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 .
Status of the Claims
Claims 1-7 are currently pending.
Claims 8-10 are canceled.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/06/2026 has been entered.
Response to Amendments
Applicant’s amendments filed 03/30/2026 have been entered.
Claim 1 has been amended. Claims 9 and 10 have been canceled.
The Section 102 rejections have been updated to reflect Applicant’s amendments.
New Section 112(b) rejections have been implemented in view of Applicant’s amendments.
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 1-7 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 1,
The limitation requiring “the coating varnish has been applied in a single layer in a one step” in combination with the limitation requiring “the coating varnish has such a viscosity that it is suitable for machine application by means of an application roller” renders the claim indefinite. It is unclear if the coating varnish is required to be already applied on a floor element (as a coating is known in the art as a layer that has been applied to a substrate) or if it is a coating (or a layer) that is yet to be applied that is suitable for being applied via an application roller or if the claim is requiring the coating IS applied by machine application by means of an application roller. For examination purposes, the claim will be considered a coating that is applied to a floor element as a single layer structurally with the claimed thickness and the limitations requiring the application to be in one step and has a viscosity that is suitable for machine application by means of an application roller will be considered process limitations.
Regarding claim 2,
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2, which depends on claim 1, recites the broad recitation of a thickness for the coating varnish of 0.05 mm to 1.5 mm, and claim 1, from which claim 2 depends, also recites0.05 mm to 0.3 mm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 3-7,
The claims are indefinite due to the dependencies on claim 1.
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)(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.
Claim(s) 1-4 and 6 are rejected under 35 U.S.C. 102(a)(2) as being unpatentable by Pervan et al. (US 2010/0300030 A1).
Regarding claim 1,
Pervan teaches panels for a floor element comprising a surface layer coating (Pervan: par. 0013). The coating comprising a surface coating comprising decorative surface layer comprising cork particles (powder) mixed with a synthetic binder (a coating varnish for application to the floor element) (Pervan: par. 0098-0099). The surface coating layer could be placed on both sides of a balancing layer, which placed opposite of the visible side of the floor element (Pervan: par. 0164).
The limitation requiring the coating varnish to “be applied in a single layer in one step” and the limitation requiring the coating varnish to “have such a viscosity that is suitable for machine application by means of an application roller” are product by process and/or functional limitations. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. A claim term is functional when it recites a feature "by what it does rather than by what it is" (e.g., as evidenced by its specific structure or specific ingredients). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). See MPEP 2173.05 (g). In this case, there appears to be no structural difference between the claimed coating varnish and the coating varnish disclosed by Pervan. The coating varnish (the surface layer coating) may be considered a single layer as detailed in the Figures and that it has a defined thickness (Pervan: Figs. 3-5; par. 0144). The coating varnish may have a thickness of between 0.1 to 0.2 mm, which is within the claimed range of from 0.05 to 0.3 mm (Pervan: par. 0144). Additionally, the coating varnish has the claimed composition as explained above and may be applied via a roller (Pervan: par. 0205). Thus, it is expected that the coating varnish is capable of having a viscosity that is suitable for some kind of machine application by some kind of application roller as no specifics for either are claimed.
Regarding claim 2,
Pervan teaches the coating required by claim 1. Pervan further teaches the coating varnish may have a thickness of between 0.1 to 0.2 mm, which is within the claimed range of from 0.05 to 1.5 mm (Pervan: par. 0144).
Regarding claim 3,
Pervan teaches the coating required by claim 1. Pervan further teaches the coating varnish comprises cork, synthetic binders, and wear resistant particles and thus may be considered to consists only of a mixture of natural and synthetic components (Pervan: par. 0099).
Regarding claim 4,
Pervan teaches the coating required by claim 1. Pervan further teaches the synthetic binder may be a resin such as a polyester (Pervan: par. 0270).
Regarding claim 6,
Pervan teaches the coating required by claim 1. Pervan further teaches the cork particles may have a size in a range and thus may have single or different grain sizes (Pervan: par. 0106 and 0108).
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) 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Pervan.
Regarding claim 5,
Pervan teaches the coating required by claim 1. Pervan further teaches the cork powder has a particle (grain) size of 1 mm or less, which overlaps with the claimed 0.1 to 1 mm (Pervan: par. 0106).
Regarding claim 7,
Pervan teaches the coating required by claim 1. Pervan is silent towards the cork powder being present in terms of vol%.
However, Pervan teaches the cork particles are homogenously (equal amounts) mixed with the other components (Pervan: claim 1; 0052, 0099, and 0149) and teaches an example of 25 wt% of wood fibers which may be swamped for the cork particles (Pervan: par. 0191) and another example of the wood fibers (which may be swapped with cork particles) is present in at least 5% (Pervan: par. 0267). Thus, the cork particles may be present in overlapping amounts to the claimed 5 to 50 vol% when converted. A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Thus, one of ordinary skill in the art would adjust the cork dust particles and the other ingredients in the surface layer to achieve the desired decorative and wear resistant effects as taught by Pervan.
Response to Arguments
Applicant’s arguments filed 03/30/2026 have been fully considered but they are not found persuasive.
Applicant argues that Pervan teaches a different material state and application mechanism as represented in the new claim amendments to claim 1. Applicant states the distinction between the process of application methods results in different material state as different flowability and controlled viscosity is required to be spread by a roller as in claim 1. Applicant states the multi-step process teaches away from the claimed process of application.
The argument is not found persuasive as the assertion that claim 1 teaches a different method of application is a set of product-by-process limitations and are not given patentable weight as Pervan teaches the claimed structure and composition required by the claims. Applicant’s statement that the process step differences means a different material state in the final product is not found persuasive as Pervan matches the claimed structural features in the final product. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 2145 I. That is, Applicant has not provided evidence beyond conclusionary statements that the resulting coating layer of Pervan is structurally different from the final structure of the claimed coating layer product of claim 1.
Applicants further explanation of the various different such as compatibility, consistency, acoustic performance, manufacturability, industrial scaling, continuous processing, and modifying dry particulate are not found persuasive as they are not found in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). See MPEP 2145 VI.
Applicant argues that the Section 103 rejections are invalid for the reasons listed in the arguments for the Section 102 rejections.
The arguments are not found persuasive for the reasons listed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Travis M Figg whose telephone number is (571)272-9849. The examiner can normally be reached M-F 9am-5pm.
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/TRAVIS M FIGG/Primary Examiner, Art Unit 1783
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