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 .
Response to Amendment
Claims 74-75 newly added claims.
Claims 68-73 maintained withdrawn.
Claims 1-46, 57, 59-60, 62, and 64-65 are cancelled.
In view of amendment, filed on 12/31/2025, the following rejections are withdrawn from the previous office action, mailed on 05/19/2026.
Rejection of claims 47-56, 58, 61, 63, and 66-67 under 35 U.S.C. 112(a)
Rejection of claims 47-56, 58, 61, 63, and 66-67 under 35 U.S.C. 112(b)
The amendment to the claims filed on 08/03/3026 does not comply with the requirements of 37 CFR 1.121(c) because the amendment to claim 47 deleted “applying” and added “by” instead and added “one or more recesses” without required marking according to the section (2) of the below. Amendments to the claims filed on or after July 30, 2003 must comply with 37 CFR 1.121(c) which states:
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn—currently amended.”
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
The following rejections are maintained for the reason of records as given in the previous office action. The bases of these rejections are the same as given in the office action, mailed on 05/19/2026:
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:
Claim 47 recites “removing a portion of said substrate by a removal means” which includes a structural generic placeholder of “a removal means” associated with “removing a portion of said substrate”. Specification recites “scraping tool” and “sawing tool” as corresponding structural limitations for the claimed “removal means”.
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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries 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 non-obviousness.
Claim(s) 47-56, 58, 61, 63, 66-67 and 74-75 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baert et al. (NL 2025119), prior art submitted by Applicant, in view of Pervan WO (2014/007738).
As to claim 47, Baert et al. (NL ‘119) discloses a method for manufacturing panels (1, claim 28 and Fig. 5b) comprising a substrate (3, Fig. 5b) and a decorative top layer (2, claim 25), wherein the method comprises at least the following steps:
- providing the substrate (3, Fig. 5b) in a continuous manner at least in part by an extrusion process (p. 10, lines 23-27) by a flat die (extruders are included with a die, at their output, and the die can be considered a flat die while there is no further definition for structure of the flat die in either claims or the specification of the application);
[AltContent: textbox (A substrate (3))][AltContent: textbox (A decorative top layer (2))]
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Recesses (19a, 19b, 19c) are formed in a downward directed surface of the substrate wherein a depth and spacing of the recesses are varied)][AltContent: arrow][AltContent: arrow]
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- removing a portion of the substrate (3, Fig. 5b) (see page 10, lines 29-30 and lines 33-34) forming one or more recesses (19a, 19b, 19c, Fig. 5b) in a downward directed surface of the substrate (3, Fig. 5b), wherein a depth and/or spacing of each recess is varied (wherein the depth of at least two cavities is different, see claim 14 and Fig. 5b);
- wherein a decorative top layer is provided on an upward directed surface of said substrate (3, see claim 26 and Fig. 5b), the upward directed surface being opposite to a downward directed surface (see claim 28 and Fig. 5b and page 10, lines 29-30 and lines 33-34)
Baert et al. (NL ‘119) discloses at least one cavity is formed during the extrusion process. (see page 10, lines 29-30) and further discloses it is also conceivable that at least on cavity is formed substantially immediately after an extrusion process. (see page 10, lines 33-34) Further, Baert et al. (NL ‘119) recites when it is referred to a cavity also the terms groove, slot, recess, opening, channel and/or depression could be used. The cavity is typically a cut-out part of the panel. Such cavity could either be formed during production of the panel or can be carved or cut-out afterwards. (see page 3, lines 22-25) therefore, Baert et al. (NL ‘119) disclose removing a portion of the substrate, however, is silent on disclosing a removal means for removing a portion of the substrate (3, Fig. 5b), as claimed in claim 47.
In the analogous art, Pervan (WO ‘738) discloses an apparatus for producing floor panels wherein a decorative paper 2b and a wear resistant transparent overlay paper 2a are impregnated with a thermosetting resin, such as melamine, and are applied on the upper part of a HDF core 3. A balancing paper 4 impregnated with a melamine resin, general called backing, is applied on the backside of a HDF core. The core 3 with the upper 2 and lower 4 layers is moved into a press 5 and pressed under heat and pressure such that the thermosetting resins are cured and the layers are attached to the core. See page 2, lines 23-28 and figs. 1a – 1b.
Pervan WO (‘738) discloses a vertical core grooves 19a, 19b, with an opening toward the rear side or the panel, may be formed on the rear side in the backing layer 4 and into the core 3 that may be a wood-based board such as for example HDF, chipboard or plywood. The core may also comprise plastic material. Such forming may be made with rotating saw blades 20a as shown in figure 2d. Carving may also be used. The panels are generally machined with the surface layer 2 pointing downwards. The jumping saw blade is displaced towards the panel 20a from above, or below if the surface layer 2 is pointing upwards, and away from the panel 20c when the panel moves relative the rotating saw blades. (see page 10, lines 4-13)
[AltContent: arrow][AltContent: textbox (A decorative top layer (2))][AltContent: textbox (Panel (1))]
[AltContent: arrow][AltContent: textbox (Heating press (5))][AltContent: arrow][AltContent: textbox (A substrate (3) )][AltContent: arrow][AltContent: arrow]
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[AltContent: arrow][AltContent: arrow][AltContent: textbox (Rotational cutting devices (20a, 20b, 20c) as removal means for removing a portion of the substrate (3))][AltContent: textbox (Removed portions (19) of substrate (3))][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Removed portions (19) of substrate (3))][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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Therefore, as to claim 47, Pervan WO (‘738) discloses a method for manufacturing panels (1) comprising a substrate (3) and a decorative top layer (2), wherein the method comprises the following steps of
- providing the substrate (3) in a continuous manner at least in part by an extrusion process (see page 6, claim 22) by a flat die (extruders are included with a die, at their output, and the die can be considered a flat die while there is no further definition for structure of the flat die in either claims or the specification of the application);
- removing a portion of the substrate (3) continuously operated by a removal means (20a, 20b, 20c), (see page 10, lines 4-13) wherein the removal means (20a, 20b, 20c) forms one or more recesses (19) in a downward directed surface of the substrate (3, see the above annotated figures)
- wherein the removing from the substrate (3) is performed in-line with the extrusion process (see page 6, claim 22) at a distance from the die (claim 22: at least one cavity is formed substantially immediately after an extrusion process which can be concluded that there is a distance between the removal means (20a, 20b, 20c) and the die.
As to claim 52, Pervan WO (‘738) discloses the removal means (20a, 20b, 20c) is a scraping tool or sawing tool. (See Fig. 7a)
As to claim 53, Pervan WO (‘738) teaches the removal means (20a, 20b, 20c) is at least one scraping tool, wherein the scraping tool (20a, 20b, 20c) is positionable. See pages 2d and 7a)
As to claim 54, Pervan WO (‘738) discloses the scraping tool (20a, 20b, 20c) is provided on a support means, the at least one scraping tool (20a, 20b, 20c) being put forth and/or retractable.
As to claim 58, Pervan WO (‘738) discloses a decorative top layer (2) comprises at least a decorative film (2b), at least a wear layer (2a) on the top of the decorative film (2b), and a lacquer layer as an uppermost layer of the decorative top layer (2). (see page 1, lines 24-25)
As to claim 63, Pervan WO (‘738) teaches the method further includes providing coupling means (rotational cutting devices 20a, 20b, 20c) onto the edges. (See Fig. 7a)
As to claim 63, Baert et al. (NL ‘119) teach providing the coupling means (rotational cutting devices 20a, 20b, 20c) includes sawing. (See Fig. 7a)
As to claim 66, Pervan WO (‘738) discloses the providing the coupling means (rotational cutting devices 20a, 20b, 20c) is performed after the removing the portion of the substrate (3). (see page 1, lines 24-25)
As to claim 67, Pervan WO (‘738) teach the recesses (19, Fig. 7a) have a quadrangular shape (see the above annotated Fig. 7a), and wherein the depth of the one or more recesses (19, Fig. 7a) increases from an edge of the panels towards a center of the panels. (See Fig. 7a)
It would have been obvious for one of ordinary skill in the art, prior to the time of Applicant’s invention, to properly complete the removing step of Baert et al. (NL ‘119) through providing a removal means (20a, 20b, 20c) for removing a portion of the substrate in order to reduce the weight and material content of the panels while maintaining the stability, impact resistance and the strength which is needed to resist the heat and pressure from the pressing, as suggested by Pervan WO (‘738).
As to claim 48, Baert et al. (NL ‘119) disclose the portion of the substrate (3) is displaced from its original position within the extruded substrate layer to form another part of the substrate (3). (See p. 3, lines 25-29 and p. 10, lines 33-34)
As to claim 49, Baert et al. (NL ‘119) disclose the portion of the substrate (3) is displaced such that the substrate (3) is provided with one or more recesses (cavities 19a-c, Fig. 5b), wherein the displaced portion forms a plurality of protrusions, ribs and/or ridges (19a-c, Fig. 5b) on the downward directed surface.
As to claim 50, Baert et al. (NL ‘119) teach the plurality of protrusions, ribs and/or ridges (19a-c, Fig. 5b) circumscribe and/or demarcate at least one edge of the one or more recesses (cavities 19a-c, Fig. 5b).
As to claim 51, Baert et al. (NL ‘119) disclose a mean diameter of circumscribed circle of the one or more recesses (19a-c, Fig. 5b) and a mean width of the protrusions (19a-c, Fig. 5b), ribs and/or ridges (19a-c, Fig. 5b) are related according to a ratio between 2:1 and 10:1. (see p. 7, lines 30-31)
As to claim 55, Baert et al. (NL ‘119) teach the part of said substrate (3) is only partially consolidated prior to the step of removing the portion of said substrate (3). (see p. 11, lines 21-25)
As to claim 56, Baert et al. (NL ‘119) disclose the part of the substrate (3) is fully consolidated prior to the step of removing of the portion of said substrate (3). (see page 10, lines 29-30 and lines 33-34)
As to claim 61, Baert et al. (NL ‘119) discloses the removing is executed on a larger substrate material comprising substrate material of a plurality of panels (1). (see page 10, lines 29-30 and lines 33-34)
As to claim 63, Baert et al. (NL ‘119) disclose dividing of the larger substrate material into pieces having about final dimensions of the panel (1), the substrate material comprising edges. (see page 10, lines 29-30 and lines 33-34)
As to claim 74, Baert et al. (NL ‘119) is silent on disclosing the flat die has an opening of 2 to 5 mm thick and 0.8 to 2.1 m wide. However, it would have been obvious to one having ordinary skill in the art, prior to the time the invention was made, to design an opening of the flat die to be 2 to 5 mm thick and a wide of the flat die to be 0.8 to 2.1 m, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to make such a design in order to provide higher rigidity and improved dimensional stability for the manufactured panels.
As to claim 75, the combined teaching of Baert et al. (NL ‘119) and Pervan (WO ‘738) is silent on disclosing the continuously operated removal means is configured to intermittently engage with a surface of the substrate. However, it would have been obvious for one of ordinary skill in the art, prior to the time of applicant’s invention, to modify the removal means, as taught by the combined teachings of Baert et al. (NL ‘119) and Pervan (WO ‘738), through operating removal means so to intermittently engage with a surface of the substrate in order to provide sufficient stability in the pressing operation.
Response to Arguments
Applicant's arguments, filed on 08/03/2026, have been fully considered but they are not persuasive.
Applicant’s arguments regarding the restriction between groups I and II, as presented in the office action, mailed on 05/19/2026 was fully considered but are not found persuasive. As it was discussed in the previous office action, claims 47 and 68 lack unity of invention because even though the inventions of these groups require the technical feature of “providing a substrate in a continuous manner by an extrusion process applying a flat die wherein the substrate comprises a decorative top layer; removing a portion of the material by a continuously operated removal means wherein the removal means forms recesses in a downward directed surface of the material; and providing the decorative top layer on an upward directed surface of the material opposite the downward directed surface”, these technical features are not a special technical feature as it does not make a contribution over the prior art in view of Baert et al. (NL 2025119) in view of Pervan WO (2014/007738).
Applicant argues “Neither Baert nor Pervan, nor their combination, discloses a removal means that operates continuously on a continuously extruded substrate while varying recess depth and/or spacing without stopping the line. There is no evidence among the cited references of Baert and Pervan describing such continuous operation or dynamic variation of the recess geometry in-line with extrusion.” (Remarks: page 11, first paragraph)
This is not found persuasive. Baert et al. (NL ‘119) discloses removing a portion of the substrate (3, Fig. 5b) (see page 10, lines 29-30 and lines 33-34) forming one or more recesses (19a, 19b, 19c, Fig. 5b) in a downward directed surface of the substrate (3, Fig. 5b), wherein a depth and/or spacing of each recess is varied (wherein the depth of at least two cavities is different, see claim 14 and Fig. 5b), and further, Pervan (WO ‘738) discloses removing a portion of the substrate (3) continuously operated by a removal means (20a, 20b, 20c), (see page 10, lines 4-13) wherein the removal means (20a, 20b, 20c) forms one or more recesses (19) in a downward directed surface of the substrate (3, see the above annotated figures). Therefore, a combination of Baert et al. (NL ‘119) in view of Pervan (WO ‘738) disclose a removal means that operates continuously on a continuously extruded substrate while varying recess depth and/or spacing and a continuous operation or dynamic variation of the recess geometry in-line with extrusion.” (Remarks: page 11, first paragraph)
Further, Applicant argues “the combination does not disclose, and the rejection does not identify, any passage suggesting a removal step that is performed continuously in-line with extrusion, at a distance from a flat die, as required by claim 47”. (Remarks: page 11, 2nd and 3rd paragraphs)
This is not found persuasive. Baert et al. (NL ‘119) teach providing the substrate (3, Fig. 5b) in a continuous manner at least in part by an extrusion process (p. 10, lines 23-27) by a flat die (extruders are included with a die, at their output, and the die can be considered a flat die while there is no further definition for structure of the flat die in either claims or the specification of the application)
Also, Applicant’s arguments regarding claims 48 and 49-51 were fully considered but are not persuasive as it was clearly indicated in the body of the above rejections, the disclosure of claims 48, 49-51 are fully covered by the citations of Baert et al. (NL ‘119) in page 3, lines 25-29 and page 10, lines 33-3 and Fig. 5b.
Also, Applicant’s arguments regarding claims 61, 63, and 66 were fully considered but are not persuasive as it was clearly indicated in the body of the above rejections, the disclosure of claims 61, 63, and 66 are fully covered by the citations of Baert et al. (NL ‘119) in page 10, lines 29-30 and lines 33-34.
Further, Applicant’s arguments regarding claims 74-75 were fully considered but are not persuasive as it was indicated in the body of the above rejections, in absence of reference to a criticality for the claimed subject matter, the disclosure of claims 74-75 are obvious over the teachings of Baert et al. (NL ‘119) in view of Pervan (WO ‘738). Therefore, the above rejections of claims 47-56, 58, 61, 63, and 66-67 are maintained for the purpose of the record.
Finally, after a full review of the submitted remarks in view of prior art rejections, it has been concluded that there are differences in interpreting the claimed subject matter and the cited references between the Applicant and the Office. Therefore, Examiner would like to suggest that if Applicant’s Counsel believes an interview can benefit the prosecution of the instant application, Applicant’s Counsel is kindly invited to contact the undersigned examiner.
Correspondence Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEYED MASOUD MALEKZADEH whose telephone number is (571)272-6215. The examiner can normally be reached M-F 8:30AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SUSAN D. LEONG can be reached at (571)270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEYED MASOUD MALEKZADEH/Primary Examiner
Art Unit 1754 09/05/2026
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