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 07/23/2026 has been entered. Claims 1-25 remain pending in the application. Claims 1-20, and 22-25 were amended. Written support for amendments to Claims 2-9, 14-20, and 22-23 are found in the claims and Specification as originally filed.
Claim Objections
Claim18 is objected to because of the following informalities:
Claim 18 was amended to recite “PA11, PA12”, “PA6”, “PA10”, “PA11”, “PA12”, “PA6/6”, “PA6/6,6”, “PA6/PA10”, and “PA6/PA12”. Every abbreviation used in the claims or specification should be defined the first time it is used. It is suggested to change “PA” to “polyamide” as supported in Claim 18 as originally filed.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 24 were amended to include “about 50 weight % nano-silica” and “about 50 weight % siloxane” (emphasis added). While the original Specification provides written support for 50% nano-silica and 50% siloxane [¶ Table 1], and “siloxane and nano-silica can be in the range of from about 0.5 % to about 10 % by weight” [¶ 0055], the claims and Specification as originally filed do not provide explicit and literal written support for “about 50 weight %”.
Claims 10-12 were amended to recite “a combined active amount of the nano-silica and siloxane additives” (emphasis added). However, while there is adequate support for the use of nano-silica and siloxane [¶ 0055-0057; Table 1], neither the original claims nor Specification provide any written support for “a combined active amount”.
Claims 2-25 are at least rejected for being dependent on a rejected base claim.
Claim Rejections - 35 USC § 112(b)
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 1-25 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.
Claims 1 and 24 were amended to include “a smooth surface” (emphasis added). However, “smooth” is a relative term which renders the claim indefinite. The term “smooth surface” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Applicant’s specification does not teach the method for measuring smoothness and determining whether something is smooth. Therefore, the scope of the claim is indefinite. For the purposes of examination, “smooth surface” will be interpreted to mean a non-textured surface as supported by the instant Specification [¶ 0044].
Claims 1 and 24 were amended to include “a nip/pull roll section”. However, it is unclear whether the “/” denotes an “and” or an “or”. For example, it is unclear if this limitation requires a nip roll or a pull roll, or a nip roll and a pull roll. The instant Specification does not provide further clarification [¶ 0044]. For the purposes of examination, “a nip/pull roll section” will be interpreted to mean a nip roll or a pull roll.
Claims 2-25 are at least rejected for being dependent on a rejected base claim.
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 1-4, 6-7, 9-11, 13-14 and 19-21 is rejected under 35 U.S.C. 103 as being unpatentable over Smillie et al. (US 2014/0053908 A1; cited in the IDS submitted on 09/27/2023; hereafter as “Smillie”) in view of Marotta et al. (WO 2005018755 A2; hereafter as “Marotta”).
Regarding Claims 1-3 and 21, Smillie teaches a thermoplastic multilayer protective wear layer that is the furthest from the substrate and functions as an abrasion and water resistant surface protectant that is produced by an extrusion film or sheet melt casting processes, [Abstract; Claim 1; ¶ 0052, 0061, 0108], corresponding to the thermoplastic, melt-extrudable composition for an extruded sheet or film wear layer of a surface covering, the wear layer being an outer layer exposed to moisture and wear of Claim 1. Smillie teaches the wear layer comprises:
poly(ethylene-co-methacrylic acid) with salts zinc ions [¶ 0126], thereby reading on the thermoplastic polymer component consisting of polyethylene blended with single cation ionomers of Claim 1, on the Zn+2 of Claim 2, and on the ethylene copolymers of Claim 3;
Linear thermoplastic urethane copolymers [¶ 0064], thereby reading on the thermoplastic urethane of Claim 1, and the aliphatic polyurethane of Claim 21;
block polymers of polyester [¶ 0064], thereby reading on the copolyester of Claim 1;
Silica [¶ 0100], corresponding to the silica additive of Claim 1;
sodium ionomers and zinc ionomers [¶ 0078], thereby reading on the sodium ionomer carrier resin and the zinc ionomer carrier resin, respectively, of Claim 1;
50 weight % siloxane dispersed in poly(ethylene-co-methacrylic acid) [¶ 0067, 0129, 0144], corresponding to 50 weight % siloxane dispersed in a carrier resin, wherein the carrier resins are compatible with the thermoplastic polymer component of Claim 1;
wherein a multilayer structure comprising the wear layer will have a smooth surface [¶ 0058], corresponding to the smooth surface of Claim 1.
Since Smillie teaches the wear layer is melt-extrudable, the wear layer will be interpreted to meet wherein the composition has a melt viscosity sufficient for extrusion through an extrusion sheet line of Claim 1.
Claim 1 is directed to a thermoplastic, melt-extrudable composition (which is a product) that is produced by extrusion (which is a process). As such, the instantly claimed invention will be interpreted to be a product-by-process. Thus, the Claim 1 limitation of the roll stack is configured to exert pressure to impart a smooth or textured surface to the extruded sheet or film wear layer (process) will be interpreted to only require the extruded sheet or film wear layer with a smooth or textured surface (product). Smillie teaches the wear layer has a smooth surface which will be interpreted to read on wherein the roll stack is configured to exert pressure on the extruded sheet or film wear layer and impart a smooth surface or a textured surface to the extruded sheet or film wear layer of Claim 1.
Similarly, the Claim 1 limitation requiring siloxane additives (product) that are supplied by a masterbatch (process) will be interpreted to only require the siloxane additives irrespective of how the additives are supplied. Thus, the siloxane of Smillie will be interpreted to read on the siloxane supplied by a masterbatch of Claim 1.
However, Smillie does not explicitly teach about 50 weight % nano-silica dispersed in a carrier resin of Claim 1; and wherein the siloxane additive is dispersed in a carrier resin selected from an ethylene methyl acrylate carrier resin, a thermoplastic urethane carrier resin, and combinations thereof of Claim 1.
Nevertheless, Marotta teaches an extrudable multilayer product with a polymer outer layer that resists abrasions [¶ 0025, 0038], comprising sodium ionomers, zinc ionomers, and filler [¶ 0024, 0105, 0133, 0140, 0150, 0160]. Marotta further teaches:
filler, such as silica, with a particle size of generally less than 20 mesh [¶ 0162; Table 33] (equivalent to ≤ 841,000 nm), which will be interpreted to overlap with the particle size of the nano-silica additive of Claim 1;
1-100 parts by weight of filler based upon 100 parts by weight of resin composition [¶ 0156], which overlaps with 50 weight % nano-silica additive of Claim 1; and
an outer cover layer comprising polyethylene-methyl acrylate-acrylic acid or thermoplastic polyurethane [¶ 0060, 0138], thereby reading on the ethylene methyl acrylate carrier resin, and urethane carrier resin of Claim 1.
Similar to the product-by-process interpretation disclosed above, the Claim 1 limitation of the nano-silica additives (products) that are supplied by a masterbatch (process) will be interpreted to only require the nano-silica irrespective of how the additives are supplied. Thus, the nano-silica of Marotta will be interpreted to read on the nano-silica supplied by a masterbatch of Claim 1.
Marotta offers the motivation that fillers may be used to adjust the density, flex modulus, mold release, and/or melt flow index of a layer [¶ 0154-0161]. Marotta also offers the motivation that polyurethane material provides exceptional durability and performance [¶ 0099].
Smillie and Marotta are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing durable and extrudable multilayer materials comprising polyethylene, ionomers, urethane, polyesters, fillers and silica.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the silica filler and thermoplastic polyurethane of Marotta with the thermoplastic multilayer material of Smillie, with the motivation to improve the material properties, thereby arriving at the claimed invention.
However, Marotta does not explicitly teach the particle size of the nano-silica additive of Claim 1, or 50 weight % nano-silica additive of Claim 1.
Nevertheless, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Marotta for the amount and particle size of nano-silica (1-100 wt. % and ≤ 841,000 nm, respectively) overlaps the instantly claimed ranges (50 wt. % and particle size in the range of nanometers, respectively) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
In the alternative that the above disclosure is insufficient to render the claim obvious, Smillie further teaches that one of ordinary skill in the art will recognize that additives may be added to the ionomer composition using techniques known in the art or variants thereof, and will know the proper amounts for addition based upon typical usage [¶ 0100]. Smillie also teaches that siloxane master-batches produces materials of consistent quality [¶ 0144]. Therefore, the amount of the nano-silica and siloxane can be optimized to reach the desired properties via a routine optimization that is well known in the field. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the amount of nano-silica and siloxane for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding Claims 4 and 6, Smillie further teaches:
15 weight% methacrylic acid, thereby reading on about 5 % to about 20 % by weight methacrylic acid co-monomers of Claim 4; and
Ethylene copolymers having a density of 0.965 g/cm3 [¶ 0127], thereby reading on wherein the polyethylene is a copolymer of ethylene having a density in the range of from about 0.900 g/cc to about 0.965 g/cc of Claim 6.
Regarding Claim 7, Smillie further teaches:
70 weight % polyethylene copolymer [¶ 0128], corresponding to from 35 weight % to about 92 weight % of polyethylene of Claim 7; and
salts of zinc ions [¶ 0126], thereby reading on the single cations of Claim 7.
However, Smillie does not explicitly teach the amount of 8-65 weight % of the single cation ionomers or the mixed cation ionomers of Claim 7.
Nevertheless, Smillie offers the motivation that zinc ionomers can neutralize carboxylic acid, which results in a softened, less crystalline polymer [¶ 0068].
Therefore, the amount of the salts of zinc ions can be optimized to reach the desired crystallinity via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the amount of zinc for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding Claim 9, Smillie further teaches copolymerized units of alkyl acrylate and alkyl methacrylate [¶ 0014], thereby reading on the copoly(alkyl acrylates-alkyl methacrylates) of Claim 9.
Regarding Claims 10-11 and 13, Smillie further teaches:
Up to about 5 weight % of additives [¶ 0100], corresponding to wherein the amount of the at least one additive is in the range of from about 0.5 % to about 10 % by weight of Claim 10, and in the range from about 1% to about 4% by weight of Claim 11.
However, Smillie does not explicitly teach the silica and siloxane additives are active of Claims 10-11, and wherein the extruded sheet or film wear layer is transparent, piqmented, or opaque of Claim 13.
Nevertheless, Marotta teaches:
active fillers [¶ 0040] corresponding to the active silica and siloxane additives of Claims 10-11; and
use of pigment in the outer cover layer [¶ 0052], thereby reading on wherein the extruded sheet or film wear layer is pigmented of Claim 13.
Marotta offers the motivation that active fillers may be used to produce desirable compression characteristics [¶ 0040] and pigments can produce desired color and include optical brighteners [¶ 0052, 0140].
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the active filler and pigment of Marotta with the thermoplastic multilayer material of Smillie, with the motivation to improve compression and color characteristics, thereby arriving at the claimed invention.
Regarding Claims 14, and 19-20, Smillie further teaches:
Wherein the composition is abrasion resistant [Abstract; ¶ 0056, 0143], thereby reading on wherein the composition is abrasion resistant of Claims 14 and 20;
Terpolymer [¶ 0023], thereby reading on the terpolymer of Claim 19.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Smillie et al. (US 2014/0053908 A1; cited in the IDS submitted on 09/27/2023; hereafter as “Smillie”) in view of Marotta et al. (WO 2005018755 A2; hereafter as “Marotta”) and Sullivan et al. (US 2017/0333757 A1; hereafter as “Sullivan”).
Smillie and Marotta teach the wear layer, polyethylene, cation ionomer, silica, and siloxane of Claim 1 as set forth above and incorporated herein by reference.
Regarding Claim 5, Smillie teaches:
salts of zinc ions neutralize carboxylic acid groups which results in softer thermoplastic compositions [¶ 0117, 0126], thereby reading on the neutralizing Zn2+ of Claim 5.
However, Smillie does not explicitly teach at least about 10 weight % of dicarboxylic acid of Claim 5.
Nevertheless, Sullivan teaches polyurethane and siloxane compositions with improved chemical and mechanical resistance [Abstract; ¶ 0127], comprising 10-20 wt. % ethylenically unsaturated mono- or dicarboxylic acid [¶ 0120], corresponding to at least about 10 weight % of dicarboxylic acid of Claim 5.
Sullivan offers the motivation that at least 70% of all acid groups present in the composition are neutralized [¶ 0117].
Smillie, Marotta and Sullivan are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing durable compositions comprising polyethylene, polyurethane, and cation neutralized ionomers.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the amount of dicarboxylic acid of Sullivan with the multilayer protective layer of Smillie and Marotta, with the motivation to neutralize acid groups, thereby arriving at the claimed invention.
Claims 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Smillie et al. (US 2014/0053908 A1; cited in the IDS submitted on 09/27/2023; hereafter as “Smillie”) in view of Marotta et al. (WO 2005018755 A2; hereafter as “Marotta”) and Pailler et al. (US 2018/0297342 A1; cited in the IDS submitted on 09/27/2023; hereafter as “Pailler”).
Smillie and Marotta teach the wear layer, polyethylene, cation ionomer, silica, and siloxane of Claim 1 as set forth above and incorporated herein by reference.
Regarding Claim 8, Smillie also teaches polyacrylates [¶ 0070-0080].
However, Smillie is silent to homopolymers of polyacrylates of Claim 8.
Nevertheless, Pailler teaches homopolymers of methyl methacrylates [¶ 0078], thereby reading on the homopolymers of polymethylmethacrylates of Claim 8.
Pailler offers the motivation that combining (meth) acrylate polymers with polylactic acid, enables calendaring at standard PVC-conditions without introducing inconvenient properties [¶ 0069].
Smillie, Marotta and Pailler are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing wear layers comprising polyethylene and zinc.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the homopolymer of methyl methacrylate of Pailler with the multilayer protective layer of Smillie and Marotta, with the motivation to enable calendaring, thereby arriving at the claimed invention.
Regarding Claim 12, Smillie does not explicitly teach the combination of additives of siloxane and nano- silica is in the range of from about 2 % to about 6 % by weight.
Nevertheless, Pailler teaches silica that has an average particle size between 0.2 and 100 µm [¶ 0131-0132] (which is equivalent to 200 – 100,000 nm), corresponding to the nano-silica of Claim 12. Pailler also teaches between 0.5 and 20% by weight of said silica [¶ 0131], which overlaps about 2% to about 6% by weight of Claim 12.
Pailler offers the motivation that said silica is used a transparent wear resistant particle that protective top-coats [¶ 0130-0131].
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the amount of nano-silica of Pailler with the multilayer protective layer of Smillie and Marotta, with the motivation to produce a protective top coat, thereby arriving at the claimed invention.
Furthermore, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Pailler for the amount of nano-silica (0.5-20% by weight ) overlaps the instantly claimed range (about 2 % to about 6 % by weight) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Smillie et al. (US 2014/0053908 A1; cited in the IDS submitted on 09/27/2023; hereafter as “Smillie”) in view of Marotta et al. (WO 2005018755 A2; hereafter as “Marotta”) and Vogel et al. (US 8945708 B1; cited in the IDS submitted on 09/27/2023; hereafter as “Vogel”).
Smillie and Marotta teach the wear layer, polyethylene, cation ionomer, silica, and siloxane of Claim 1 as set forth above and incorporated herein by reference.
However, Smillie does not teach the polyamides of Claims 15-18.
Nevertheless, Vogel teaches ionomeric top surfaced films [Abstract], comprising:
ionomer-polyamide copolymer blends [Claim 1; Column 16, Lines 29-30], thereby reading on the copolymers of polyamides further blended with the ionomers of Claim 15;
wherein the ionomer comprises metal cations, such as zinc [Column 14, Lines 25-37], corresponding to the single cation ionomers of Claim 15;
45-50 wt. % ionomer [Column 15, Lines 18], which overlaps from about 49 weight % to about 34 weight % of the single cation ionomers of Claim 16;
40-60 wt. % polyamide [Column 15, Lines 18], which overlaps from about 51 weight % to about 66 weight % of the copolymers of polyamides of Claim 16;
Polyamide copolymers such as hexamethylenediamine isophthalamide [Column 16, Line 51], thereby reading on the aliphatic copolymer of an aliphatic amide of Claim 17; and
Nylon 11 [Column 16, Lines 33-37], thereby reading on the Polyamide 11 of Claim 18.
Vogel offers the motivation that the polyamide of said ionomeric top surfaced film has a high viscosity to provide advantageous mechanical properties, but is also low enough to create the desired phase relationship [Column 15, Lines 4-14].
Smillie, Marotta and Vogel are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing wear layers comprising polyethylene, and cations such as zinc.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the amounts and types of polyamide and ionomer of Vogel with the multilayer protective layer of Smillie and Marotta, with the motivation to improve mechanical properties, thereby arriving at the claimed invention.
Furthermore, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Vogel for the amounts of ionomer and polyamide (45-50 wt. %, 40-60 wt. %, respectively) overlap the instantly claimed ranges (34-49 wt. %, 51-66 wt. %, respectively) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Smillie et al. (US 2014/0053908 A1; cited in the IDS submitted on 09/27/2023; hereafter as “Smillie”) in view of Marotta et al. (WO 2005018755 A2; hereafter as “Marotta”) and Skinner et al. (US 4087400; cited in the IDS submitted on 09/27/2023; hereafter as “Skinner”).
Smillie and Marotta teach the wear layer, polyethylene, cation ionomer, silica, and siloxane of Claim 1 as set forth above and incorporated herein by reference.
Smillie teaches also teaches poly(tetramethylene ether glycol) [¶ 0128], thereby reading on the poly(tetramethylene ether glycol) of Claims 22 and 23.
However, Smillie does not explicitly teach diphenyl methane diisocyanate (MDI), toluene diisocyanate (TDI) with poly (tetramethylene ether glycol) (PTMEG), poly (propylene glycol) (PPG) polyols, and blends thereof of Claim 22, and the dicyclohexamethylene diisocyanate (H12MDI), hexamethylene diisocyanate (HDI) isophorone diisocyanate (IPDI) with poly (tetramethylene ether glycol) (PTMEG), poly (propylene glycol) (PPG) polyols, and blends thereof of Claim 23.
Nevertheless, Skinner teaches polyurethane wear layers [Abstract], comprising polypropylene glycol ether [Claim 8], thereby reading on the polypropylene glycol of Claims 22 and 23.
Skinner offers the motivation that said polyurethane wear layer compositions fuse with the substrate to form a uniform, high gloss wear layer [Column 5, Lines 10-15].
Smillie, Marotta and Skinner are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing wear layers comprising polyurethane and polyethylene.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polypropylene glycol ether of Skinner with the multilayer protective layer of Smillie and Marotta, with the motivation to form a high glass wear layer, thereby arriving at the claimed invention.
Claims 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Smillie et al. (US 2014/0053908 A1; cited in the IDS submitted on 09/27/2023; hereafter as “Smillie”) in view of Marotta et al. (WO 2005018755 A2; hereafter as “Marotta”), and Vogel et al. (US 8945708 B1; cited in the IDS submitted on 09/27/2023; hereafter as “Vogel”).
Regarding Claim 24, Smillie teaches a thermoplastic multilayer protective wear layer that is the furthest from the substrate and functions as an abrasion and water resistant surface protectant that is produced by an extrusion film or sheet melt casting processes, [Abstract; Claim 1; ¶ 0052, 0061, 0108], corresponding to the method of manufacturing an extruded sheet or film wear layer of a surface covering of Claim 24. Smillie teaches the wear layer comprises:
poly(ethylene-co-methacrylic acid) with salts zinc ions [¶ 0126], thereby reading on the thermoplastic polymer component consisting of polyethylene blended with single cation ionomers of Claim 24;
Linear thermoplastic urethane copolymers [¶ 0064], thereby reading on the thermoplastic urethane of Claim 24;
block polymers of polyester [¶ 0064], thereby reading on the copolyester of Claim 24;
silica [¶ 0100], corresponding to the silica additive of Claim 24;
sodium ionomers and zinc ionomers [¶ 0078], thereby reading on the sodium ionomer carrier resin and the zinc ionomer carrier resin, respectively, of Claim 24;
50 weight % siloxane dispersed in poly(ethylene-co-methacrylic acid) [¶ 0067, 0129, 0144], corresponding to 50 weight % siloxane dispersed in a carrier resin, wherein the carrier resins are compatible with the thermoplastic polymer component of Claim 24;
blending polyethylene with siloxane dispersed in ionomer [¶ 0129-0130], corresponding to mixing the thermoplastic polymer component and the additives to form a thermoplastic, melt-extrudable composition of Claim 24;
extruding the blend of polyethylene and additives [¶ 0131], corresponding to feeding the composition to an extruder of Claim 24;
die cutting the composition into coupons [¶ 0155], corresponding to extruding the composition through a die to form the extruded sheet or film wear layer of Claim 24;
wherein a multilayer structure comprising the wear layer will have a smooth surface [¶ 0058], corresponding to the smooth surface of Claim 24; and
cooling the thermoplastic polymer melt blends [¶ 0053, 0132-0133], corresponding to passing the extruded sheet or film layer through a cooling section of Claim 24.
Since Smillie teaches the wear layer is melt-extrudable, the wear layer will be interpreted to meet wherein the composition has a melt viscosity sufficient for extrusion through an extrusion sheet line of Claim 24.
However, Smillie does not explicitly teach about 50 weight % nano-silica dispersed in a carrier resin of Claim 24; wherein the siloxane additive is dispersed in a carrier resin selected from an ethylene methyl acrylate carrier resin, a thermoplastic urethane carrier resin, and combinations thereof of Claim 24; passing the extruded sheet or film wear layer though polishing rolls of Claim 24; pulling the extruded sheet or film wear layer though a nip/pull roll section of Claim 24; and winding the extruded sheet or film wear layer on a winder of Claim 24.
Regarding the amount of nano-silica and siloxane carrier resin, Marotta teaches an extrudable multilayer product with a polymer outer layer that resists abrasions [¶ 0025, 0038], comprising sodium ionomers, zinc ionomers, and filler [¶ 0024, 0105, 0133, 0140, 0150, 0160]. Marotta further teaches:
filler, such as silica, with a particle size of generally less than 20 mesh [¶ 0162; Table 33] (equivalent to ≤ 841,000 nm), which will be interpreted to overlap with the particle size of the nano-silica additive of Claim 24;
1-100 parts by weight of filler based upon 100 parts by weight of resin composition [¶ 0156], which overlaps with 50 weight % nano-silica additive of Claim 24; and
an outer cover layer comprising polyethylene-methyl acrylate-acrylic acid or thermoplastic polyurethane [¶ 0060, 0138], thereby reading on the ethylene methyl acrylate carrier resin, and urethane carrier resin of Claim 24.
Marotta offers the motivation that fillers may be used to adjust the density, flex modulus, mold release, and/or melt flow index of a layer [¶ 0154-0161]. Marotta also offers the motivation that polyurethane material provides exceptional durability and performance [¶ 0099].
However, Marotta does not explicitly teach the particle size of the nano-silica additive of Claim 24, or 50 weight % nano-silica additive of Claim 24.
Nevertheless, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Marotta for the amount and particle size of nano-silica (1-100 wt. % and ≤ 841,000 nm, respectively) overlaps the instantly claimed ranges (50 wt. % and particle size in the range of nanometers, respectively) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
In the alternative that the above disclosure is insufficient to render the claim obvious, Smillie further teaches that one of ordinary skill in the art will recognize that additives may be added to the ionomer composition using techniques known in the art or variants thereof, and will know the proper amounts for addition based upon typical usage [¶ 0100]. Smillie also teaches that siloxane master-batches produces materials of consistent quality [¶ 0144]. Therefore, the amount of the nano-silica and siloxane can be optimized to reach the desired properties via a routine optimization that is well known in the field. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the amount of nano-silica and siloxane for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding passing the composition through the polishing rolls and nip/pull rolls, Vogel teaches a method of making a multilayer sheet and film having a ionomer-polyamide pigmented blend as a top surface that exhibits good weatherability [Claims 1, 3; Col. 5, Lines 30-65 – Col. 6, Lines 1-43; Abstract], comprising the steps of:
the molten flow exits the die as a molten curtain, contacts a highly polished roll that provides a higher glossy finish on the sheet and then contacts a nip system between rollers which pulls the sheet into the system [Col. 8, Lines 51-65; Claim 13], corresponding to passing extruded sheet or film wear layer through a roll stack comprising polishing rolls, thereby exerting pressure on the extruded sheet or film wear layer and imparting a smooth surface on the extruded sheet or film wear layer, and passing the extruded sheet or film wear layer through a nip/pull roll section of Claim 24;
the sheet may be formed with a mold, wherein the mold is textured to provide a textured surface on the article, or polished as to provide a gloss surface on the article, and the surface of the article substantially replicates the surface finish of the mold [Claim 13], corresponding to exerting pressure on the extruded sheet or film wear layer and imparting a smooth surface or a textured surface to the extruded sheet or film wear layer of Claim 24; and
the sheet is subsequently rolled onto a core creating a roll of sheet [Col. 8, Lines 51-650], corresponding to winding the extruded sheet or film wear layer on a winder of Claim 24.
Vogel offers the motivation that the method produces sheets and films have a high quality surface appearance while reducing manufacturing cost [Col. 3, Lines 52-66].
Smillie, Marotta and Vogel are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing extrudable multilayer materials comprising thermoplastics such as polyethylene and polyesters, ionomers, fillers and silica.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the silica filler and thermoplastic polyurethane of Marotta and method of Vogel with the thermoplastic multilayer material of Smillie, with the motivation to improve the material properties while reducing manufacturing cost, thereby arriving at the claimed invention.
However, Smillie, Marotta and Vogel do not teach the steps in the same order as Claim 24.
Nevertheless, Vogel teaches multilayer sheets can be made on extrusion lines that may be configured and operated in ways known in the art [Col. 7, Lines 61-64]. Furthermore, case law has held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (See MPEP 2144.04.IV.C., In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)). In addition, the instant Specification similarly discloses that those skilled in the art would know that the invention would be similarly achieved if steps of the disclosed techniques were preformed in a different order and/or if components were combined in a different manner [¶ 0065].
Regarding Claim 25, Smillie further teaches preparing the mixture with a twin-screw extruder [¶ 0131], thereby reading on the twin-screw compounding of Claim 25.
Response to Arguments
Regarding Applicant’s arguments regarding the rejection of Claims 1 and 14 in view of Bauer, filed 07/23/2026, with respect to Claims 1 and 14 have been fully considered and are persuasive. The rejection in view of Bauer of Claims 1 and 14 have been withdrawn.
Regarding Applicant’s arguments regarding the rejection of Claims 1-25 in view of Smillie, Applicant's arguments filed 07/23/2026 have been fully considered but they are not persuasive.
Regarding Claims 1 and 24, Applicant argues (1) amended Claims 1 and 24 do not disclose the complete amended combination of Claim 1 and/or Claim 24 in a single embodiment. However, Smillie in view of Marotta for Claim 1, and Smillie in view of Marotta and Vogel for Claim 24, are not required to teach all the claimed limitations in a single embodiment in order to render the claimed invention obvious. Furthermore, Smillie in view of Marotta teach, at least, the thermoplastic, melt-extrudable composition formed into a sheet or film that is used for an outer layer, the thermoplastic polymer, such as polyethylene cation ionomer blend, thermoplastic urethane, polyester, silica, siloxane, carrier resins, and smooth surface of the sheet or film with sufficient specificity that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” claimed limitations as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Thus, Applicant’s argument is not persuasive.
Regarding Claims 1 and 24, Applicant argues (2) Smillie concerns multilayer protective liners for tubular articles, rather than an extruded sheet or film wear layer serving as a top or outer layer of a surface covering. However, the instantly claimed invention does not require the sheet or film to not be rolled into a tubular article. It is noted that the features upon which applicant relies (i.e., the sheet or film not be tubular) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, just because Smillie teaches an embodiment of the multilayer protective liner that is rolled into tubular articles, does not mean the tubular article is the only embodiment taught by Smillie. In this case, Smillie teaches the tubular articles are lined with a sheet or film, wherein the sheet or film renders the claimed invention obvious. The prior art is not required to teach the claimed invention as the only or even a preferred embodiment in order to render the claimed invention obvious. Thus, Applicant’s argument is not persuasive.
Regarding Claim 7, Applicant argues (3) the rejection of Claim 7 cannot be properly reduced to routine adjustment of an ionomer concentration. However, Smillie teaches zinc ionomers can neutralize carboxylic acid, which results in a softened, less crystalline polymer [¶ 0068]. Therefore, the amount of the salts of zinc ions can be optimized to reach the desired crystallinity via a routine optimization and one of ordinary skill would be motivated to do so. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the amount of zinc for the intended application via a routine optimization, thereby obtaining the present invention. Thus, Applicant’s argument is not persuasive.
Regarding Claims 5, 7-8, 12, 15-18, and 22-23, Applicant argues (4) that since Claims 5, 7-8, 12, 15-18, and 22-23 now incorporate the complete architecture of amended Claim 1, and Claim 1 is not obvious over Smillie, Claims 5, 7-8, 12, 15-18, and 22-23 cannot be rendered obvious. However, attention is directed to the disclosure above wherein Smillie in view of Marotta is shown to render the claimed invention of Claim 1 obvious. More specifically, Smillie teaches the claimed the thermoplastic, melt-extrudable composition formed into a sheet or film that is used for an outer layer[Abstract; Claim 1; ¶ 0052, 0061, 0108], the thermoplastic polymer, such as polyethylene cation ionomer blend [¶ 0126], thermoplastic urethane[¶ 0064], polyester [¶ 0064], silica [¶ 0100], siloxane [¶ 0067, 0129, 0144], carrier resins [¶ 0067, 0129, 0144], and smooth surface of the sheet or film [¶ 0058], and Marotta teaches the nano-silica [¶ 0162; Table 33], amount of silica [¶ 0156], ethylene methyl acrylate carrier resin [¶ 0060, 0138], and urethane carrier resin [¶ 0060, 0138]. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Thus, Applicant’s argument is not persuasive.
Regarding Claim 5, Applicant argues (5) Sullivan concerns golf-ball layer compositions which is a different field of art from the instantly claimed invention. However, the prior art used in a rejection of a claim art is not required to be from similar fields of art to each other, but are only required to be from a similar field of art or solve a similar problem to the instantly claimed invention. Nevertheless, while it is not required to be so, the claimed invention, Smillie, Marotta and Sullivan are from the same field of art of durable wear layers comprising polymers and ionomers and solve the same problem of undurable thermoplastic compositions. Furthermore, while the instant Specification does not disclose use of the claimed invention in golf-ball compositions, the prior art is not required to teach the claimed invention as the only acceptable embodiment in order the render the claimed invention obvious. Thus, Applicant’s argument is not persuasive.
Regarding Claim 5, Applicant argues (6) the rejection of Smillie in view of Sullivan had hindsight bias. However, Sullivan qualifies as prior art under 35 USC 102 (a)(1) and (a)(2). Prior to the effective filing date of the claimed invention, Sullivan teaches the composition more preferably comprises 10-20 wt. % dicarboxylic acid [¶ 0120], which corresponds to the claimed at least about 10 wt. % of dicarboxylic acid. It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the amount of dicarboxylic acid of Sullivan with the multilayer protective layer of Smillie and Marotta, thereby arriving at the claimed invention. Since Sullivan offers the teachings before the effective filing date of the claimed invention, there cannot be hindsight bias. Thus, Applicant’s argument is not persuasive.
Regarding Claims 8 and 12, Applicant argues (7) that the general disclosure by Pailler of an acrylic polymer and silica does not provide a reason to select the claimed invention. However, Pailler is not relied upon to teach silica, Smillie and Marotta are. Piecemeal analysis of individual references is inappropriate. Furthermore, Smillie teaches the use of the genus of polyacrylates in wear layers [¶ 0070-0080]. It would be obvious to one of ordinary skill that the selection of a single species of polyacrylates, such as the claimed homopolymer of polymethylmethacrylate, would have also have a reasonable expectation of successfully functioning similarly to the polyacrylate genus of Smillie and imparting the same beneficial properties. In addition, Pailler offers the motivation the use of methacrylates enables calendaring at standard conditions without introducing inconvenient properties [¶ 0069] which would motivate one of ordinary skill to use the specific homopolymer of polymethylmethacrylate of Skinner with the composition of Smillie and Marotta. Thus, Applicant’s argument is not persuasive.
Regarding Claims 15-18, Applicant argues (8) that Smillie in view of Vogel provide no reason or reasonable expectation that the isolated Vogel blend features could be incorporated into Smillie. However, Smillie teaches the general use of polyamides [¶ 0005]. Therefore, it would be obvious to one of ordinary skill that use of specific polyamides, such as the claimed invention and those taught by Vogel, would similarly function in the wear layer composition of Smillie. Furthermore, Vogel discloses overlapping teachings to Smillie, including the ionomer-copolymer blends [Claim 1; Col. 16. Lines 29-30], cation ionomers [Col. 14, Lines 25-37], silica [Col. 19, Lines 6-15], and extrusion of the polymer blend [Abstract; Examples] to produce similar durable top surface films [Abstract]. Since Smillie and Vogel teach similar compositions in similar fields of art, there would be a reasonable expectation that the blend features of Vogel could be successfully incorporated into the composition of Smillie. Thus, Applicant’s argument is not persuasive.
Regarding Claims 22-23, Applicant argues (9) that Skinner and Smille are from different fields of art and Skinner concerns a sheet-vinyl flooring seam-sealing composition rather than a thermoplastic, melt-extrudable sheet or film wear-layer composition. However, the prior art used in a rejection of a claim art not required to be from similar fields of art to each other, but are only required to be from a similar field of art or solve a similar problem to the instantly claimed invention. Nevertheless, while it is not required to be so, the claimed invention, Smillie, Marotta and Skinner are from the same field of art of durable wear layers and solve the same problem of undurable thermoplastic compositions. Furthermore, while the instant Specification does not disclose use of the claimed invention in vinyl-flooring compositions, the prior art is not required to teach the claimed invention as the only acceptable embodiment in order the render the claimed invention obvious. Thus, Applicant’s argument is not persuasive.
Regarding Claims 22-23, Applicant argues (10) that Skinner supplies no reason to select the particular aromatic or aliphatic polyurethane chemistries recited in Claims 22-23. However, Skinner teaches that polyurethane wear layer compositions fuse with the substrate to form a uniform, high gloss wear layer [Col. 5, Lines 10-15], which would motivate one of ordinary skill to use the polyurethanes of Skinner in the composition of Smillie. Furthermore, it would be obvious to one of ordinary skill that aromatic and aliphatic polyurethanes would similarly impart the same beneficial properties to the composition as the broader genus of polyurethanes. Thus, Applicant’s argument is not persuasive.
Regarding Claims 22-23, Applicant argues (11) that combining the teachings of Skinner with Smillie would not establish a reasonable expectation that the resulting material could be melt-extruded, polished, cooled, pulled, and wound as required. However, the properties of the composition such as the ability to be melt-extruded, polished, cooled, pulled, and wound are functions of the composition and the method by which it is made. Since Smillie in view of Marotta and Skinner teach the same composition formed by the same method as required by the instant claim, as set forth in the rejection above, the composition of Smillie, Marotta and Skinner would be expected to result in the same processing properties as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. Thus, Applicant’s argument is not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ansems et al. (WO 2008080111 A1) teaches an extruded sheet or film for protective purposes [¶ 0078-0080, 0140] comprising thermoplastics such as polyethylene, polyester, polycarbonate, polyurethane, polyamide [¶ 0075], silica [¶ 0481], pigments [¶ 0481], binders [¶ 0481] with a textured surface [¶ 0482-0485] and high surface scratch resistance [¶ 0003-0005], manufactured using a grained roller surface and nip roller [¶ 0005, 0582].
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 DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
