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 .
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Additional claim limitations not interpreted under 35 USC 112(f) may be included here for clarity of the claim interpretation. Such claim limitations are:
i. Claim 11, “coupling parts”, which has not been interpreted under 35 USC 112(f) in view of the structural modifier “coupling” and the recited structure of a tongue and groove connection.
ii. Claim 11, “locking elements”, which has not been interpreted under 35 USC 112(f) in view of the recited structure of a protrusion and recess.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Objections
Claims 1-20 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 1, line 5, while “the step” appears to be a grammatical construct, this step is not previously recited. The examiner suggests --[[the]] a step-- to introduce the step for the first time.
Regarding claims 8 and 18, a similar issue to that noted above in claim 1 is found with respect to “the step of glueing”.
Regarding claim 11, line 1, “forms” should be --form-- to correct the grammar.
Regarding claim 11, lines 8-11, and claim 16, the examiner suggests --[[the]] a lower side--, --[[the]] an upper side--, --[[the]] a horizontal direction--, --[[the]] a center line-- and --[[the]] a most inwardly located point-- since each of these terms is being used for the first time. Each of these terms clearly has implicit antecedent basis. Accordingly, there is no issue of clarity. Introducing the terms with --a-- improves claim readability to identify the introduction of a term. Similar issues are found in claim 16.
Regarding claims 13-14, and claims 19-20, as above the examiner suggests --[[the]] a bottom-- to introduce this term for improved claim readability, although it has clear implicit antecedent basis. Similar issues are found in claims 19-20.
Regarding claim 16, a similar issue to that noted above in claim 1 is found with respect to “the step of forming said rigid substrate layer”, “the step of bonding”, “the step of dividing” and “the step of forming said individual pieces”.
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 1-20 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 1, line 2 recites “at least one rigid substrate layer”. It is unclear which of the previously recited at least one rigid substrate layer is being referenced by “said rigid substrate layer” in line 8.
The above noted issue found in claim 1 is found throughout the claims. For example, see claims 2-5, 8-9, 11 and 16-18. This issue should be corrected in each instance.
Regarding claim 7, intervening claim 6 already indicates the thermoplastic material comprises plasticizer. It is unclear if “comprises plasticizer” in claim 7 is referencing the previously recited plasticizer of claim 6.
Regarding claim 11, several layers are recited in parent claim 1 and intervening claim 9, including décor, wear lacquer and at least one substrate layer. It is unclear which layers are being referenced by “said layers” in claim 11.
Regarding claim 11, line 3, it is unclear if “them” is referencing the individual pieces or the panels.
Regarding claim 16, line 15, there is a previous recitation of at least one rigid substrate layer in line 3. However this does not require plural layers as it includes one substrate layer. It is unclear if “said rigid substrate layers” in line 15 is further requiring plural substrate layers.
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.
Claims 1-2, 4-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Van Giel (WO 2016/113377 A1).
Regarding claim 1, Van Giel teaches a method for manufacturing floor, wall or ceiling panels (Abstract), wherein said panels comprise a substrate having a rigid part formed by at least one rigid substrate layer (page 2, line 21; page 5, line 29), wherein said rigid substrate layer comprises a thermoplastic material (page 8, lines 15-17); wherein said method comprises the step of extruding said thermoplastic material (page 26, line 34; page 33, lines 31-33; page 34, lines 13-21), wherein said thermoplastic material comprises polyvinyl chloride (page 8, lines 15-17; page 9, line 13), 15 to 75 wt% or 40 to 70 wt% of an inorganic or mineral filler (page 2, lines 15-19; page 10, line 27; page 12, lines 9-26), an impact modifier (page 29, lines 19-30) and a stabilizer (page 30, lines 21-32); wherein the density of said rigid substrate layer, in an embodiment, is less than or equal to 1600 kg/m3 (page 21, lines 9-16). It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. The claimed filler content of at least 45 wt% overlaps with the above noted filler content ranges of Van Giel and the claimed density of at least 1500 kg/m3 overlaps with the above noted density range of Van Giel.
Regarding claim 2, Van Giel teaches bonding one or more further layers on said rigid substrate layer (page 26, line 32 to page 27, line 4; page 34, lines 13-21; page 32, lines 11-12).
Regarding claim 4, Van Giel teaches this additional limitation (page 33, lines 31-32).
Regarding claim 5, Van Giel teaches a substrate thickness of 3 to 4 mm for flooring applications (page 6, lines 22-28). Van Giel suggests a top layer comprising a printed PVC film and film wear layer with a thickness as low as 0.1 mm (page 16). In one embodiment, the printed film is not even used and the print is applied directly to the substrate (page 16, lines 11-12). A 3 mm substrate with a 0.1 mm film layer corresponds to a substrate with roughly 97% of the floor panel thickness. Thus it is reasonably clear that a substrate with at least 65% of the thickness of the floor panel is suggested. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05.
Regarding claims 6-7, Van Giel teaches some of the recited plasticizers in an amount of less than 10 wt%, less than 5 wt%, less than 2 wt% or less than 0.1 wt% (page 22, lines 1-30). It is clear that these ranges overlap or fall within the claimed range of less than 10 phr. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05.
Regarding claims 9-10, Van Giel teaches a printed décor, a wear layer and a UV hardened lacquer layer are further provided on the rigid substrate (page 16; page 17, lines 1-12).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Van Giel as applied to claims 1-2, 4-7 and 9-10, and further in view of Naeyaert (WO 2016/016864 A1).
Regarding claim 3, Van Giel does not teach the rigid substrate layer is transported along guide rollers after extrusion and the bonding is performed continuously during said transport by supplying said one or more further layers between the guide rollers. Van Giel describes extrusion and lamination generally, and suggests using the inherent heat from the extruded material for lamination, but is not limited to particular extrusion and lamination techniques (page 34, lines 16-21). In related flooring art, Naeyaert suggests, in one embodiment, extruding a thermoplastic PVC substrate layer, transporting the substrate layer along guide rollers of belt presses and bonding a reinforcing layer, the substrate layer, a printed décor film and a wear layer continuously during this transport by supplying the further layers between the guide rollers. This process achieves a high quality flooring product with a minimum of deformations (Figures 1-2; page 1, lines 12-16; page 3, lines 4-17; page 4, lines 6-20; page 5, lines 23-28; page 7, lines 35-36; page 8, lines 1-7 and 34-37; claims 1, 4-6, 18, 28 and 34). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in Van Giel because one having ordinary skill in the art would have been motivated to use a known suitable laminating technique and/or to achieve the above noted advantages in accordance with the teachings of Naeyaert.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Van Giel as applied to claims 1-2, 4-7 and 9-10, and further in view of Ruhdorfer (US 2004/0255538 A1).
Regarding claim 8, Van Giel does not teach glueing a backing layer to said rigid substrate layer, wherein said backing layer is composed of cork or a foamed thermoplastic material. In related flooring art, Ruhdorfer suggests this limitation for providing sound insulation (Figure; paragraph 44; claim 15). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these further limitations in Van Giel because one having ordinary skill in the art would have been motivated to provide sound insulation as suggested by the teachings of Ruhdorfer.
Claims 11-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Van Giel in view of Naeyaert as applied to claim 3 above, and further in view of Whispell (US 2011/0167744 A1).
Regarding claim 11, while not taught by Van Giel, Naeyaert teaches the layers form a continuous material web which is divided into individual pieces by means of cutting treatments (Figures 1-2; page 7, lines 13-16), and wherein said individual pieces are formed into said panels at least by providing them by means of milling tools along one or more edges with coupling parts allowing to effect a mechanical coupling between two of such panels, wherein said coupling parts are in the form of a tongue and groove connection and allow to effect a mechanical locking between two of such panels by means of a turning movement, wherein said groove is limited by an upper lip and a lower lip, wherein said tongue and groove connection further comprises locking elements including a protrusion at the lower side of said tongue and a recess in the upper side of said lower lip, which, in a coupled condition, counteract the moving apart of the tongue and the groove in the horizontal direction (page 9, line 26 to page 10, line 34). Naeyaert teaches the coupling means are realized substantially in the substrate (page 10, line 28), which suggests the upper lip, lower lip, implicit center line through said tongue and implicit most inwardly located point of said groove all being at least partially realized from the substrate layer. Whispell is applied here for additional evidence that these features would be at least partially realized from the substrate layer. As seen in Figures 40-50 of Whispell, these features in the coupling parts use a substantial portion of the flooring panel thickness. As noted above, the panels of Van Giel comprise a rigid substrate which occupies a large fraction of the thickness with thin top film layer or layers. Naeyaert suggests top film layers having a desired thickness of less than 0.2 mm (page 12, lines 30-32), while the substrate of Van Giel has a thickness of 3 to 4 mm (page 6, line 24). Moreover, the rigid substrate of Van Giel has a high modulus (page 13, lines 1-7), and thus one having ordinary skill in the art would have naturally provided the coupling parts in the rigid substrate as it has a high strength to provide the necessary locking function of the coupling parts. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in Van Giel because one having ordinary skill in the art would have been motivated to manufacture the panels in a known suitable continuous extrusion and laminating process, as suggested by Naeyaert, and because one having ordinary skill in the art would have been motivated to provide a known suitable coupling part structure using the high strength of the rigid substrate to form the coupling parts, as suggested by the above noted teachings of Naeyaert, Van Giel and Whispell.
Regarding claim 12, Van Giel suggests a substrate thickness of 2.5 to 4.5 mm (page 6, lines 23-24). Naeyaert teaches the top décor and wear films may be less than 1 mm, less than 0.5 mm or less than 0.2 mm in thickness (page 12, lines 30-32). This suggests an overall panel thickness, comprising the substrate and two top film layers (the décor and wear layers), of roughly less than 6.5 mm and more than 2.5 mm, which substantially overlaps with the claimed range. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05.
Regarding claims 13-14, while not recited by Van Giel these coupling structures are known for providing suitable coupling between the floor panels. See Whispell (Figures 40-45). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in the modified method of Van Giel because one having ordinary skill in the art would have been motivated to provide known suitable coupling structure, as suggested by the teachings of Whispell.
Regarding claim 15, Van Giel suggests the substrate may have a modulus of elasticity of up to 8000 MPa (8000 MPa = 8000 N/mm2; page 13, lines 1-7). Since the rigid substrate provides the rigidity of the panel, this naturally suggests panels with a similar modulus of elasticity. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05.
Claims 16-17 and 19-20 are satisfied for the reasons provided above. Claim 16 presents a combination of limitations, each of which is addressed above and satisfied for the reasons provided above.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Van Giel in view of Naeyaert and Whispell as applied to claims 11-17 and 19-20 above, and further in view of Ruhdorfer.
Regarding claim 18, Ruhdorfer is applied as above in the rejection of claim 8.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 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, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745
Prosecution Insights