [0055], [0056]), which encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 8, in addition to the limitations of claim 1, Drees discloses said resin impregnated foil comprises a moisture content no more than 8% (content of all volatiles is 6-8%, meaning water must also be no more than 8%: e.g. ¶¶ [0055], [0056]), which encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 9, in addition to the limitations of claim 1, Drees discloses the top layer comprises a binder (the “adhesive”, e.g. the “adhesive” 32: e.g. Fig. 3; ¶¶ [0031], [0045], [0050], [0051]).
Regarding claim 10, in addition to the limitations of claim 1, Drees discloses the binder is, e.g., urethane based (e.g. ¶ [0051]).
Regarding claim 11, in addition to the limitations of claim 9, Drees discloses the top layer comprises a binding layer provided with said binder, and wherein said binding layer is interposed between the substrate and said resin impregnated foil (e.g. Fig. 3; ¶¶ [0031], [0045], [0050], [0051]).
Regarding claim 15, in addition to the limitations of claim 1, Chu discloses the magnesium oxide board comprises, e.g., natural fibers (“wood chips”, “bamboo chips”: e.g. ¶¶ [0013], [0020] – [0022], [0043], [0045] – [0047], [0050]).
Regarding claim 16, in addition to the limitations of claim 1, Drees discloses the top layer comprises a water absorbing substance, wherein the water absorbing substance is, e.g., paper (e.g. ¶¶ [0041], [0045]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Drees and Chu as applied to claim 1 above, and further in view of Döhring (US 2016/0326744 A1).
Regarding claim 13, although Drees is not explicit as to the substrate comprising a plurality of phenolic impregnated paper sheets pressed and cured onto each other, this feature would have been obvious in view of Döhring.
Döhring discloses a substrate comprising a plurality of phenolic impregnated paper sheets pressed and cured onto each other and a substrate comprising, e.g., MDF are equivalents for forming panels (e.g. ¶¶ [0047], [0049], [0050]) like Drees discloses, and Drees notes MDF is an equivalent to a mineral-based board (“cement board”, “mineral fibers”: e.g. ¶¶ [0031], [0045], [0047], [0049] – [0051]).
Generally, Drees notes the substrate is not limited to any particular material (a preference is given to moisture resistant substrates, but non-moisture resistant substrates can be used so long as the environment of use is not wet or moist: e.g. ¶ [0045]).
“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See also MPEP § 2144.06, I.
For this reason, it would have been obvious for the substrate to comprise a plurality of phenolic impregnated paper sheets pressed and cured onto each other as Döhring discloses.
Response to Arguments
Applicant’s arguments, see p. 5, filed 21 November 2025, with respect to the rejection of claim 8 (Applicant correctly highlights the rejection applies to claim 8 rather than claim 6 as noted in the Office Action mailed 27 August 2025 based on the written subject matter) have been fully considered and are persuasive. This rejection has been withdrawn.
Applicant’s arguments, see pp. 5 – 6, filed 21 November 2025, with respect to the rejections of claims 1 – 4, 6, 9 – 12, 14, and 16 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. This rejection has been withdrawn.
Applicant’s arguments, see pp. 6 – 8, filed 21 November 2025, with respect to the rejections of claims 5, 7, 8, and 13 – 15 under 35 U.S.C. 103 (as now pertinent to claim 1) have been fully considered but they are not persuasive.
The following discussion also serves to answer Applicant’s arguments with respect to the rejections of claims 1 – 4, 6, 9 – 12, 14, and 16 under 35 U.S.C. 102(a)(1) as pertinent to the current rejections under 35 U.S.C. 103.
Applicant asserts the claimed substrate comprises a magnesium oxide board and therefore differs from Drees, where Drees discloses cement boards. Applicant asserts cement boards are different from magnesium oxide boards, relying on disclosure in the instant specification which distinguishes the two.
While Drees may disclose cement fiberboards as substrate materials, Drees does not limit the material chosen so long as it has moisture and water resistance (e.g. ¶¶ [0028], [0031], [0045]). Chu discloses magnesium oxide as meeting these requirements (e.g. ¶ [0012]) and having the further benefit of fire resistance (e.g. ¶ [0012]), which is another property of the panel Drees desires (to be useful for fire-rated applications: e.g. ¶¶ [0050], [0051], [0064]).
Applicant further asserts Drees fails to disclose the contacting requirements of claim 1. Applicant’s arguments rely on the term “contact” to mean an avoidance of intervening layers (referencing Drees’ disclosure of PETG sheets), but such an interpretation is inconsistent with the claims and the instant specification. Even adopting this interpretation, Drees’ structure still reads on the claimed invention as there is no requirement for the resin impregnated foil to be limited in terms of layer composition (i.e. single or multiple layers). Therefore, the contacting limitations arise from Drees’ disclosure regardless of interpretation for “contact”.
Applicant’s arguments with respect to Chu (seen on p. 8) only relate to the use of a resin-impregnated foil or a top layer comprising melamine-based resin, noting Chu discloses a cover layer of wood or linoleum adhered to magnesium oxide with binding agent. As such, Applicant concludes Chu’s magnesium oxide substrate cannot be combined with Drees.
However, Chu does not limit their cover layer or binding agent to the species Applicant highlights (the species Applicant notes are only examples in Chu’s disclosure: e.g. ¶¶ [0020], [0044]). As such, limiting the applicability of a magnesium oxide substrate as Chu discloses to embodiments based on these species is narrower than Chu permits.
Accordingly, the examiner finds it reasonable to consider the advantages of a magnesium oxide substrate as Chu discloses for use in Drees’ substrate, particularly given Drees finds the advantages Chu discloses useful.
The remainder of Applicant’s arguments center around Drees and Chu as discussed above. Accordingly, the examiner maintains the rejections consistent with the present amendments.
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 ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783