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
Newly submitted Claims 18-22 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the process of Claims 18-22 is distinct from that of Claims 10-15 because it uses a different material workpiece (vinyl as opposed to hardwood), and thus has a materially different mode of operation as different method steps are required for the different materials (e.g. adding/removing the tape for the hardwood nosing, and applying heat and providing a filler for the vinyl nosing).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, Claims 18-22 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant's arguments filed 03/28/2026 have been fully considered but they are not persuasive. Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. On pages 7-8 of the Remarks Applicant states that the combination of cited references does not disclose, teach, or suggest the amended Claim 10, and quotes the entirety of amended Claim 10, instead of citing only the limitations which the Applicant believes make the claimed invention patentably distinct from the prior art of record and discussing how the prior art of record does not teach them and/or could not be modified to arrive at the claimed invention.
Nevertheless, upon consideration of the amended Claim 10, the previous rejection under 35 U.S.C. 103 as being unpatentable over Iannacone in view of Sakano is withdrawn.
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.
Claims 10-15 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.
Regarding Claim 10, the scope of the limitation “removing material from the miter cut to create a miter fold with separated miters” in line 6 is unclear. The preamble of the claim recites that the flooring board being worked upon has a miter cut on the non-finished face; is there already a cut made in the non-finished face before the “removing material” step, and in the “removing material” step, more material is removed from the area of the initial miter cut to create the miter fold? Examiner notes that the specification appears to use the terms “miter cut” and “miter(s)” interchangeably, so clarification could not be found. Further, Figures 2 and 3 show the tape on the finished face of the flooring board, which lines 4-5 of Claim 10 recites is placed “over the miter cut”, but there does not appear to be any kind of cut under the tape on the non-finished face of the flooring board in the figures. Accordingly, if the above interpretation is correct, there does not appear to be support for it in the original disclosure. If the above interpretation is not correct, the claim should be amended to clarify the steps being performed.
Claims 11-15 are rejected by virtue of their dependence upon Claim 10.
Examiner note: no art has been applied to Claim 10 and its dependent claims; however, the claims as currently set forth are not deemed allowable and Applicant is required to clarify in compliance with 35 U.S.C. 112 so as to facilitate a clear understanding of the claimed invention and the protection sought.
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 TERESA A GUTHRIE whose telephone number is (571)270-5042. The examiner can normally be reached M/Tu/Th, 10-6 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Templeton can be reached at (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TERESA A GUTHRIE/Examiner, Art Unit 3725
/Christopher L Templeton/Supervisory Patent Examiner, Art Unit 3725
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