Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1 and 4 - 11 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chen et al (US 2006//0032175) in view of Burt et al (US Patent 5,560,797), Thiers (EP 1290290) and Zanchetta et al (US 2004/0013854).
With regards to claims 1 and 11, Chen discloses a method for manufacturing panels, where the panels comprises at least a substrate and a top layer (paragraphs 32 – 47 and 82) where the top layer comprises a translucent or transparent layer (paragraphs 38, 71-73 and 75), the method comprising:
A step of providing a substrate (paragraphs 32 – 47 and 82)
A step of providing a top layer on the substrate (paragraphs 88 and 89)
A step of heating the top layer (paragraphs 88, 89, 120 and 121)
Chen fails to explicitly disclose that that the top layer includes a thermoplastic layer and that the method comprises a step of feeding the thermoplastic layer in a press device and structuring the thermoplastic layer at least by means of a press treatment with a mechanical press element.
Burt discloses a process of producing a plastic floor tile (Abstract), in the same field of endeavor as Chen, where the substrate comprises polyvinyl chloride (column 2 lines 30-43) and a transparent polyvinyl chloride film is applied the substrate (column 2 lines 42 – 55) for wear protection and/or providing or enhance decorative effect (column 1 lines 32 – 50).
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have the top layer in Chen include thermoplastic layer, as suggested by Burt. The rationale being that, as stated by Burt, it provides wear protection and/or providing or enhance decorative effect (column 1 lines 32 – 50).
Chen and Burt fail to explicitly disclose a step of feeding the thermoplastic layer in a press device and structuring the thermoplastic layer by means of a press treatment.
Thiers discloses a process of producing a floor panel comprising a décor, overlay and substrate (Abstract), in the same field of endeavor as Chen and Burt, where Thiers discloses a method comprises a step of feeding the thermoplastic layer in a press device and structuring the thermoplastic layer at least by means of a press treatment with a mechanical press element (paragraphs 52 – 55). It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have performed a step of feeding the thermoplastic layer in a press device and structuring the thermoplastic layer at least by means of a press treatment with a mechanical press element, as suggested by Thiers, in Chen’s method as modified by Burt. The rationale being that, as stated by Thiers, it is a preferred method for applying a décor to a thermoplastic layer (paragraphs 25 and 26).
Chen, Burt and Thiers fail to explicitly disclose that subsequently there is a step of applying a UV surface coating.
Zanchetta discloses a reflective and emissive surface film laminate specially designed to form a top surface of modified bituminous roof covering composite (Abstract), in the same field of endeavor as Chen, Burt and Thiers, where Zanchetta states that in the top layer of the laminate there is UV surface coating (paragraph 34), which suggests that this step is performed subsequently after the step of feeding of a thermoplastic layer.
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have performed subsequently to a step of feeding a thermoplastic layer a step of applying a UV surface coating, as suggested by Zanchetta, in Chen, Burt and Their’s method. The rationale being that, as stated by Zanchetta, it provides UV inhibitors that prevents UV degradation (paragraph 34).
With regards to claim 4, the teachings of Chen, Burt, Thiers and Zanchetta are presented above. Additionally, Burt teaches that the thermoplastic layer substantially consists of a vinyl compound (column 2 lines 30 – 55).
With regards to claim 5, the teachings of Chen, Burt, Thiers and Zanchetta are presented above. Additionally, Chen teaches that the substrate is a synthetic material board (paragraphs 32 – 47 and 82).
With regards to claim 6, the teachings of Chen, Burt, Thiers and Zanchetta are presented above. Additionally, Thiers teaches that the press device is of the cyclic type (paragraphs 52 – 55).
With regards to claim 7, the teachings of Chen, Burt, Thiers and Zanchetta are presented above. Additionally, Thiers teaches that during the step of heating, at least a pattern or motif is situated on the lower side of the thermoplastic layer (as seen in Figure 14, paragraphs 54 and 55).
With regards to claim 8, the teachings of Chen, Burt, Thiers and Zanchetta are presented above. Additionally, Chen teaches that the step of providing a top layer on the substrate is performed prior to the step of heating (paragraphs 88, 89, 120 and 121).
With regards to claim 9, the teachings of Chen, Burt, Thiers and Zanchetta are presented above. Additionally, Chen teaches that the substrate is provided by means of extrusion (paragraphs 32 – 47 and 82).
With regards to claim 10, the teachings of Chen, Burt, Thiers and Zanchetta are presented above. Additionally, Burt teaches that the substrate is provided as an endless board material which is divided prior to the structuring (column 2 lines 30 – 55).
Claims 2, 3, 12 and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chen et al (US 2006//0032175) in view of Burt et al (US Patent 5,560,797), Thiers (EP 1290290) and Zanchetta et al (US 2004/0013854) as applied to claims 1 and 11 above, and further in view of Matsukawa et al (EP 2308678).
With regards to claims 2, 3 ,12 and 13, the teachings of Chen, Burt, Thiers and Zanchetta are presented above. Chen, Burt, Thiers and Zanchetta teaches a heating step but fail to explicitly disclose that the heating step uses a radiation source.
Matsukawa teaches a method of providing a decorative sheet with wood grain patterns or other desired textures (Abstract), in the same field of endeavor as Chen, Burt, Thiers and Zanchetta, where Matsukawa teaches that the heating step is performed using a radiation source that includes infrared light emitted from one or more infrared heating units (paragraph 59).
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have used a radiation source in the heating step, as suggested by Matsukawa, in Chen’s method as modified by Burt and Thiers. The rationale being that, as stated by Matsukawa, it is a well-known method for heating (paragraph 59). Additionally, one of ordinary skills in the art would appreciate that infrared radiation would yield a predictable result of heating a surface of an outer layer of a laminate for embossing.
Response to Arguments
Due to the Applicant’s amendment, Applicant’s arguments, filed February 25, 2026, with respect to the rejection(s) of claim(s) 1 - 13 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Zanchetta et al (US 2004/0013854) as presented above.
With regards to the rejection of claims 1 – 13 on the grounds of nonstatutory double patenting, due to the Applicant’s amendment, the rejection has been withdrawn.
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 JOSHEL RIVERA whose telephone number is (571)270-7655. The examiner can normally be reached M-F 12pm - 8pm.
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/JOSHEL RIVERA/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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