Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/10/2025 has been entered.
As applicant has not overcome the double patenting rejections, the rejections are hereby restated below.
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 1-5, 7-15, 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-40 of copending Application No. 18/620382. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims 1-5, 7-15, 17-20 are encompassed by the scope of claims 21-40 of copending application 18/620382.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 7-15, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 16-20 of U.S. Patent No. 9016018. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims 1-5, 7-15, 17-20 are encompassed by the scope of claims 1-13, 16-20 of patent 9016018.
Claims 1-5, 7-15, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 13-19 of U.S. Patent No. 9518396. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims 1-5, 7-15, 17-20 are encompassed by the scope of claims 1-11, 13-19 of patent 9518396.
Claims 1-5, 7-15, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14, 18-19 of U.S. Patent No. 10597879. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims 1-5, 7-15, 17-20 are encompassed by the scope of claims 1-14, 18-19 of patent 10597879.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1-2, 4-5, 7-8, 11-15, 17 is/are rejected under pre-AIA 35 U.S.C. 102b as being anticipated by Magnuson et al (5460867).
Magnuson figures 3-4, show a support plate for installing facing materials on a substrate comprising: a single layer(figure 3) comprising a single layer sheet material having a first side and a second side; a plurality of raised portions residing across the first side of the sheet material; a plurality of spaced apart adjacent recesses(the depression formed by part 14) residing across the single layer sheet material; a plurality of slots(at 15, figure 4) in the single layer sheet material traversing through the raised portions and extending at least partially into sidewalls of the recesses, each said opening connecting at least two spaced apart adjacent recesses to each other(figure 3), a plurality of routing regions arranged simultaneously in rows and columns on the single layer sheet material(figure 3 shows the recesses and indentation from the surface in both the horizontal and vertical directions) defined by the plurality of raised portions and recesses, wherein one or more of the plurality of routing regions are adapted to receive a component therein (able to function as claimed).
Per claim 2, Magnuson further shows the single layer sheet material (12) comprises a plastic material.
Per claim 4, Magnuson further shows each of the plurality of adjacent recesses is open at the top and has a bottom and sidewalls comprising the single layer sheet material
(see figures 3-4).
Per claim 5, Magnuson further shows the adjacent raised portions and the adjacent recesses define a plate having at thickness extending from a top surface to a bottom surface thereof (the thickness set by the top and bottom surfaces).
Per claim 7, Magnuson further shows the plurality of routing regions comprise routing channels (formed by parts 15, 14).
Per claim 8, Magnuson further shows the component received in the one or more plurality of routing regions comprises a flooring installation item(part of 11 that rests on the surface of the sheet; see also column 2 line 7-13 for heat exchange disclosure).
Per claim 11, Magnuson further shows the plurality of slots comprise open slots residing in the adjacent raised protrusions.
Per claim 12, Magnuson further shows the plurality of slots extend partially into the sidewalls of the recesses form the top surface to the bottom surface of the plate.
Per claim 13, Magnuson further shows the plurality of slots reside in one or more slots paths (inherently so as the path are formed by the slots).
Per claim 14, Magnuson further shows the slot paths reside across the entire support plate or a portion of the support plate.
Per claim 15, Magnuson further shows the plurality of slots comprise a plurality of recessed slots residing across the first side of the single layer sheet material, each recessed slot having slot sidewalls and a slot bottom surface comprising the sheet material.
Per claim 17, Magnuson further shows an underlay mat (13) attached to the second side of the single layer sheet material.
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.
Claim 3 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Magnuson.
Magnuson shows all the claimed limitations except for the plurality of adjacent recesses having a variety of shapes.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Magnuson’s structure with a reasonable expectation of success to show the plurality of adjacent recesses having a variety of shapes since choosing different shapes for the protrusions and recesses would have been an obvious matter of engineering design choice and one having ordinary skill in the art would have found it obvious to choose any combination of shapes for providing drainage for the separation sheet.
Claims 9-10 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Magnuson.
Magnuson shows all the claimed limitations except for the raised portions being circular.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Magnuson’s structure with a reasonable expectation of success to show the raised portions being circular since choosing different shapes for the protrusions and recesses would have been an obvious matter of engineering design choice and one having ordinary skill in the art would have found it obvious to choose the raised portions being circular as it provides the same functions of draining and directing the fluid on the separation sheet.
Magnuson as modified further shows the raised portions comprise a plurality of raised protrusions with each of the plurality of raised protrusions comprising a curved outer wall forming a non-continuous circle, a curved inner wall forming a non-continuous circle, and a top surface comprising the sheet material, the curved outer wall and the curved inner wall of each of the raised protrusions forms a non-continuous circle separated by one or more of the plurality of said slots.
Claim 18 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Magnuson.
Magnuson shows all the claimed limitations except for the plurality of perforation (col 2 line 56-59) comprise slots.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Magnuson’s structure with a reasonable expectation of success to the plurality of perforation (col 2 line 56-59) comprise slots since slots or holes would function the same to provide of draining of liquid through a sheet and one having ordinary skill in the art would have found it obvious to choose either slot or holes for draining the liquid as long as the openings provide for the necessary drain rate.
Magnuson as modified further shows the slots comprising open slots exposing the underlay mat at the first side of the sheet material.
Claims 19-20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Magnuson.
Magnuson shows all the claimed limitations. The claimed method steps would have been the obvious method steps of installing the facing material with Magnuson’s teaching.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive.
As the previous remarks are deemed applicable, they are repeated below.
With respect to Magnuson et al, examiner states the followings. First of all, applicant on 12/18/2024 elected the specie to figure 6F for prosecution without traverse. Figure 6F shows the slots connecting only two recesses at a time. The slots connect to more recesses and other slots by means of the two recesses which communicate with other slots/recesses. Magnuson figure 3 shows the slots (15) connecting two adjacent recesses (14). The slots further connect to other slots/recesses by way of the two recesses which communicate with other slots/recesses. The routing regions formed by slots and recesses, are arranged in both the rows and columns on the single sheet. The claims do not require the routing regions connecting to each other in both the horizontal and vertical direction simultaneously. The claims only require the routing regions “ arranged in rows and columns on the single…”. Magnuson figure 3, show the routing regions in both the horizontal and vertical direction as they are formed on the entire sheet. Magnuson thus show the routing regions “ arranged in rows and columns on the single…”.
The broadest reasonable interpretation is consistent with the elected figure 6F.
The 103 rejections based on Magnuson are also proper as the 102 rejections are proper.
Furthermore, Magnuson figure 3, shows the sheet being single layer. The figure also shows the claimed rows and columns simultaneously.
With respect to routing regions, the routing regions are reasonably broadly interpreted to show the regions and the regions located simultaneously in rows and columns. Routing regions are areas whereupon elements can be placed. Magnuson spaces can function as routing regions where elements can place.
The rejections are thus set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHI D Tran whose telephone number is (571)272-6864. The examiner can normally be reached M-F 8-5 EST.
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/PHI D A/ Primary Examiner, Art Unit 3633
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