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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Species II-A, Species II-B, and Species I-C (readable on claims 1-14) in the reply filed on 1/21/2026 is acknowledged.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“arranging the printing pattern on said front side by a print application unit” in claim 8 (corresponding structure, material, or acts described in the specification is a digital printer and may further include rollers see page 12, lines 18-24)
“a device configured to form the printing pattern” in claim 10 (corresponding structure, material, or acts described in the specification is a digital printer and may further include rollers see page 12, lines 18-24); and
“a device configured to form the cavities” in claim 10 (corresponding structure, material, or acts described in the specification is an impression device comprising impression elements see page 13, lines 20-22).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1, 3-8, and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith et al. (U.S. Patent 4,612,074).
Regarding claim 1, Smith discloses a process for manufacturing a board element comprising a substrate and a printing pattern, the process comprising (it being noted comprising is inclusive or open-ended and does not exclude additional, unrecited elements or method steps see MPEP 2111.03): providing the substrate (vinyl film 82), the substrate comprising a polymer-based material (vinyl film) and embossing a plurality of cavities (see Figures 7 and 8) in a rear side (upper side of Figures 7 and 8); arranging the printing pattern (comprising at least print layer 12) on a front side (lower side of Figures 7 and 8) of the substrate; and coordinating (by controlling the printing and embossing) a position of the printing pattern with a location of the cavities so that the cavities are in register with the printing pattern (Figures 2-8 and Column 3, line 65 to Column 4, line 34 and Column 5, lines 1-32).
Regarding claim 3, arranging the printing pattern as taught by Smith comprises applying a print layer (comprising at least print layer 12) on the front side (see Figure 5).
Regarding claim 4, the print layer taught by Smith is a printed polymer-based sheet (comprising print layer 12 and vinyl-based web 10).
Regarding claim 5, Smith teaches the print layer comprises print layer sections (repeating sections each comprising a printing pattern including a decorative design/image and registration indicia/marks to form following a cutting step individual tiles/board elements see Figures 1 and 4-8 and Column 4, lines 1-5 and Column 5, lines 19-24), and wherein at least one print layer section comprising the printing pattern is applied on the front side (see Figure 5).
Regarding claim 6, Smith teaches the printing pattern (each including a decorative design/image and registration indicia/marks to form the individual tiles/board elements) is repeated (and including at least for each revolution of the embossing roll 112) in the print layer sections (see Figures 1 and 4-8 and Column 4, lines 1-5 and Column 5, lines 19-24).
Regarding claim 7, the printing pattern taught by Smith is repeated as regions (regions of print layer 12 each including a decorative design/image and registration indicia/marks to form individual tiles/board elements), separated by edge sections (sections to be cut to form the individual tiles/board elements see Column 6, lines 16-21), wherein the cavities form a cavity pattern that is repeated as regions (each region includes a cavity or cavities corresponding to a region of the printing pattern to form the individual tiles/board elements) separated by separation portions (portions to be cut to form the individual tiles/board elements corresponding to the edge sections), and wherein the coordinating includes arranging the edge sections and the separation portions at essentially same horizontal positions (at the cut) so that the cavities are in register with the printing pattern (see Figures 2 and 8).
Regarding claim 8, the substrate taught by Smith comprises a rear side, the process further comprising creating the cavities in the rear side by impressing a substrate portion by an impression device comprising impression elements (embossing roll 112), and arranging the printing pattern on the front side by a print application unit (comprising printing station 60 and drum 83 and rollers 91, 92 and considered the corresponding structure, material, or acts described in the specification and equivalents thereof), the print application unit being synchronized (to arrange the printing pattern) with the (rotation of the) impression device for obtaining the coordination of the printing pattern and the cavities in a continuous manner (see Figure 2).
Regarding claim 11, Smith teaches applying a wear layer (web 10) on the printing pattern (see Figure 5).
Regarding claim 12, Smith teaches the embossing the plurality of cavities in the rear side includes embossing at least a portion of the substrate comprising the printing pattern such that an embossed structure comprising the plurality of cavities in register with the printing pattern is obtained (Figure 1).
Regarding claim 13, Smith teaches dividing (by cutting) the board element at a separation portion separating a first (on one side of the cut) and a second (on the other side of the cut) group of cavities, thereby obtaining at least one board member or at least one panel (Column 6, lines 16-18).
Regarding claim 14, Smith teaches a board dividing position is based on (in register to) the position of the printing pattern (Column 6, lines 16-18).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Kackmann-Schneider et al. (U.S. Patent Application Publication 2017/0297257).
Smith is described above in full detail.
Regarding claim 2, Smith teaches arranging the printing pattern comprises printing a web (10) applied to the front side of the substrate. Smith teaches the printing is transfer printing (Column 4, lines 17-20). Smith does not expressly teach digital printing. Smith does not each away from digital printing wherein it is well understood by one of ordinary skill in the art of arranging a printing pattern comprising printing on a substrate (16 and analogous to the web) applied to the front side of a layer (24 and analogous to the substate) is digital printing as evidenced by Kackmann-Schneider (Figure 1 and Paragraphs 0029-0030). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention arranging the printing pattern as taught by Smith comprises digitally printing the web applied to the front side as a simple substitution of one known printing technique for another to yield predictable results as evidenced by Kackmann-Schneider.
Regarding claim 10, Smith teaches the coordinating includes: sensing a first position of the printing pattern (printed registration marks) and adjusting a formation of the cavities based on the first position (Column 5, lines 13-32). Smith does not expressly teach sensing a second position of the device configured to form the cavities (embossing roll and considered the corresponding structure, material, or acts described in the specification and equivalents thereof). It is well understood in the art the coordinating includes: the sensing the first position of the printing pattern (printed reference marks); sensing a second position of the device configured to form the cavities (embossing cylinder equipped with an angular encoder); and adjusting a formation of the printing pattern based on the first and second positions to control stretching or compressing of the printed pattern as taught by Kackmann-Schneider (Paragraph 0042). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the coordinating taught by Smith includes: sensing the first position of the printing pattern; sensing a second position of the device configured to form the cavities; and adjusting a formation of the printing pattern based on the first and second positions to control stretching or compressing of the printed pattern as taught by Kackmann-Schneider.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Sienkiewicz et al. (U.S. Patent 7,195,727).
Smith is described above in full detail.
Regarding claim 9, Smith does not expressly teach determining a print schedule wherein it is well understood by one of ordinary skill in the art to arrange the printing pattern every so many feet as evidenced by Sienkiewicz (Column 22, lines 50-53). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the process taught by Smith comprises determining a print schedule based on position data of a print layer as being every so many feet, and controlling the arranging of the printing pattern on the front side based on the determined print schedule by arranging the printing pattern every so many feet as is the conventional and predictable print schedule for arranging the printing pattern well understood by one of ordinary skill in the art as evidenced by Sienkiewicz.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Zhou et al. (U.S. Patent Application Publication 2022/0032607).
Smith is described above in full detail.
Regarding claim 10, Smith teaches the coordinating includes: sensing a first position of the printing pattern (printed registration marks) and adjusting a formation of the cavities (by adjusting the speed of the embossing roll) based on the first position using a speed control (117) (Column 5, lines 13-32). Smith does not expressly teach the speed control includes sensing a second position of the device configured to form the cavities (the embossing roll). Conventional speed control for the coordinating includes: sensing the first position of the printing pattern (first identifiers 201); sensing a second position of the device configured to form the textures (encoder disposed on a pattern roller and textures analogous to the cavities); and adjusting a formation of the textures by adjusting the speed of the pattern roll based on the first and second positions to correct position deviation as taught by Zhou (Paragraphs 0060-0063 and 0070). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the coordinating taught by Smith includes: sensing the first position of the printing pattern; further sensing a second position of the device configured to form the cavities; and adjusting the formation of the cavities based on the first and second positions to correct position deviation using speed control as taught by Zhou.
Claims 1, 3-9, 11, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Sienkiewicz.
Regarding claim 1, Sienkiewicz discloses a process for manufacturing a board element comprising a substrate (having a front side and a rear side) and a printing pattern, the process comprising: providing the substrate (layer 73), the substrate comprising a polymer-based material (extruded thermoplastic material) and at least in one embodiment (Figure 28) a plurality of cavities (orange peel like texture or any other suitable texture including surface roughness and having cavities as depicted in Figure 28) in a rear side (embossing rollers 220, 222 are patterned rollers to emboss the texture into both of the two major surfaces 223, 223’ of sheet 73 see Column 8, lines 48-56 and Column 23, lines 24-26 and 31-35); at least in one embodiment (Figure 27) arranging the printing pattern (design 212) on a front side of the substrate; and coordinating a position of the printing pattern with the substrate so that the printing pattern overlays the substrate to visibly display a design such as a logo, warning label, or any desirable suitable letter(s) and/or number(s) (Figures 27 and 28 and Column 5, lines 7-32 and Column 10, line 66 to Column 11, line 2 and Column 22, line 45 to Column 23, line 67).
Regarding claim 3, arranging the printing pattern as taught by Sienkiewicz comprises applying a print layer (comprising design 212 and clear coat layer 79) on the front side (see Figure 27).
Regarding claim 4, Sienkiewicz teaches the print layer is a printed polymer-based sheet (Column 18, lines 4-41 and Column 22, lines 45-67).
Regarding claim 5, Sienkiewicz teaches the print layer comprises print layer sections (each design 212 is a section), and wherein at least one print layer section comprising the printing pattern is applied on a front side of the substrate (see Figure 27).
Regarding claim 6, Sienkiewicz teaches the printing pattern is repeated in the print layer sections (see Figure 27 and Column 22, lines 45-53).
Regarding claim 9, Sienkiewicz teaches determining a print schedule based on position data of a print layer (printing the design every so many feet on clear coat layer 79), and controlling the arranging of the printing pattern on the front side based on the determined print schedule by printing the printing pattern every so many feet (Column 22, lines 50-53).
Regarding claim 11, Sienkiewicz teaches applying a wear layer (clear coat 79 and/or a protective layer) on the printing pattern (Column 23, lines 1-15).
Regarding claim 13, Sienkiewicz teaches dividing (by cutting) the board element at a separation portion separating a first (on one side of the cut) and a second (on the other side of the cut) group of cavities, thereby obtaining at least one board member or at least one panel (Column 13, lines 49-51).
As to the limitation in claim 1 of “coordinating a position of the printing pattern with a location of the cavities” and claims 7 and 8, it is not clear Sienkiewicz expressly discloses an embodiment including both the textured substrate (Figure 28) and the visible design (Figure 27). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the process for manufacturing a board element taught by Sienkiewicz combine the embodiment of Figure 27 and the embodiment of Figure 28 as a process for manufacturing a board element comprising a substrate and a printing pattern, the process comprising: providing the substrate (layer 73), the substrate comprising a polymer-based material (extruded thermoplastic material) and a plurality of cavities (orange peel like texture or any other suitable texture including surface roughness and having cavities as depicted and further wherein that the shape was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular claimed shape was significant see MPEP 2144.04 and “B. Changes in Shape”) in a rear side (embossing rollers 220, 222 are patterned rollers to emboss the texture into both of the two major surfaces 223, 223’ of sheet 73); arranging the printing pattern (design 212) on a front side of the substrate (and including, regarding claims 3-7 and 11 arranging the printing pattern comprises applying a print layer (comprising design 212 and clear coat layer 79) on the front side wherein the print layer is a printed polymer-based sheet, wherein the print layer comprises print layer sections (each design 212 is a section), and wherein at least one print layer section comprising the printing pattern is applied on the front side, wherein the printing pattern is repeated in the print layer sections, wherein the printing pattern is repeated as regions (regions of design 212 on clear coat layer 79), separated by edge sections (the sections of clear coat layer 79 between regions 212), wherein the cavities form a cavity pattern that is repeated as regions (a region is a cavity pattern having a length the same length as that of design 212) separated by separation portions (a separation portion is a cavity pattern having a length the same length as that of a section of clear coat layer 79 between regions 212), and wherein the coordinating includes arranging the edge sections and the separation portions at essentially same horizontal positions, and applying a wear layer (clear coat 79 and/or a protective layer) on the printing pattern); and coordinating a position of the printing pattern with a location of the cavities (and including regarding claims 8 and 9 the substrate comprises a rear side, the process further comprising creating the cavities in the rear side by impressing a substrate portion by an impression device comprising impression elements (embossing roller 222), and arranging the printing pattern on the front side by a print application unit (comprising silk-screening station 210 and rollers 85, 87 and considered the corresponding structure, material, or acts described in the specification and equivalents thereof), the print application unit being synchronized (to print and rotate) with the impression device (to rotate) for obtaining the coordination of the printing pattern and the cavities in a continuous manner and including by determining a print schedule based on position data of a print layer (printing the design every so many feet on clear coat layer 79), and controlling the arranging of the printing pattern on the front side based on the determined print schedule by printing the printing pattern every so many feet) so that the printing pattern overlays the location of the cavities to form (and including regarding claim 13 upon dividing (by cutting) the continuous board element at a separation portion separating a first (on one side of the cut) and a second (on the other side of the cut) group of cavities, thereby obtaining at least one board member or at least one panel) a board element that both visibly displays a design such as a logo, warning label, or any desirable suitable letter(s) and/or number(s) in combination with having a orange peel like texture or any other suitable texture including surface roughness as directed to by Sienkiewicz in Figures 27 and 28.
Regarding claim 14, Sienkiewicz does not expressly teach the board dividing position. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention a board dividing position in Sienkiewicz is based on the position of the printing pattern so that the cut is between the repeating printing patterns (and corresponds with the edge sections and separation portions at essentially same horizontal positions) so that the visibly displayed design such as a logo, warning label, or any desirable suitable letter(s) and/or number(s) is not destroyed/interrupted.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sienkiewicz in view of DAI et al. (U.S. Patent Application Publication 2020/0377711).
Sienkiewicz is described above in full detail.
Regarding claim 2, Sienkiewicz teaches arranging the printing pattern comprises printing the front side of the substrate as alternative to applying the print layer on the front side (Column 23, lines 11-15). Sienkiewicz teaches the printing is silk-screening or otherwise deposited/formed wherein it is well understood by one of ordinary skill in the art conventional and predictable printing on extruded (and embossed) thermoplastic is digital printing as evidenced by DAI (Paragraph 0006). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention arranging the printing pattern as taught by Sienkiewicz comprises digitally printing the front side as a simple substitution of one known printing technique for another to yield predictable results as evidenced by DAI.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Sienkiewicz in view of Zhou or Smith or Kackmann-Schneider.
Sienkiewicz is described above in full detail.
Regarding claim 12, Sienkiewicz does not expressly teach embossing at least a portion of the substrate comprising the printing pattern such that an embossed structure in register with the printing pattern is obtained wherein embossed-in-register technology to emboss at least a portion of a substrate (10 of Zhou or Smith or 14 of Kackmann-Schneider) comprising a printing pattern (7 of Zhou or 12 of Smith or at 22 of Kackmann-Schneider) such that an embossed structure in register with the printing pattern is obtained is well understood by one of ordinary skill in the art in order to enhance a sense of reality and improve beauty of the sheet as evidenced by Zhou (Figure 1 and Paragraphs 0003 and 0058-0060) or Smith (Figures 4-8 and Column 5, lines 13-32) or Kackmann-Schneider (Figure 1 and Abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the process taught by Sienkiewicz further comprising embossing at least a portion of the substrate comprising the printing pattern such that an embossed structure in register with the printing pattern is obtained as is well understood by one of ordinary skill in the art to enhance a sense of reality and improve beauty of the sheet as is well understood by one of ordinary skill in the art as evidenced by Zhou or Smith or Kackmann-Schneider.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN L GOFF II whose telephone number is (571)272-1216. The examiner can normally be reached 7:30 AM - 4:00 PM EST Monday - Friday.
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/JOHN L GOFF II/Primary Examiner, Art Unit 1746