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 .
Applicant’s election, without traverse, of Group II claims 20-33 directed to a building panel is acknowledged. Accordingly, claims 1-19 are withdrawn from consideration at this time.
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 30-32 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 30, the term "similar" in claim 30 is a relative term which renders the claim indefinite. The term "similar" 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.
Examiner suggests removing the term "similar" from the claim as to overcome this rejection. Claims 31-32 are likewise rejected, since they depend from and include all of the limitations of claim 30.
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.
Claims 20-25 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Pervan, U.S. Pre Grant Publication 2015/0343739.
Regarding claims 20, 23 and 33, Pervan discloses a building panel having a multilayered substrate including a core (5); a surface layer (4) and a balancing layer (6) [see Figure 1 b]. Examiner is corresponding the surface layer (4) as applicant’s claimed front side layer. Examiner is corresponding the balancing layer (6) as Applicant’s claimed backside layer.
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Paragraph 0147 discloses that the surface layer (4) [front side layer] and the balancing layer (6) [backside layer] comprise wood particles and thermosetting resin(s). Paragraph 0071 discloses that the core [intermediate layer]includes wood particles and thermoplastic particles [binder]. It is disclosed in paragraph 0083 that the wood particles in the core [second mixture] is 1.0 mm or less. Paragraph 0125 discloses that the wood particles have a length ranging from 0.1-1.0 mm thereby proving for an aspect ratio of the second mixture [core] within Applicant’s claimed range.
Regarding claim 21, Figure 1b show lignocellulosic particles from the second mixture 20 and lignocellulosic particles 20 from the third mixture are mixed, at least in a border area between the intermediate layer and the front side.
Regarding claim 22, Figure 1b show lignocellulosic particles 20 from the second mixture and the lignocellulosic particles 20 from the first mixture are mixed, at least in a border area between the intermediate layer and the backside layer (6).
Regarding claim 24, paragraph 0081 discloses that the surface layer is applied as two layers arranged above each other.
Regarding claim 25, paragraph 0071 discloses that the surface layer includes a powder mix comprising wood particles and thermosetting resin. Paragraph 0081 discloses that the surface layer is applied as two layers arranged above each other.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 20-21 and 23-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-21 of copending Application No. 18/637,743 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in both co-pending applications recite
A building panel comprising a multi-layered substrate-(14) comprising a back side layer(15) comprising lignocellulosic particles and a binder, an intermediate layer(17) comprising lignocellulosic particles and a binder, arranged on the back side layer(15), and a front side layer(19) comprising lignocellulosic particles and a binder, arranged on the intermediate layer(17), wherein the back side layer(15) was formed from a first mixture, the intermediate layer (17) was formed from a second mixture and the front side layer(19) was formed from a third mixture as recited in present claim 20 and co-pending claim 14.
The claims in the co-pending application are silent to the aspect ratio of the lignocellulosic particles in the second mixture being between 1:1 and 30:1. However, this is an optimizable feature. The aspect ratio of the lignocellulosic particle affects the strength of the mixture. One of ordinary skill in the art before the effective filing date of the invention would optimize the aspect ratio of the lignocellulosic particles in the second mixture to 1:1 and 30:1 for the benefit of obtaining enhanced strength in the mixture.
The claims in both co-pending applications recite a backside element to which the back side layer is attached to and a front side element to which the front side layer is attached to as recited in present claims 24 and 27 and co-pending claim 18.
The claims in both co-pending applications recite wherein the back side element and the front side element is a wood veneer as recited in present claims 26 and 29 and co-pending claim 19.
The claims in both co-pending applications recite wherein the back side element and the front side element is a paper sheet, an unimpregnated paper sheet or an impregnated sheet as recited in present claims 25 and 28 and co-pending claim 20.
The claims in both co-pending applications recite wherein the lignocellulosic particles from the second mixture and the lignocellulosic particles from the third mixture, at least in a border area between the intermediate layer and the front side layer as recited in present claim 21 and copending claim 21.
The claims in both co-pending applications recite a mechanical locking device arranged along at least one edge of the building panel, wherein the mechanical locking device is configured for horizontal and/or vertical locking of essentially identical building panels in an assembled position, the mechanical locking device comprising an upper surface, which is arranged in a front side area of the at least one edge which extends in an essentially parallel direction to a top surface, along at least one edge, of the building panel, and which is displaced from said top surface , wherein the upper surface is further arranged in the front side layer of the building panel as recited in present claim 30 and copending claim 14.
The claims in both co-pending applications recite wherein the mechanical locking device further comprises: a locking strip with a locking element, which is arranged in a back side area of the at least one edge portion and which extends in an essentially parallel direction to a back surface, along at least one edge portion, of the building panel, wherein the locking strip and the locking element are arranged at least partly in the back side layer of the building panel as recited in present claim 31 and copending claim 15.
The claims in both co-pending applications recite wherein the locking strip and the locking element are arranged in the back side layer, such that at least 60% of the locking strip and the locking element are arranged in the back side layer as recited in present claim 32 and copending claim 16.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Please note that U.S. Patent Application 18/637,743 corresponds to U.S. Pre Grant Publication 2024/0342949.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMIE S THOMPSON whose telephone number is (571)272-1530. The examiner can normally be reached 8:30 am - 5:30 pm.
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, Jennifer Boyd, can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAMIE S THOMPSON/Primary Examiner, Art Unit 1786
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