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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claims 1-17, 20-21 are pending. Applicant’s previous election of the following species (claimed 1-13, 15, 17, 20-21) still applies and claims 14 and 16 remain withdrawn.
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Response to Amendment
Applicant’s amendment of 10/17/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(b)/second paragraph
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.
Claim(s) 10 is/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 pre-AIA the applicant regards as the invention.
Claim 10 is broader than claim 1 and therefore appears to have vague scope.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
If 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim(s) 1-13, 15, 17, 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baert et al. (WO 2017/133804, see U.S. 2019/0040635), in view of Van Giel et al. (U.S. 2020/0199886) in view of Heikkila et al. (U.S. 2016/0002468) with evidence from the Talc FDA NPL document.
Regarding claims 1-13, 15, 17, 20-21 Baert teaches a floor/wall panel comprising a core layer of extruded foamed PVC thermoplastic (as in claim 1) with mineral filler (as in claim 7) at an 85:15 mineral to thermoplastic ratio (overlapping claims 1, 6, and 8), wherein the mineral filler may include, e.g., calcium carbonate (as in claim 1 and 7) and/or talc (i.e., Mg3Si4O10(OH)2, a type of metal hydroxide as in claim 1, see the NPL document) (see abstract, [0007]-[0008], [0013], [0015]).
Baert also discloses that the core layer may include natural wood fibers ([0011]) for special purposes, as in claim 17.
Baert also discloses that the core layer may be laminated with a top layer of a plurality of layers, including, e.g., a decorative pattern, a wear layer, and a protective layer, ([0018]-[0026]). Baert does not disclose the particular layer order and/or materials as in claim 1 and the elected species. However, Van Giel is also directed toward floor panels with a PVC based core and a top decorative laminate and teaches that the top decorative laminate may include a print layer, which may be printed thermoplastic PVC (polymer) (as in claim 3), followed by a wear layer of PVC, as in claim 5, and further followed by a protective/coating layer of polyurethane (cured resin/polymer) as in claims 2-4, with wood filler (natural/cellulose material) being generally disclosed for the overall top decorative layer (i.e., present in at least one layer/ply of the top decorative layer as in claim 2) (see abstract, [0017], [0036], [0055]-[0060]) and further teaches that an adhesive and/or surface modification may be applied between any layers in the overall article (with such an adhesive and/or surface modification constituting a primer as in claim 21 when placed between the top decorative layer and the core/substrate, [0109]-[0116]), and further teaches that the top surface of the decorative layer may be textured (inherently tactile texture) to imitate wood ([0129]).
Thus, it would have been obvious to have used the top decorative layer order and materials of Van Giel as in claims 2-5 in Baert because Van Giel teaches that such layer order and materials provide a printed/decorative design, with wear and protective functionality as sought by Baert and it would have further been obvious to have used adhesive/surface modification between the layers in Baert as taught by Van Giel in order to promote bonding and it would have further been obvious to have used a textured surface in Baert as taught by Van Giel in order to imitate wood.
Van Giel also supports Baert’s general suggestion of wood filler in the core/substrate layer by teaching that natural wood fibers, as in claim 17, may be present in the core/substrate to provide reinforcement ([0098]-[0101], 1.10.2.2 is a heading under “alternative reinforcement layer”, [0082] describing the reinforcing layer being contained within the core/substrate, also see [0058]-[0059] describing wood fibers/particles in the core/substrate in combination with a printed design to help simulate wood appearance) such that it would have been obvious to have used wood fibers in the core layer of Baert as taught by Van Giel to provide reinforcement and help simulate wood appearance.
Van Giel also suggests that coupling agents may be used in any of the layer formulations to promote coupling between the components ([0108]), such that it would have been obvious to have used a coupling agent in the various layers of Baert as taught by Van Giel to promote coupling of the component in the respective layers. By being present in all the layers, the coupling agent would inherently constitute a surface treatment (as in claim 17) of all the ingredients in those layers, including the natural/wood fibers discussed above, by being part of the mixture that constitutes each layer (i.e., when multiple components are mixed to form a given layer, each component directly contacts the other components in the mixture, including along the surfaces thereof).
Baert does not disclose the elected coupling agent. However, Heikkila is also directed to building panels for, e.g., flooring, made of, e.g., PVC and inorganic particles, e.g., calcium carbonate, and teaches that the elected species of coupling agent (as in claims 9-13 and 20) may be used at amounts overlapping claim 15, as an interfacial modified to reduce friction between the particles and the rest of the composition to improve extrusion properties (see abstract, [0047], [0056]-[0061], [0101], [0139], [0149]-[0152], [0209]). Heikkila also suggests the surfaces of wood fibers (as in claim 17) would benefit from the interfacial modifier, as discussed above. Thus, it would have been obvious to have used the elected species of coupling agent from Heikkila with the inorganic particles in Baert in order to reduce friction between the fibers/particles and the rest of the composition and improve extrusion properties. Heikkila teaches that the elected species of coupling agent bonds to the inorganic materials ([0152]) and coordination bonds to the polymer ([0157), as in claims 1 and 10.
In addition to the amount of coupling agent overlapping the claimed range, it would have further been obvious to adjust this amount to within the claimed range as an art-recognized result effective variable for improving the coupling/interfacial modification effect provided by the compound.
Extrusion is taught in the prior art but this is an immaterial product by process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Claim(s) 1-13, 15, 17, 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baert et al. (WO 2017/133804, see U.S. 2019/0040635), in view of Van Giel et al. (U.S. 2020/0199886), in view of Zhang (CN 108045040, see machine translation), with evidence from the Kenrich NPL document and with evidence from the Talc FDA NPL document.
Regarding claims 1-13, 15, 17, 20-21 Baert teaches a floor/wall panel comprising a core layer of extruded foamed PVC thermoplastic (as in claim 1) with mineral filler (as in claim 7) at an 85:15 mineral to thermoplastic ratio (overlapping claims 1, 6, and 8), wherein the mineral filler may include, e.g., calcium carbonate (as in claim 1 and 7) and/or talc (i.e., Mg3Si4O10(OH)2, a type of metal hydroxide as in claim 1, see the NPL document) (see abstract, [0007]-[0008], [0013], [0015]).
Baert also discloses that the core layer may include natural wood fibers ([0011]) for special purposes, as in claim 17.
Baert also discloses that the core layer may be laminated with a top layer of a plurality of layers, including, e.g., a decorative pattern, a wear layer, and a protective layer ([0018]-[0026]). Baert does not disclose the particular layer order and/or materials as in claim 1 and the elected species. However, Van Giel is also directed toward floor panels with a PVC based core and a top decorative laminate and teaches that the top decorative laminate may include a print layer, which may be printed thermoplastic PVC (polymer) (as in claim 3), followed by a wear layer of PVC, as in claim 5, and further followed by a protective/coating layer of polyurethane (cured resin/polymer) as in claims 2-4, with wood filler (natural/cellulose material) being generally disclosed for the overall top decorative layer (i.e., present in at least one layer/ply of the top decorative layer as in claim 2) (see abstract, [0017], [0036], [0055]-[0060]) and further teaches that an adhesive and/or surface modification may be applied between any layers in the overall article (with such an adhesive and/or surface modification constituting a primer as in claim 21 when placed between the top decorative layer and the core/substrate, [0109]-[0116]), and further teaches that the top surface of the decorative layer may be textured (inherently tactile texture) to imitate wood ([0129]).
Thus, it would have been obvious to have used the top decorative layer order and materials of Van Giel as in claims 2-5 in Baert because Van Giel teaches that such layer order and materials provide a printed/decorative design, with wear and protective functionality as sought by Baert and it would have further been obvious to have used adhesive/surface modification between the layers in Baert as taught by Van Giel in order to promote bonding and it would have further been obvious to have used a textured surface in Baert as taught by Van Giel in order to imitate wood.
Van Giel also supports Baert’s general suggestion of wood filler in the core/substrate layer by teaching that natural wood fibers, as in claim 17, may be present in the core/substrate to provide reinforcement ([0098]-[0101], 1.10.2.2 is a heading under “alternative reinforcement layer”, [0082] describing the reinforcing layer being contained within the core/substrate, also see [0058]-[0059] describing wood fibers/particles in the core/substrate in combination with a printed design to help simulate wood appearance) such that it would have been obvious to have used wood fibers in the core layer of Baert as taught by Van Giel to provide reinforcement and help simulate wood appearance.
Van Giel also suggests that coupling agents may be used in any of the layer formulations to promote coupling between the components ([0108]), such that it would have been obvious to have used a coupling agent in the various layers of Baert as taught by Van Giel to promote coupling of the component in the respective layers. By being present in all the layers, the coupling agent would inherently constitute a surface treatment (as in claim 17) of all the ingredients in those layers, including the natural/wood fibers discussed above, by being part of the mixture that constitutes each layer (i.e., when multiple components are mixed to form a given layer, each component directly contacts the other components in the mixture, including along the surfaces thereof).
Baert does not disclose the elected coupling agent. However, Zhang is also directed to flooring made of PVC and inorganic particles, e.g., calcium carbonate, and teaches that the elected species (as in claims 9-13 and 20) may be used at amounts overlapping claim 15 as a coupling agent (see the Kenrich NPL document showing that KR-TTS is isopropyl titanium triisostearate) ([0002], [0004], [0008]) such that it would have been obvious to have used the elected species in the PVC composition of modified Baert to act as a coupling agent as taught by Zhang (and with coupling agents already generally being suggested by Van Giel in modified Baert, as discussed above). This compound will inherently form the bonds of claims 1 and 10 because it is being combined with the same polymer and inorganic materials as in the present application.
In addition to the amount of coupling agent overlapping the claimed range, it would have further been obvious to adjust this amount to within the claimed range as an art-recognized result effective variable for improving the coupling effect provided by the compound.
Having included the above coupling agent in the core layer composition to promote coupling as discussed above, the compound will inherently be mixed with (and contact/modify the surface thereof) all the ingredient of the core layer, including the wood filler, as in claim 17.
Extrusion is taught in the prior art but this is an immaterial product by process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
The previous priority issues have been resolved due to Applicant’s amendment.
Applicant argues that Heikkila fails to teach covalent bonding, but covalent bonding is not recited. The rejection above explains that Heikkila teaches bonding to both of the claimed ingredients. Applicant has not presented any arguments against these types of bonds. Applicant completely fails to address Zhang which is cited in the second rejection to replace Heikkila.
It is maintained that talc is a metal hydroxide. Applicant’s remarks are related to unclaimed aspects (flame retardant properties) and are contrary to the claim limitations (Applicant argues talc is always grouped with mineral fillers, not metal hydroxides and yet the claims recited both in the same Markush group). Talc includes metal and hydroxide and is therefore a metal hydroxide.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787