DETAILED ACTION
The Examiner acknowledges Claims 46-49 and 53-58 have been amended, Claims 61-65 remain withdrawn and Claims 66-76 have been added.
Response to Arguments
Applicant’s arguments and amendments with respect to the 112 rejections have been fully considered and are persuasive. The 112 rejections have been withdrawn.
Applicant’s arguments and amendments with respect to the Prior Art rejections have been considered but are moot because the amendment(s) have necessitated a new ground(s) of rejection [see rejection below].
Election/Restrictions
Newly submitted claims 66-76 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The inventions are directed towards related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have a materially different mode of operation as one is for “a panel” and the other “a floor panel”. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 66-76 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 46-60 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.
In claim 46, on Line 9, it recites “said intermediate layer has at least one of the following properties” then lists these properties on Lines 10-16. Line 17 recites “the Shore A hardness” but the “Shore A hardness” on Line 10 was not positively recited because of the “at least one of” on Line 9. Furthermore, Line 19 recites “the elastic modulus” but “an elastic modulus” on Line 12 was not positively recited because of the “at least one of” on Line 9.
In claim 47, Lines 2-3 recites “the Shore A hardness” but the Shore A hardness was not positively recited because of the “at least one of” on Line 9 of claim 46. Furthermore, Line 4 recites “the elastic modulus” but the elastic modulus” was not positively recited because of the “at least one of” on Line 9 of claim 46.
In claim 49, it calls for the foamed thermoplastic material to be IXPE but the claim depends from claim 46 that on Line 8 calls for it to be EVA, PE, PP or PU. It is unclear how it can then be IXPE.
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 46, 48 and 50-56 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chinese Patent # 110325362 to Baert et al.
Regarding claim 46, Baert teaches in Figure 2, a panel (1, Fig 1) comprising a primary (14) and a secondary (12a) substrate layer, an intermediate layer (10), and a top layer (12), wherein the intermediate layer (10) is located between the primary (12a) and secondary (14) substrate layer, wherein the intermediate layer (10) and the secondary (14) substrate layer are glued together [with adhesive (Page 3)]; and wherein the top layer (12) is applied on the secondary substrate layer (12a), wherein the intermediate layer (10) comprises foamed (Page 4) thermoplastic material consisting of polyethylene (Page 8), wherein the intermediate layer (10) comprises a material with substantially open cell structure (Page 4).
Regarding claim 48, Baert teaches the foamed thermoplastic material has an empty cell volume between 10-80 vol% [20-50 (Page 6)].
Regarding claim 50, Baert teaches the primary substrate layer comprises PVC and CaCO3 as a filler (Page 5), wherein the CaCO3 has a concentration between 60-80 wt% [60% (Page 5)] and the PVC has a concentration between 20-40 wt% [the remaining 40%].
Regarding claim 51, Baert teaches the secondary substrate layer comprises PVC (Page 8).
Regarding claim 52, Baert teaches the secondary substrate layer comprises plasticizers in an amount of less than 15 phr [it does not have any (Page 7)].
Regarding claim 53, Baert teaches the secondary substrate layer is configured to increase a stiffness of the panel (Page 4), wherein the secondary substrate layer comprises a reinforcing layer (Page 4); comprises CaCO3 as a filler (Page 4); and a thickness of at least 2.0mm (Page 3).
Regarding claim 54, Baert teaches the secondary substrate layer comprises CaCO3 as a filler and PVC (Page 8), wherein the CaCO3 has a concentration between 60-80 wt% [60% (Page 8)] and the PVC has a concentration between 20-40 wt% [the remaining 40%].
Regarding claim 55, Baert teaches in Figure 2, the panel is provided with coupling means (7 and 8) on at least two opposite edges, wherein on the respective edges, locking (Page 5) is brought about at least in a vertical direction (Page 7) perpendicular to a plane of the panels.
Regarding claim 56, Baert teaches in Figure 2, at least one of the edges is provided with a groove (8), wherein this groove (8) is flanked by an upper lip and a lower lip [as seen], wherein Figure 4 shows the intermediate layer (10) extending substantially through the upper lip.
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 47 and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Chinese Patent # 110325362 to Baert et al.
Regarding claim 47, Baert teaches a panel with an intermediate layer but is silent about it being 10 units lower in Shore A hardness or 10.0% lower in elastic modulus than the secondary substrate layer. However, it would have been an obvious matter of design choice to specify the 10 units lower Shore A hardness or the 10.0% lower elastic modulus since the Applicant has not disclosed that such a specification solves any stated problem or is of any particular purpose and it appears that the arrangement of Baert would perform equally well.
Regarding claim 49, Baert teaches a panel with an intermediate layer of foamed thermoplastic but does not teach it is IXPE. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the intermediate layer from IXPE since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. It is also common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, etc. for the application and intended use of that material.
Claims 57-60 are rejected under 35 U.S.C. 103 as being unpatentable over Chinese Patent # 110325362 to Baert et al in view of US Patent # 9,573,343 to Pervan.
Regarding claim 57, Baert teaches a panel but doesn’t teach the claimed arrangement of the upper lip to primary substrate layer. However, Pervan teaches in Figure 4d, wherein a lower surface of the upper lip [as seen] is formed at least partially in the primary substrate layer (5c). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Baert with Pervan and have a reasonable expectation of success because Pervan teaches positioning the intermediate layer where it is increases sound damping (Column 21, Lines 29-33).
Regarding claim 58, Baert teaches a panel but doesn’t teach the claimed arrangement of the upper lip to primary substrate layer, intermediate layer and secondary substrate layer. However, Pervan teaches in Figure 4d, the upper lip [as seen] is formed substantially in the primary substrate layer (5c), the intermediate layer (5b) and the secondary substrate layer (5a). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Baert with Pervan and have a reasonable expectation of success because Pervan teaches positioning the intermediate layer where it is increases sound damping (Column 21, Lines 29-33).
Regarding claim 59, Baert teaches a panel but doesn’t teach the claimed coupled state of adjacent panels. However, Pervan teaches in Figures 4b and 4d, in a coupled state between two adjacent floor panels (1a and 1b), the intermediate layers (5b) [in the arrangement of Figure 4d] of the adjacent panels (1a and 1b) press against each other, wherein a seal [where upper edges of the panels come together] forms along the edges of the panels (1a and 1b). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Baert with Pervan and have a reasonable expectation of success because the seal would prevent water and dust from entering the joint between the panels.
Regarding claim 60, Baert teaches a panel but doesn’t teach the claimed coupled state of adjacent panels. However, Pervan teaches in Figure 4b, in a coupled state between two adjacent panels (1a and 1b), the intermediate layers (5b) of the adjacent panels (1a and 1b) do not touch each other, wherein a space forms between the intermediate layers (5b) along the edges of the panels (1a and 1b). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Baert with Pervan and have a reasonable expectation of success because spacing the panels would allow for any dust in the joint from not preventing the panels from locking together.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J TRIGGS whose telephone number is (571)270-3657. The examiner can normally be reached Mon-Thurs 6am-2pm EST.
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, Brian Mattei can be reached at (571) 270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J TRIGGS/Primary Examiner, Art Unit 3635
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