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 .
Withdrawn Rejections
The 35 U.S.C. §103 rejection of claims 1-10 and 13 as over Koh et al. (US 2018/0044925), made of record in the office action mailed on 11/5/2025, page 2 has been withdrawn due to Applicant’s amendment in the response filed on 01/02/2026.
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) 1-10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Koh et al. (US 2018/0044925) in view of Dai et al. (US 2018/0207918).
Regarding claims 1-2, 6-10 Koh et al. is directed to a rigid multilayer tile used as a building material (paragraph 0001), such as a flooring material or wall covering (paragraph 0037). In the embodiment of the Examples the multilayer tile comprises, in order: an upper support layer, a printed layer, an intermediate support layer, a reinforcing layer, a foam cushion layer, a reinforcing layer, and a lower support layer (Table 1). The reinforcing layers, formed of unplasticized polyvinyl chloride. The reinforcement/foam/reinforcement combination has a thickness of 5-7 mm (Table 2). The foam cushion layer corresponds to wear layer of the present invention (See fig. 5). The reinforcing layer includes a rigid core layer (para 0015) which corresponds to core layer and reinforcing layer corresponds to second reinforcement layer (see figure 5 and 10). The tile may further include a dimension-stabilizing layer between the reinforcing layer and the intermediate support layer or between the foam cushion layer and the intermediate support layer and is made of glass fiber layer may be a glass fiber nonwoven fabric impregnated with PVC resin (para 0085-0086), where the glass fiber layer corresponds to first reinforcement layer of claim 1 (see figure 10). The rigid core layer includes one or more polymer resins selected from the group consisting of polyethylene resin, polypropylene resin, ABS resin, polyvinyl chloride resin, acrylic resin, polyester resin, polystyrene resin, polytetrafluoroethylene, ethylene-vinyl acetate copolymers, ethylene-propylene copolymers, and thermoplastic polyurethane (TPU). The rigid core layer is preferably made of polyethylene terephthalate (PET), which is a type of polyester resin, or polyvinyl chloride (PVC) resin (para 0056). The rigid core layer preferably contains 0 to 20 phr of a plasticizer and 0 to 500 phr of a filler. The contents of the plasticizer and the filler may vary depending on the hardness of the foam cushion layer and the content of respective ingredients (para 0057). Koh discloses the foam cushion layer includes one or more polymer resins selected from the group consisting of polyethylene resin, polypropylene resin, ABS resin, polyvinyl chloride resin, acrylic resin, polyester resin, polystyrene resin, polytetrafluoroethylene, ethylene-vinyl acetate copolymers, ethylene-propylene copolymers, and thermoplastic polyurethane (TPU) and wherein the foam cushion layer contains 0 to 20 phr of a plasticizer, 0 to 300 phr of a filler, and 0 to 5 phr of a foaming agent (para 0022-0023). The plasticizers include benzoate (para 0070). As Koh discloses the presence of third and second thermoplastic polymer as presently claimed, it therefore would be obvious that second and third composition would intrinsically have distinct colors and form shape on an upper surface of the tile.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05).
However, Koh fails to disclose that second thermoplastic composition comprises between 30-60 wt% of one or more thermoplastic polymers.
Whereas, Dai discloses composite floor comprises a coextrusion layer compression moulded by a coextrusion process. The coextrusion layer comprises a first PVC (polyvinyl chloride) equilibrium layer, a WPC (Wood/Plastic Composite) foaming layer, and a second PVC equilibrium layer sequentially arranged from top to bottom (abstract). The WPC foaming layer may be made from following raw materials of parts by weight: polyvinyl chloride 35-55 parts by weight, stone powder 40-50 parts by weight, calcium-zinc stabilizer 2-3 parts by weight, internal lubricant for PVC 0.2-0.6 parts by weight, external lubricant for PVC 0.1-0.4 parts by weight, acrylic ester 3-5 parts by weight, oxidized polyethylene homopolymer 0.1-0.4 parts by weight, sodium bicarbonate 0.1-0.4 parts by weight, 2,2-azobisisobutyronitrile 0.1-0.4 parts by weight and chlorinated polyvinyl chloride 1-2 parts by weight (para 0017).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include PVC resin of Koh in an amount of 33-55 wt% as taught by Dai in the foaming layer of Koh motivated by the desire to have improved durability and water and sound absorbing properties.
Regarding claim 3, Koh discloses the tile may further include a printed layer on the intermediate support layer, and may further include an upper support layer on the printed layer (para 0083), thus Koh does disclose the term “may include” which is considered an optional component, so the claim limitation is met when decorative surface covering is devoid of any printed film.
Regarding claims 4-5, Koh discloses the presence of lower support layer located on foam cushion layer (see figure 8), where the lower support layer corresponds to a coating layer of claim 4. The lower support layer and the soundproofing layer may include a polymer resin, a filler and an additive. The lower resin includes a polymer resin and a filler (para 0103-104). The polymer resin includes one or more selected from the group consisting of polyethylene resin, polypropylene resin, acrylonitrile-butadiene-styrene (ABS) resin, polyvinyl chloride resin, acrylic resin, polyester resin, polystyrene resin, polytetrafluoroethylene, rubber, ethylene vinyl acetate copolymers, and ethylene propylene copolymers (para 0107). The upper support layer, the printed layer, the intermediate support layer and the lower support layer each independently includes one or more polymer resins selected from the group consisting of polyethylene resin, polypropylene resin, ABS resin, polyvinyl chloride resin, acrylic resin (which encompasses acrylic copolymers (para 0109).
Regarding claim 13, Koh discloses the foam cushion layer includes one or more polymer resins selected from the group consisting of polyethylene resin, polypropylene resin, ABS resin, polyvinyl chloride resin, acrylic resin, polyester resin, polystyrene resin, polytetrafluoroethylene, ethylene-vinyl acetate copolymers, ethylene-propylene copolymers, and thermoplastic polyurethane (TPU) and wherein the foam cushion layer contains 0 to 20 phr of a plasticizer, 0 to 300 phr of a filler, and 0 to 5 phr of a foaming agent (para 0022-0023).
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05).
Response to Arguments
Applicant’s arguments filed on 01/02/2026 has been fully considered, but they are not persuasive.
Applicant argues that the Examiner has misinterpreted the prior art by equating Koh's "foam cushion layer" with Applicant's claimed "wear layer" which is incorrect. Instead, in the field of floor coverings, a wear layer is designed for surface abrasion resistance and durability, while a cushion layer is designed for comfort, shock absorption, and sound insulation. Their functions and compositions are completely different. In Koh, paragraph [0093] defines the "upper support layer" in a way that corresponds to a "wear layer". In other words, in Koh, the upper support layer and not the foam cushion layer is the wear layer, and the Examiner's erroneous mapping has resulted in an incorrect interpretation of the prior art and an improper rejection. The Examiner has completely misinterpreted the mapping of layers in Koh.
However, it should be noted that irrespective of what the name of the layer is being called, as long as the layer comprises thermoplastic composition along with fillers and plasticizers, the functionality will remain the same. Koh discloses foam cushion layer which comprises thermoplastic composition along with fillers and plasticizers as presently claimed, it therefore would perform the same function, absent evidence to the contrary as wear layer of present invention.
Applicant argues that In the Official Action, the Examiners argument regarding the alleged motivation for combining Koh and Dai was not justified. The Examiner argued that one skilled in the art could take a feature (PVC content) from a WPC (Wood-plastic composite) foaming layer in Dai to modify the cushion layer in Koh. However, the skilled artisan would have found no reason or motivation to look into a wood-plastic composite (WPC) technology to optimize the standard PVC cushion layer of Koh for many reasons, including that the technical problems and contexts for each are very different.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
“obviousness under 103 is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with appellant’s motivation”, In re Dillon, 16 USPQ2d 1897 (Fed. Cir. 1990), In re Tomlinson, 150 USPQ 623 (CCPA 1966).
Applicant argues that the Koh reference does not disclose or suggest the specific relationship where the core layer is more filled and more plasticized than the wear layer.
However, the claim does not recite any such relationship in claim 1, Koh in view of Dai discloses decorative surface covering as presently claimed, thus meeting the claim limitation.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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